Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2018 - Issue 19
October 2018
 
 
 

News

 
General Information (4)
 
 
ARIPO launches free online IP database
 
In an attempt to centralise intellectual property records in Africa, the African Regional Intellectual Property Organisation (ARIPO) has recently launched a free online database.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
African Regional Intellectual Property Organization Full text
 
 
 
 
 
Belgium implements new trade secrets law
 
The Belgian Act on the Protection of Trade Secrets, implementing EU Directive 2016/943, was published in the Belgian Official Gazette on 14 August 2018 and it came into effect on 24 August 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Belgium Full text
 
 
 
 
 
Kazakhstan eliminates taxes for certain IP services
 
On 21 September 2018, the National Institute of Intellectual Property of Kazakhstan implemented recent amendments made to the Tax Code.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Kazakhstan Full text
 
 
 
 
 
Brexit no-deal scenario: UK government publishes 4 technical notices on IP issues
 
On 24 September 2018, the government of the United Kingdom (UK) published four technical notices as part of a series of such notices it planned for August and September to offer protection to intellectual property rights holders.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
United Kingdom, European Union Full text
 
 
 
 
 
Ratifications (1)
 
 
Netherlands ratifies Geneva Act
 
On 18 September 2018, the Government of the Kingdom of the Netherlands ratified the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Geneva Act) by depositing its instrument of ratification with the Director General of the World Intellectual Property Organization.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Netherlands, Benelux Full text
 
 
 
 
 
Patents/Utility Models (3)
 
 
‘Wrong assumptions in Max Planck study on Brexit and Unitary Patent’
 
The Max Planck study which concludes that extension of unitary protection to the UK and post-Brexit participation in the UPC would create serious legal problems, is partly based on wrong assumptions.

This is argued in a reaction on the study, which was published by the EPLAW weblog. The reaction is from an anonymous writer with the pseudonym Atticus Finch. “The arguments against an extension of the Unitary Patent to the United Kingdom for instance ignore that the extension of EU instruments to third countries is something quite frequent and that (…) problems (…) can easily be solved”.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 15 Oct 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
Indonesian patent holders told to pay outstanding annuity fees
 
The Indonesian Directorate General of Intellectual Property (DGIP) has urged patent holders to pay outstanding annual fees by 16 February 2019, failing which no new patent application will be accepted from that patent holder.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Indonesia Full text
 
 
 
 
 
USPTO’s proposed rulemaking on claim construction standard gets regulatory approval
 
On 3 October 2018, the Office of Information and Regulatory Affairs (OIRA) gave its regulatory approval on the U.S. Patent and Trademark Office’s (USPTO’s) proposal to change the current claim construction standard.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
United States of America Full text
 
 
 
 
 
Trademarks (2)
 
 
JPO launches fast-track examination of trademark applications
 
On 1 October 2018, the Japan Patent Office (JPO) launched a pilot program to fast-track examining of trademark applications.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Japan Full text
 
 
 
 
 
Mexico’s amended IP law to affect registration of marks under Madrid System
 
The Mexican Institute of Industrial Property (IMPI) has requested the International Bureau of the World Intellectual Property Organization (WIPO) to inform users of the Madrid System of the amendments made to the Mexican Industrial Property Law and their impact on the international registration of marks designating Mexico.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Mexico, World Intellectual Property Organization Full text
 
 
 
 
 
Industrial Models and Designs (1)
 
 
Individual designation fees for designs established for Canada
 
In accordance with the provisions of the Common Regulations under the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”), the World Intellectual Property Organization, after consultation with the Canadian Intellectual Property Office, has established the new individual designation fees payable when Canada is designated in an international designs application or in an application for renewal of an international registration designating Canada.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Canada Full text
 
 
 
 

Cases

 
Copyright (1)
 
 
USA: Skidmore v. Led Zeppelin, United States Court of Appeals, Ninth Circuit, No. 16-56057, 28 September 2018
 
The U.S. Court of Appeals in San Francisco has vacated in part a district court’s judgment after a jury trial in favor of the defendants and remanded for a new trial in a copyright infringement suit alleging that Led Zeppelin and members of the band copied the classic rock hit "Stairway to Heaven" from the song "Taurus," written by Spirit band member Randy Wolfe. The jury had found that plaintiff Michael Skidmore—as trustee of a trust managing the late Wolfe’s assets—owned the copyright to "Taurus" and that the defendants—including Led Zeppelin members Robert Plant and Jimmy Page—had access to Skidmore’s composition, but it determined that the two songs were not substantially similar under the extrinsic test. According to the Ninth Circuit, some of the instructions given to the jury by the district court were erroneous and prejudicial. First, in an instruction relating to the extrinsic test, the district court failed to instruct the jury that the selection and arrangement of otherwise unprotectable individual musical elements could be protectable. Second, the district court erred in its instructions on originality. The court also held that the district court properly limited the scope of the copyright to "Taurus" to its sheet music (the deposit copy), but it held that the jury should have been allowed to observe Page listening to recordings of "Taurus" in order to help them assess whether Page had access to the work (Skidmore v. Led Zeppelin, September 28, 2018, Paez, R.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (10)
 
 
Germany: Feuerfeste Zustellung einer Gießpfanne, Federal Court of Justice of Germany, X ZR 44/16, 13 March 2018
 
The Federal Court of Justice held that the purpose of determining the technical problem (objective) in invalidity proceedings is to locate the starting point of skilled efforts to enrich the state of the art without knowledge of the invention, in order to assess, in the subsequent and separate examination of patentability, whether or not the solution proposed for this purpose was rendered obvious by the state of the art. Accordingly, it does not have the function to make a preliminary decision on the question of patentability. Therefore, it is neither permissible to take into account elements belonging to the solution according to the patent in the formulation of the problem nor may it be assumed without further ado that it was appropriate for the person skilled in the art to deal with a particular problem.

However, it also cannot be assumed that a certain technical problem is not part of the problem to be solved, because the statements relating thereto in the patent specification were not contained in the original application documents. According to the established case law of the Federal Court of Justice, the technical problem underlying an invention arises from what the invention actually achieves. In this respect, the determination of the problem and the interpretation of the patent claim are in a certain interaction. However, in view of the priority of the patent claim over the remaining content of the patent specification, the determination of the problem may not result in a material restriction of the subject matter defined by the purposive construction of the patent claim.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 15 Oct 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Acylphosphane, Federal Court of Justice of Germany, X ZR 48/16, 21 March 2017
 
The Federal Court of Justice confirmed that the value of the matter in dispute can be amended on appeal, including retroactively for the first instance, if new facts are divulged that command such an amendment. The determination of the value of the matter in dispute is important for a German court case, since it directly determines the court fees and the reimbursable attorney fees that the losing party must pay to the winning party.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 15 Oct 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Filtern digitaler Videobilder, Federal Court of Justice of Germany, X ZR 90/15, 23 May 2017
 
This decision by the FCJ confirms that the cited prior art should, generally, provide concrete suggestions, hints or at least provide other reasons beyond the recognizability of the technical problem to seek the solution of a technical problem in the way presented in the patent.
 
Author(s): Axel T. Esser, Hoffmann Eitle
 
Source: Kluwer Patent CasesDate: 15 Oct 2018
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Poland: Supreme Administrative Court Rules on Claim To Annul Patent, Supreme Administrative Court of Poland, I GSK 904/12, Case Date 30 October 2013
 
The Supreme Administrative Court (the Court) recently issued an important ruling on the admissibility of an action to annul a patent which was initiated by the holder.  In contrast to current case law, the Court said that the holder of a patent had a legal interest in initiating proceedings to annul the patent.  This means that in disputes involving similar issues, the patent holder might take the plaintiff’s side.  The Court’s ruling leads to the conclusion that the patent holder always has a legal interest in starting proceedings to annul their own patent.  However, it is difficult to share the Court’s point of view.
 
Author(s): Kluwer IP Reporter
 
Source: Kluwer Patent CasesDate: 15 Oct 2018
 
Poland Full text
 
 
 
 
 
USA: Natural Alternatives International, Inc. v. Iancu, United States Court of Appeals, Federal Circuit, No. 2017-1962, 01 October 2018
 
The Patent Trial and Appeal Board did not err in finding following reexamination that the challenged claims of a patent owned by Natural Alternatives International were invalid in view of prior art, including an earlier patent in a chain of eight related patents, the U.S. Court of Appeals for the Federal Circuit has decided. The patentee was not entitled to claim priority under 35 U.S.C. §120 to the first four applications in the chain via the fifth application because the fifth application had been amended to delete the specific reference to the fourth application (Natural Alternatives International, Inc. v. Iancu, October 1, 2018, Prost, S.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Roche Molecular Systems, Inc. v. Cepheid, United States Court of Appeals, Federal Circuit, No. 2017-1690, 09 October 2018
 
Roche Molecular Systems, Inc.’s patent addressing methods for detecting the pathogenic bacterium Mycobacterium tuberculosis MTB infection, a major cause of tuberculosis, was directed to patent-ineligible subject matter, the Federal Circuit has held. Because the asserted claims were directed to a natural phenomenon and lacked any inventive concept that transformed them into patent-eligible subject matter, the Federal Circuit affirmed a district court’s judgment declaring the patent invalid. The Federal Circuit held that being the first to discover a previously unknown naturally occurring phenomenon or a law of nature alone was not enough to confer patent eligibility (Roche Molecular Systems, Inc. v. Cepheid, October 9, 2018, Reyna, J.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Data Engine Technologies LLC v. Google LLC, United States Court of Appeals, Federal Circuit, No. 2017-1135, 09 October 2018
 
Apart from one claim of one patent, all asserted claims of three patents related to electronic spreadsheets were directed to patent-eligible subject matter, the U.S. Court of Appeals for the Federal Circuit has decided. The court found that these claims were not abstract, but rather were directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets (Data Engine Technologies LLC v. Google LLC, October 9, 2018, Stoll, K.).
 
Author(s): Joseph Arshawsky
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Ronnie Van Zant, Inc. v. Cleopatra Records, Inc., United States Court of Appeals, Second Circuit, No. 17-2849, 10 October 2018
 
The federal district court in Manhattan erred by permanently enjoining the release of a motion picture about the 1977 airplane crash that killed members of the band Lynyrd Skynyrd and the effect of the crash on surviving band member Artimus Pyle, the U.S. Court of Appeals in New York City has ruled. The terms of a 1988 consent decree—signed by Pyle, other surviving band members and heirs of members who died in the crash regarding use of the name "Lynyrd Skynyrd" and exploitation of the history of the band—was inconsistent, or at least insufficiently precise, to support the injunction. Two of the three judges on the panel filed a concurring opinion, expressing their view that the movie fell within the bounds of the 1988 consent decree (Ronnie Van Zant, Inc. v. Cleopatra Records, Inc., October 10, 2018, per curiam).
 
Author(s): Cheryl Beise, CCH
 
Source: Manual IP NewsDate: 15 Oct 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Yeda Research and Development Co. Ltd. v. Mylan Pharmaceuticals Inc., United States Court of Appeals, Federal Circuit, No. 2017-1594, 12 October 2018
 
In a major victory for generic drug manufacturers, including Mylan Pharmaceuticals Inc., the U.S. Court of Appeals for the Federal Circuit has ruled that Yeda Research and Development Co.’s patents claiming 40-milligram formulations of the drug Copaxone used to treat multiple sclerosis are obvious and invalid. In affirming three decisions by the Patent Trial and Appeal Board invalidating the patents, the appeals court ruled that the claims for a dosing regimen and decreased injection frequency were obvious. The court also found no due process violation because Yeda received proper notice of a study used by the Board (Yeda Research and Development Co. Ltd. v. Mylan Pharmaceuticals Inc., October 12, 2018, Reyna, J.).
 
Author(s): Brian Craig
 
Source: Manual IP NewsDate: 15 Oct 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., United States Court of Appeals, Federal Circuit, No. 2017-1575, 12 October 2018
 
Concluding that the asserted claims of patents relating to dosing and administration of the drug Copaxone used to treat multiple sclerosis are obvious, the U.S. Court of Appeals the Federal Circuit has affirmed a decision by the federal district court in Delaware invalidating the patents, handing a major victory to generic drug manufacturers. The Federal Circuit found the district court committed no error in construing claim terms as non-limiting for nonobviousness purposes or in invalidating as obvious all asserted claims of the Copaxone patents, including a 40-milligram dosage three times per week (Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., October 12, 2018, Reyna, J.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (1)
 
 
USA: Real Foods Pty Ltd. v. Frito-Lay North America, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1959, 04 October 2018
 
In an opposition proceeding brought by Frito-Lay North America against Real Foods Pty Ltd., the Trademark Trial and Appeal Board properly determined that the marks CORN THINS and RICE THINS were highly descriptive of their respective goods—"crispbread slices predominantly of corn, namely popped corn cakes" and "crispbread slices primarily made of rice, namely rice cakes"—and that Real Foods failed to prove that the marks had acquired distinctiveness among consumers, the U.S. Court of Appeals for the Federal Circuit has decided. The Board’s decision to sustain Frito Lay’s opposition to registration of the marks on the ground of mere descriptiveness was affirmed. However, the Board’s dismissal of Frito Lay’s opposition on the ground of genericness was reversed because the Board erred by unduly narrowing the genus of goods at issue. The court remanded the case to the Board to reconsider its selected genus and to conduct a genericness analysis in light of that genus (Real Foods Pty Ltd. v. Frito-Lay North America, Inc., October 4, 2018, Wallach, E.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 15 Oct 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
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