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 8
May 2018
 
 
 

News

 
General Information (6)
 
 
Benelux sets up new court to hear appeals against BOIP decisions
 
From 1 June 2018, the new Second Chamber of the Benelux Court will hear all the appeals filed against decisions of the Benelux Office for Intellectual Property (BOIP). Further appeal against decisions of the Second Chamber can be filed at the First Chamber of the Benelux Court.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Benelux Full text
 
 
 
 
 
Demark adopts new trade secrets law
 
In order to implement the EU Trade Secrets Directive, the Danish parliament has recently adopted a new act on trade secrets, which will come into force on 9 June 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Denmark Full text
 
 
 
 
 
Mexico to come under new IP regime soon
 
In an effort to align its Industrial Property (IP) law with the international practice, Mexico is all set to adopt a new IP law, which will include changes to laws concerning patents, utility models, trademarks and industrial designs, as well as a provision for protection of the geographical indications (GIs).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Mexico Full text
 
 
 
 
 
Netherlands to become depositing and accessing office of WIPO DAS
 
The Netherlands Patent Office (NPO) has recently announced that it will start functioning as both a depositing and an accessing office of the WIPO Digital Access Services (DAS) with effect from 1 June 2018, allowing applicants filing international applications with the NPO to request it to act as depositing office under the WIPO DAS and also to retrieve a copy of an earlier application from WIPO DAS for use as a priority document.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Netherlands Full text
 
 
 
 
 
South Korea revises trademark and design examination guidelines
 
Aimed at aligning the intellectual property system in South Korea with the international practice, the Korean Intellectual Property Office (KIPO) revised its trademark and design examination guidelines, and the new guidelines came into force on 1 January 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
South Korea Full text
 
 
 
 
 
Syria gets new court exclusively for IP disputes
 
All intellectual property-related matters in Syria will now be handled by the Fifth Civil Court of First Instance (Fifth Circuit). Earlier the First Circuit used to hear these cases.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Syria Full text
 
 
 
 
 
Ratifications (2)
 
 
Afghanistan accedes to Madrid Protocol
 
The Islamic Republic of Afghanistan has recently acceded to the Madrid Protocol for the International Registration of Marks (Madrid System) by depositing its instrument of accession with the Director General of the World Intellectual Property Organization (WIPO), thus becoming the 101st member state of the Madrid System.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Afghanistan Full text
 
 
 
 
 
UK ratifies UPC Agreement
 
The UK ratified the Unified Patent Court (UPC) Agreement on 26 April 2018. 

As is pointed out in an article by Bristows: ‘Whilst the UPC still cannot start unless and until the outstanding complaint to the German Federal Constitutional Court (…) is resolved in favour of the UPC system, (…) announcement paves the way for discussions to begin in earnest concerning the UK’s future (post-Brexit) participation in the UPC.’

The UK is the 16th country to ratify the UPC Agreement and only Germany’s ratification is now required. 

For more information please click here.

 
 
Author(s): Correspondent Gertie Schouten, Sole Correspondent KMIP e-Alert
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
Patents/Utility Models (44)
 
 
Belarus to enforce amended patent law in July
 
Aiming to align laws and procedures relating to intellectual property in the Republic of Belarus with international practices, Belarus has decided to enforce the amended Law “On Patents for Inventions, Utility Models, Industrial Designs” with effect from 7 July 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Belarus Full text
 
 
 
 
 
Analysing new Belgian patent law adapting system to UPCA
 
The new Belgian ‘Act amending various provisions on patents in relation to the implementation of the unitary patent and the unified patent jurisdiction’ means some patent restrictions and exemptions will change in order to adapt them to the Unitary Patent system.

According to an article of Bird & Bird, the textual changes are clear, the consequences thereof a bit less so however.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
Belgium, European Union Full text
 
 
 
 
 
Ratification UPC provisional application phase in Bulgaria closer
 
The Bulgarian Council of Ministers will propose parliament to ratify the Unified Patent Court (UPC) Agreement’s Protocol on Provisional Application (PPA). 

According to Bristows, Bulgaria signed the PPA on 11 September 2017, but it is subject to ratification by parliament. The PPA allows various provisions of the UPC Agreement to come into force early.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
Bulgaria, European Union Full text
 
 
 
 
 
Laos to accept examination results of China invention patents
 
In an effort to strengthen cooperation between China and Laos in the area of intellectual property (IP), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the Ministry of Science and Technology in Laos (MST) have signed a Memorandum of Understanding (MOU) on 2 April 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
China, Laos Full text
 
 
 
 
 
China issues measures to control overseas transfers of IP rights
 
Considering the impact of overseas transfers of intellectual property (IP) rights on national security and on the developmental capabilities for some of the strategic industries in the People’s Republic of China, the Chinese State Council, on 29 March 2018, published the External Transfer of Intellectual Property Rights Measures for trial implementation.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
China Full text
 
 
 
 
 
China releases draft amendments to patent law
 
The State Council of China has recently released the Legislation Plan for 2018, which includes amendments to the Patent Law, and the Plan will now be submitted to the National People’s Congress for consideration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
China Full text
 
 
 
 
 
EPO invites comments on revised Rules of Procedure of Boards of Appeal
 
The European Patent Office has invited users to participate in the written consultation on the proposed revised Rules of Procedure of the Boards of Appeal (RPBA), the first draft of which is published on 1 February 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
European Patent Organization Full text
 
 
 
 
 
EPO reduces fees for patent-related processes
 
In an effort to make the patent-related processes more user-friendly and to encourage innovation, the Administrative Council of the European Patent Organisation had approved a fee reduction in December 2017 for patent-related processes, and this new fee schedule came into force on 1 April 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
European Patent Organization Full text
 
 
 
 
 
'UK lawyers should lobby to secure representation rights in UPC'
 
The position of UK lawyers is uncertain as once the UK leaves the EU, they may no longer be able to act for their clients in the UPC.

According to an article in the annual review 2018 of the Scottish Legal News, UK lawyers should continue lobbying IP representative bodies to ensure the representation issue is on the frontline alongside securing the UPC for the UK for the longer term.

For  more information please click here.
 
Author(s): Correspondent Gertie Schouten, Sole Correspondent KMIP e-Alert
 
Source: Unified Patent Court NewsDate: 18 May 2018
 
European Union, Scotland, United Kingdom Full text
 
 
 
 
 
Luxembourg approves UPC’s Protocol on Privileges and Immunities
 
On 3 April 2018, the Government of Luxembourg has deposited its instrument of approval of the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court (UPC) with the General Secretariat of the Council of the European Union.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
European Union, Luxembourg Full text
 
 
 
 
 
Luxembourg deposits instrument of approval PPI UPC
 
Luxembourg deposited its instrument of approval of the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court with the Council’s General Secretariat on 3 April 2018.

The PPI will confer legal status on the UPC and certain privileges and immunities on the Court and its staff. The UPC Court of Appeal and Registry will be in Luxembourg. 

For more information please click here
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, Luxembourg Full text
 
 
 
 
 
Stjerna’s constitutional complaint is solo action
 
Dr Ingve Björn Stjerna, who reportedly filed the complaint against German ratification of the Unified Patent Court Agreement, has received neither support from third parties nor financial backing.

He said this to the legal website Juve, which portrayed Stjerna in its recent English language online magazine.

Stjerna has never publicly confirmed he is indeed the man behind the complaint, which could delay or derail the Unitary Patent System.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
Delay UPC major concern for industry
 
The delays and uncertainties concerning the Unitary Patent system are a major concern for the IP related industry.

According to a non-representative survey carried out by the legal website Juve, a majority of the industry hopes for a quick start of the system, and 75 percent says they will accept a UPC without the UK, although they stress a UPC including the UK has their strong preference.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
EPO expects Unitary Patent system to be operational early 2019
 
The Unitary Patent system will likely be operational early 2019, according to the principal director for Unitary Patent, European and international legal affairs of the EPO, Margot Fröhlinger.

Fröhlinger has said this during an event for SMEs. There is widespread uncertainty in the patent community due to a constitutional complaint which has been filed against the UP system in Germany and which could lead to considerable delays and even undermine the system, but apparently Fröhlinger is confident the Federal Constutional Court will reject this complaint.  

The EPO's Chief Economist Yann Ménière pointed out that the Unitary Patent will 'provide SMEs with access to a wider geographic protection in Europe, enabling them to better exploit the full potential of the Single Market'.

For more information please click here.

 
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
Italy ratifies UPC Protocol on Privileges and Immunities
 
Italy has deposited its instrument of ratification of the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court with the Secretariat of the European Council.

The PPI will confer legal status on the Court, which will have a local division in Milan, and certain privileges and immunities on the Court and its judges and staff to ensure its proper functioning.  

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, Italy Full text
 
 
 
 
 
'There will be no Unitary Patent system in 2018 or 2019'
 
There will be no Unitary Patent in 2018 and it will probably not enter into force in 2019 either.

Patricia García-Escudero Márquez, president of the Spanish Patent and Trademark Office has said this during a hearing of the Spanish parliament. She pointed at the German constitutional complaint and the Brexit as reasons the UP system is not likely to enter into force any time soon.

For more information please click here (last page, Spanish)

 
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
Pessimism European Commission about Unitary Patent system?
 
‘What was interesting about the latest draft of the [Brexit, ed.] withdrawal agreement (….including many of the IP provisions) was that it didn’t refer to the Unitary Patent at all.’

Rachel Montagnon, professional support consultant at HSF in London, says this in an article of CDR on the Unitary Patent system. She thinks ‘this suggests that the [European] Commission does not see the new patent system coming into effect imminently and perhaps thought it too uncertain, or even unlikely, that that UPC and the Unitary Patent could be established before Brexit.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
‘Unitary Patent system will not lead to innovation’
 
The Unitary Patent is a major step toward the creation of a truly European patent system, but one should not expect too much of an impact on real innovation efforts.

Professor Bruno van Pottelsberghe of the Solvay Brussels School of Economics and Management writes this in an article of Brinknews.

‘First, the Unitary Patent will “only” include 18 EU member states, with some important economies, such as Spain or Poland, not being part of it. Second, and foremost, the Unitary Patent constitutes a third layer of patent protection (…) on top of the current systems.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
UK ratifies UPC Agreement
 
Clearing the prolonged uncertainty over whether the UK would be part of the Unified Patent Court Agreement (UPCA) after Brexit taking effect, the UK’s Minister for Intellectual Property has on 26 April 2018 confirmed that the UK has ratified the UPCA, and the UK’s Foreign & Commonwealth Office has deposited the instrument of ratification with the General Secretariat of the Council of the European Union.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
UPC Preparatory Committee publishes ratification update
 
The UPC Preparatory Committee has published a ratification update on its website.

According to the report, 2018 has begun well ‘with Latvia ratifying in January and the UK ratifying the UPCA on 26 April.  In addition, there are a number of contracting states who have ratified the Protocol on Privileges and Immunities over the last few months.’ 

Still, there remains ‘more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA in Germany which will influence the speed of moving to the final stage of the project. Those that have applied for judicial positions will be contacted directly (…).’

For more information please click here.
 
Author(s): Correspondent Gertie Schouten, Sole Correspondent KMIP e-Alert
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
EPO welcomes UK ratification UPCA
 
EPO president Battistelli has welcomed the UK ratification of the Agreement relating to the Unified Patent Court (UPCA).

Battistelli said: ‘Today's ratification by the UK brings us a decisive step closer to achieving the entry into force of the Unitary Patent. We are now within touching distance of a new patent for Europe that will support our innovation sector with simplified administration, reduced costs and greater legal certainty.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
UPCA ratification: UK citizens not that bothered about ‘taking back control’
 
The British public and their elected representatives are not that bothered how membership of the UPC is compatible with the stated Brexit aim of ‘taking back control’, when essentially signing up to a European patent litigation system does exactly the opposite.

This is argued in an IAM Media article, reacting to the UK’s UPCA ratification. ‘In fact (…) there are an awful lot of other things, too, that neither politicians nor the voting public care that much about on a day-to-day basis. It could just be that UPC ratification is a sign of how a lot of other very important – but technical – issues might play out in and around the Brexit negotiations: behind all the soundbites and rows, not much at all will change.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
UK ratification UPCA means talks can start about UP system post-Brexit
 
The UK ratification of the UPCA opens the door for negotiations to ensure that the UK can stay in the Unitary Patent system after the Brexit transition period, which ends in December 2020.

This is argued in an article of JUVE. Still, UK participation in the UP system remains uncertain due to the delay caused by the German constitutional complaint, as only EU members can become member and the Brexit will take effect in March 2019.

UK membership of the new system is ensured only in case the German constitutional complaint is dismissed, Germany completes ratification of the UPCA by November of this year so the UPCA enters into force four months later.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
CIPA welcomes UK ratification of UPCA
 
The Chartered Institute of Patent Attorneys (CIPA) has welcomed the UK ratification of the Unified Patent Court Agreement.

‘CIPA President Stephen Jones said the decision would be good news for businesses. He also said that the UK would be able to play a full role, despite Brexit, because the UPC would be an international court and not an EU institution.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
Bumps still in the road despite UK ratification UPCA
 
UK ratification of the UPCA is an important step towards the Unitary Patent system, but there are several bumps still in the road.

According to an article of Pinsent Masons, the first one is the German constitutional complaint, but this isn’t the only issue. ‘A further hurdle that needs to be overcome concerns the ratification of the Protocol to the Agreement on a Unified Patent Court on provisional application.

(…) The Protocol (...) needs to be ratified by at least 13 of the signatories to take effect. At the moment, just 12 countries (…) have completed ratification of the Protocol.’

For more information please click here.
 
Author(s): Correspondent Gertie Schouten, Sole Correspondent KMIP e-Alert
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
‘EPO problem for Unitary Patent system’
 
Despite the UK’s ratification of the UPCA, several problems will need to be solved, among others at the EPO.

This is argued in an article of The Register. ‘(…) there still remains a very significant problem at the heart of the European patent system – and that is the European Patent Office (EPO), which has been in virtual meltdown thanks to the extraordinary campaign by EPO president Benoit Battistelli against his own staff.

(…) Even if the UPC does gets passed, it is still going to take years and significant effort to repair the damage done by Battistelli.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
'UP has serious disadvantages for Spain'
 
The Spanish minister of energy, tourism and digital agenda, Álvaro Nadal, has acknowledged that membership of the Unitary Patent system may have advantages for Spain but serious downsides as well, especially for SMEs.

This has been reported by the Spanish newspaper Vanguardia. Nadal made his remarks in the Spanish parliament in reaction to a question of PNV representative Idoia Sagastizabal.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, Spain Full text
 
 
 
 
 
UK remaining in UP will depend on EU withdrawal agreement
 
The UK’s chances of remaining party to the UPCA ‘will depend in large part on whether we leave the EU with a withdrawal agreement and on our future relations with the remaining member states.’

This is argued in an NIPC article. ‘It is by no means clear whether the UK can remain a party to the UPC Agreement.  My own view is that it cannot but there is a contrary view held by, among others, the British government that the UPC Agreement is an international treaty that lies outside the EU.  The reason for my scepticism is that such a treaty would be incompatible with EU law for the reasons given by the Court of Justice of the European Union in Opinion 1/09 of 8 March 2011.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
Chances for IP litigation insurance due to UP?
 
Rights owners in Europe are less interested in IP litigation insurance compared to those in the US, Asia and Australia, according to a report of the European Observatory on Infringements of Intellectual Property Rights.

According to a WIPR report, the European Commission created the Observatory, a network of IP specialists, to allow EU policy makers to shape IP enforcement and support innovation. ‘The Observatory said the introduction of the Unitary Patent has a “positive perception” in the IP insurance industry, as it “represents an improved business opportunity for insurance providers to offer existing products on a broader geographical scope”.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
Battistelli wants Slovenia to complete UPCA ratification
 
EPO President Benoit Battistelli has stressed the importance of a full completion of ratification of the UPC Agreement by Slovenia, not least because Ljubljana will host one of the seats of the new court's Mediation and Arbitration Centre.

According to an EPO press release, Battistelli made his remarks during EPO's 2018 PATLIB conference in Ljubljana.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
'About 40 cases a year for the UPC'
 
‘It is not difficult to see 40 or so cases a year being heard in the Unified Patent Court.’

This is argued in an article of Simmons & Simmons. The article includes a table summarizing ‘the volume of patent litigation in the most active jurisdictions in Europe and some of the features which may impact the transfer of such work to the Unified Patent Court.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union Full text
 
 
 
 
 
France adopts order to amend IP Law in view of upcoming UP system
 
France has adopted an order to amend the French Intellectual Property Code in view of the upcoming changes due to the Unitary Patent system.

According to a report by La Voix, it will have a wider impact on patent law in France. For infringement claims, for instance, article 11 of the Order changes the conditions on which an exclusive licensee may file a patent infringement claim.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 May 2018
 
European Union, France Full text
 
 
 
 
 
India publishes summary of public comments on Working of Patents
 
The Indian Patent Office (IPO) has recently published a summary of the comments received from stakeholders on the Working of Patents requirements.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
India Full text
 
 
 
 
 
Japan, Turkey launch PPH pilot
 
On 1 April 2018, the Japan Patent Office (JPO) and the Turkish Patent and Trademark Office (TURKPATENT) have launched a Patent Prosecution Highway (PPH) pilot programme between the two offices for an indefinite period.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Japan, Turkey Full text
 
 
 
 
 
Vietnam stops accepting application under Japan-Vietnam PPH
 
The Japan Patent Office (JPO) and the National Office of Intellectual Property of Vietnam (NOIP) commenced their three-year Patent Prosecution Highway (PPH) pilot programme on 1 April 2016, but NOIP has stopped accepting PPH requests from 3 April 2018 as the number of requests have reached its annual limit of 100.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Japan, Vietnam Full text
 
 
 
 
 
PCT national stage applications can now be filed in Kuwait
 
With effect from 27 March 2018, the Kuwait Patent Office has started accepting international Patent Cooperation Treaty (PCT) applications that wished to enter national phase of PCT in Kuwait.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Kuwait Full text
 
 
 
 
 
New Patent Regulations enter into force in New Zealand
 
The Patents Amendment Regulations 2018, which received the Royal assent on 5 March 2018, came into force on 5 April 2018. The new Regulations amended the Patent Regulations 2014.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
New Zealand Full text
 
 
 
 
 
Korea to offer accelerated examination of patents in core technology areas
 
The Korean Intellectual Property Office (KIPO) is planning to introduce an accelerated examination procedure for patent applications relating to inventions in the core technological areas of artificial intelligence, autonomous vehicles, Big Data, cloud computing, cognitive robotics, internet of things and 3D printing.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
South Korea Full text
 
 
 
 
 
Korea launches expedited examination of patents in core technology areas
 
To provide for the Korean Intellectual Property Office (KIPO) to introduce an accelerated examination process for applications relating to the “Fourth Industrial Revolution”, the Korean government has recently amended the enforcement regulations of the Korean Patent Act including, and the new provisions came into effect on 24 April 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
South Korea Full text
 
 
 
 
 
STRONGER Patents Act tabled in US House of Representatives
 
Aiming to restore patents as property rights, U.S. Representatives Steve Stivers and Bill Foster have introduced the Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act into the U.S. House of Representatives on 22 March 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
U.S. Supreme Court upholds PTAB’s powers on inter partes review
 
On 24 April 2018, the United States Supreme Court, in a 7-2 decision in the Oil States vs. Greene’s Energy Group case, upheld the constitutional validity of inter partes review (IPR) proceedings before an Article I tribunal—the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO)—holding that it is not necessary that such a proceeding should take place only in an Article III court and that such a proceeding does not violate the Seventh Amendment right (right to a jury trial).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
PTAB must consider all challenged claims in an IPR, says U.S. apex court
 
On 24 April 2018, the United States Supreme Court, in the SAS Institute, Inc. v. Iancu case, held that the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) cannot issue a final written decision on the patentability of only some of the claims challenged in a petition for inter partes review (IPR) and that, once instituted, the PTAB must issue a decision on all of the challenged claims.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
USPTO issues guidance on IPR proceedings before PTAB
 
Following the United States Supreme Court decision in SAS Institute, Inc. v. Iancu, the United States Patent and Trademark Office (USPTO) has issued guidance on trial relating to inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
USPTO invites public comments on subject matter eligibility guidance
 
Following the recent decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in Berkheimer v. HP Inc., the U.S. Patent and Trademark Office (USPTO) is now seeking public comment on subject matter eligibility guidance under Section 101 of Title 35 of the United States Code (35 U.S.C. § 101), concerning a limited question on whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
Trademarks (14)
 
 
Trademark data from ARIPO now available through TMclass
 
On 09 April 2018, the African Regional Intellectual Property Organization (ARIPO) has joined the Common Harmonised Database on Classification of Goods and Services, making its trademark classification data available through TMclass.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
African Regional Intellectual Property Organization Full text
 
 
 
 
 
Bahrain launches efiling facility for patents
 
In an effort to simplify patent filing procedures for applicants, the Patent Office in Bahrain has started accepting and processing patent applications in electronic form.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Bahrain Full text
 
 
 
 
 
Madrid Protocol fees established for Cambodia
 
Based on a declaration by the Government of Cambodia under the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 11 April 2018 has established new individual fees applicable when Cambodia is designated in an international application or in an application for renewal of international registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Cambodia Full text
 
 
 
 
 
Chile trademark data now available via TMview
 
Effective 26 April 2018, the National Institute of Industrial Property Office of Chile (INAPI) has made its trademark data available via TMview, an online search tool that allows users to access the databases of all participating trademark offices.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Chile Full text
 
 
 
 
 
Moldova, Peru start using list of terms from TMclass
 
With effect from 7 May 2018, the State Agency on Intellectual Property of the Republic of Moldova (AGEPI) and the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru (INDECOPI) started using the list of goods and services from the harmonised database (HDB) in TMclass, thus becoming the two first non-European Union IP offices to use terms from the HDB.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
European Union, Moldova, Peru Full text
 
 
 
 
 
Iran accedes to Nice Agreement
 
On 12 April 2018, the Government of the Islamic Republic of Iran has deposited its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks with the Director General of the World Intellectual Property Organization (WIPO), thus becoming the 85th contracting state of the Nice Agreement.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Iran Full text
 
 
 
 
 
Iraq rescinds decision mandating filing of trademark in Arabic
 
Rescinding its earlier decision on trademark applications mandating filing of the trademark in Arabic script alongside its Latin version, the Trademark Office in Iraq has announced that the submission of the Arabic transliteration of the mark is not mandatory and the applications could be filed in Latin script.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Iraq Full text
 
 
 
 
 
Israel trademark data now available via TMview
 
Effective 14 May 2018, the Israel Patent Office (ILPO) has made its trademark data available via TMview, an online search tool that allows users to access the databases of all participating trademark offices.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Israel Full text
 
 
 
 
 
Jordan trademark data now available via TMview
 
Effective 23 April 2018, the Jordanian Industrial Property Protection Directorate (IPPD) has made its trademark data available via TMview, an online search tool that allows users to access the databases of all participating trademark offices.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Jordan Full text
 
 
 
 
 
Malawi gets new Trademarks Act, but delays its implementation
 
To replace the existing trademark law, the Trade Marks Act 1957, Malawi published the Trademarks Bill (2017) in January 2018, which has since been passed into law as Trademarks Act 2018, but implementation of the new Act will be delayed for want of subordinate legislation required for its implementation.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Malawi Full text
 
 
 
 
 
Mexico toughens laws on trademark protection
 
In an effort to enhance trademark protection in the country, Mexico’s Senate has recently passed important amendments to the Mexican Industrial Property Law.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Mexico Full text
 
 
 
 
 
Madrid Protocol fees revised for New Zealand
 
Under the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 2 May 2018 notified revised individual fees applicable when New Zealand is designated in an international application or in an application for renewal of international registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
New Zealand Full text
 
 
 
 
 
UK registrants’ .eu domain names to become invalid?
 
In March 2018, the European Commission issued a notice stating that the “EU regulatory framework for the .eu Top Level Domain” will not apply to the UK from 30 March 2019 unless the European Union and the UK agree otherwise in the withdrawal agreement.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United Kingdom Full text
 
 
 
 
 
USPTO launches pilot project to combat improper trademark specimens
 
The U.S. Patent and Trademark Office (USPTO) has launched a pilot program that provides an easy route to protest against possible fraudulent trademark specimens that might be digitally altered or fabricated.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
United States of America Full text
 
 
 
 
 
Industrial Models and Designs (2)
 
 
Iran accedes to Locarno Agreement
 
On 12 April 2018, the Government of the Islamic Republic of Iran has acceded to the Locarno Agreement Establishing an International Classification for Industrial Designs by depositing its instrument of accession with the Director General of the World Intellectual Property Organization, thus becoming the 55th contracting party to the Agreement.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Iran Full text
 
 
 
 
 
Jordan registered designs data now on DesignView
 
Effective 23 April 2018, the Jordanian Industrial Property Protection Directorate (IPPD) has integrated Jordanian registered designs data into the DesignView search tool, raising the number of intellectual property offices to join DesignView to 64.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 May 2018
 
Jordan Full text
 
 
 
 

Cases

 
Copyright (6)
 
 
USA: U.S. v. Lundgren, United States Court of Appeals, Eleventh Circuit, No. 17-12466, 11 April 2018
 
In a criminal copyright case involving a defendant’s creation and sale of approximately 28,000 unauthorized copies of Dell reinstallation discs for Microsoft Windows, it was not clear error for a district court to value the infringed item at $25 per unit, for purpose of determining the defendant’s sentence pursuant to federal sentencing guidelines. It was appropriate to use the retail value of the infringed item—the product sold by Microsoft under its licensed refurbishment program—rather than the price charged by the defendant for his infringing copies. Accordingly, the district court’s sentence of 15 months’ imprisonment was affirmed (U.S. v. Lundgren, April 11, 2018, per curiam).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Fox News Network, LLC v. TVEyes, Inc., United States Court of Appeals, Second Circuit, Nos. 15-3885(L), 27 February 2018
 
In a copyright infringement lawsuit brought by Fox News, TVEyes, Inc.—provider of an online service that enabled customers to locate and view the content of recorded and archived radio and television broadcasts—was not protected by the Copyright Act’s fair use defense, the U.S. Court of Appeals in New York City has held. Although TVEyes’ redistribution of Fox’s content served a transformative purpose, TVEyes made available virtually all of Fox’s copyrighted content and deprived Fox of potential licensing revenue to which it was entitled as the copyright holder. A decision of the federal district court in New York City concluding that the fair use doctrine protected TVEyes’ video archiving feature was reversed. Fox did not content the lower court’s finding that the copying of Fox’s closed-captioned text into a text-searchable database was fair use. The case was remanded for entry of a revised injunction barring all of TVEyes’ infringing services (Fox News Network, LLC v. TVEyes, Inc., February 27, 2018, Jacobs, D.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Williams v. Gaye, United States Court of Appeals, Ninth Circuit, No. 15-56880, 21 March 2018
 
A divided panel of the U.S. Court of Appeals in San Francisco has affirmed a district court’s judgment, after a jury trial, that "Blurred Lines" songwriters and pop stars Robin Thicke and Pharrell Williams are liable for approximately $5.3 million in damages to the heirs of the late Marvin Gaye for infringing Gaye’s copyright in the 1977 hit "Got to Give It Up." The appellate court held that "Got to Give It Up" was entitled to broad copyright protection, although it accepted the district court’s ruling that the copyright’s scope was limited under the 1909 Copyright Act to the sheet music and did not extend to sound recordings. The infringement verdict was supported by evidence and was not the result of erroneous jury instructions. The court reversed, however, the district court’s decision to overturn the jury’s general verdict in favor of rapper and composer Clifford Harris, Jr., and the record companies that produced and distributed "Blurred Lines" because Gaye’s heirs waived any challenge to the consistency of the jury’s general verdicts. In addition, according to the appellate court, there was no evidence showing that Harris was vicariously liable for copyright infringement. Circuit Judge Jacqueline H. Nguyen dissented, opining that that "Blurred Lines" and "Got to Give It Up" were not objectively similar and that the Thicke Parties were entitled to judgment of noninfringement as a matter of law (Williams v. Gaye, March 21, 2018, Smith, M.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Great Minds v. FedEx Office and Print Services, Inc., United States Court of Appeals, Second Circuit, No. 17-808-cv, 21 March 2018
 
A nonprofit organization that designs educational materials cannot go forward with copyright infringement claims against FedEx Office and Print Services, Inc. ("FedEx") for copying the organization’s math curriculum for school districts because a public license allowing noncommercial reproduction and distribution of the curriculum did not explicitly forbid licensees from engaging third-party commercial service providers to assist them in carrying out their own noncommercial uses, the U.S. Court of Appeals for the Second Circuit has held. There was no dispute that the licensee school districts sought to use the curriculum materials for permissible purposes, and FedEx acted as the mere agent of the districts when it reproduced the materials. Therefore, FedEx did not breach the license or infringe the organization’s copyright (Great Minds v. FedEx Office and Print Services, Inc., March 21, 2018, Carney, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: AMA Multimedia, LLC v. Sagan Ltd., United States Court of Appeals, Ninth Circuit, No. 17-15178, 27 April 2018
 
The U.S. Court of Appeals in San Francisco has vacated a decision of the federal district court in Phoenix, ruling that porn producer AMA Multimedia LLC must litigate in Barbados its copyright infringement claims against several persons and entities associated with the operators of the website Porn.com, and dismissing its suit on forum non conveniens grounds. The district court relied on a forum-selection clause in a licensing agreement that AMA entered into with non-party entity GIM Corp. The clause required litigation "arising out of or relating to" the agreement be instituted in Barbados. Although the agreement permitted GIM to assign the agreement to any "affiliate, parent, or subsidiary," there was insufficient evidence that the agreement was in fact assigned to the website operators (AMA Multimedia, LLC v. Sagan Ltd., April 27, 2018, McKeown, M.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Baiul v. NBC Sports, United States Court of Appeals, Ninth Circuit, No. 16-56658, 27 April 2018
 
A lawsuit brought by figure skater Oksana Baiul accusing NBC Sports of failing to pay her royalties owed for a video production of her ice skating performance in "Nutcracker on Ice" was barred by res judicata, the U.S. Court of Appeals in San Francisco has held. A decision of the federal district court in Los Angeles, dismissing Baiul’s lawsuit, was affirmed. There was an identity of the claims, the parties, and a final judgment on the merits against Baiul in an earlier suit filed in New York court, in which Baiul, as in this suit, asserted state law claims against NBC for failure to pay royalties in connection with audiovisual works featuring her skating performances (Baiul v. NBC Sports, April 27, 2018, per curiam).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (26)
 
 
Ankopplungssystem, Federal Court of Justice of Germany, X ZR 10/15, 01 March 2017
 
The Federal Court of Justice confirmed that a nullity defendant can defend its patent to a limited extent only insofar as it is attacked by the nullity plaintiff. The limited defence of the patent in dispute by combining an attacked claim with an uncontested subclaim or with one of several variants of an uncontested subclaim is inadmissible.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Wärmeenergieverwaltung, Federal Court of Justice of Germany, X ZR 14/16, 09 January 2018
 
The Federal Court of Justice confirmed that the definition of the person skilled in the art aims at defining a fictive person, from whose point of view the prior art and the patent is considered. Therefore, this definition cannot be based on considerations as to interpretation of the patent or inventive step.
 
Author(s): Volker Mr Tillmann
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Reporter for:
 
Germany Full text Full text as PDF
 
 
 
 
 
Vollständige Akteneinsicht, Federal Court of Justice of Germany, X ZR 17/17, 11 July 2017
 
The FCJ ordered that the petitioner must be granted access to the entire file wrapper. The objections raised by the plaintiff with regard to parts of the file which allow conclusions to be drawn on infringement proceedings conducted in parallel or which contain information on the designs challenged there were unfounded.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Monolithic multilayer actuator, Federal Court of Justice of Germany, X ZR 21/16, 19 December 2017
 
The FCJ held that when assessing inventive step the claim should be interpreted so that the disclosed embodiments are taken into account. Prior art that is far removed from the disclosed embodiments can thus not be assumed to disclose the most important features. Further, it was again confirmed that prior art that already provides a solution to a relevant problem does not provide an indication for the skilled person to look for (another) solution
 
Author(s): Dominik Dr Scheible
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Reporter for:
 
Germany Full text Full text as PDF
 
 
 
 
 
Akteneinsicht XXIII, Federal Court of Justice of Germany, X ZR 110/17, 14 February 2018
 
The FCJ held that:

a) An objection by one party can lead to the petitioner being required to demonstrate a legitimate interest in the inspection of the files of a patent nullity procedure, but only if the opposing party demonstrates an interest of its own which may stand in the way of the inspection.

b) The interest of a private expert in the fact that his name and the circumstance that he has become active on behalf of a particular party do not become known must, as a rule, stand back behind the right to inspection of files provided for in Sec. 99 (3) and Sec. 31 Patent Law for everyone.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Reit-/Fahrhalfter, Federal Patent Court of Germany, 2 Ni 39/13 (EP), 10 December 2015
 
The Federal Patent Court (FPC) ruled on the interplay between limitation proceedings before the EPO and a national nullity action, and the circumstances in which a request for a declaratory judgment concerning (partial) termination of proceedings in relation to the limited part of the patent is admissible and well-founded. The FPC held that where the limitation is granted, this does not necessarily lead to the patentee bearing the costs. Instead, the decision on the costs will be taken based on the prospects of the original nullity action. 
 
Author(s): Jan Zillies, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Ruling No. 159/2017, Court of Appeal of Barcelona, AUTO Nº 159/2017, 27 December 2017
 
In preliminary injunction proceedings, the influential Barcelona Court of Appeal held that reasons of "congruence" bind the court to basing the assessment of inventive step strictly on the particular prior art document chosen as the closest prior art by the party challenging its validity, regardless of whether that choice is technically and objectively justified. This could kick start a worrisome trend in Spanish revocation proceedings that is deeply inimical to the proper application of the problem-solution approach. The Court also made findings on the impact of decisions of the Opposition Division on Spanish injunctions.
 
Author(s): Adrian Crespo, Clifford Chance, Barcelona
 
Source: Kluwer Patent CasesDate: 18 May 2018
 
Reporter for: Spain
 
Spain Full text Full text as PDF
 
 
 
 
 
USA: In re Merck & Cie, United States Court of Appeals, Federal Circuit, No. 2017-1960, 11 April 2018
 
The U.S. Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board decision affirming a USPTO examiner’s rejection, on obviousness grounds, of certain claims of a Merck patent directed to the use of folates to improve dilation of blood vessels in cardiovascular disease patients. The Board reasonably read the prior art as providing a motivation for persons skilled in the relevant art to use folates alone to achieve the desired therapeutic effect, as the claims at issue required (In re Merck & Cie, April 11, 2018, Taranto, R.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Vanda Pharmaceuticals, Inc. v. West-Ward Pharmaceuticals International Ltd, United States Court of Appeals, Federal Circuit, No. 16-2707, 13 April 2018
 
In a split decision, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision of the District of Delaware holding, after a bench trial, that pharmaceutical makers West-Ward Pharmaceuticals International Limited and West-Ward Pharmaceuticals Corp. (collectively, "West-Ward") induced infringement of asserted claims of a patent for method for treating schizophrenia. The appellate court also agreed with the district court’s determination that the patent-in-suit was not invalid, and it affirmed the district court’s grant of injunctive relief to the patent’s owner, Aventisub LLC, and its exclusive licensee, Vanda Pharmaceuticals Inc. The district court had jurisdiction over the plaintiffs’ Hatch-Waxman Act infringement claims even though the patent-in-suit issued after West-Ward applied for approval of its generic product, because it had amended its application to assert that the patent was invalid. The patent did not claim ineligible natural phenomena, but instead a novel method of treating a disease, according to the court. The claims contained sufficient written description. West-Ward’s proposed product label encouraged physicians to carry out all of the steps of the asserted patent claims and therefore induced infringement. Finally, the district court properly issued an injunction under 35 U.S.C. §271(e)(4). Chief Judge Sharon Prost wrote in dissent, opining that the patent-in-suit was directed to an ineligible law of nature (Vanda Pharmaceuticals, Inc. v. West-Ward Pharmaceuticals International Ltd., April 13, 2018, Sleet, G.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Yufa v. TSI, Inc., United States Court of Appeals, Federal Circuit, No. 2017-2282, 13 April 2018
 
The U.S. Court of Appeals for the Federal Circuit has held that it lacks subject matter jurisdiction over an appeal of a district court’s order denying an inventor and patent owner’s ex parte application requesting that the district court direct a prevailing defendant in patent infringement litigation brought by the patent owner to file a renewed motion to compel the assignment of the owner’s patents to an assigned receiver in order to satisfy a judgment awarding the defendant’s attorney fees and costs. The court’s order was not a final judgment, which is ordinarily required for the Federal Circuit to have jurisdiction, and no exception to that general rule applied. A court order directing the receiver to perform a valuation of the patents at issue, and instructions to Yufa to cooperate with that effort, did not rise to the level of an injunction over which the court could hear an interlocutory appeal. An exception regarding appeals of interlocutory orders regarding receivers did not apply because the patent owner was not appealing the appointment of the receiver (Yufa v. TSI, Inc., April 13, 2018, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Grecia v. McDonald’s Corp., United States Court of Appeals, Federal Circuit, No. 2017-1672, 06 March 2018
 
The inventor and owner of two patents related to digital rights management—used to curb unlawful copying of data—failed to plausibly allege that McDonalds’ Corp. obtained a benefit from all of the claim elements of the patents, through its use of various credit card companies’ authorization networks, the U.S. Court of Appeals for the Federal Circuit has held. Therefore, a district court’s dismissal of the patent owner’s infringement suit against McDonald’s was affirmed (Grecia v. McDonald’s Corp., March 6, 2018, Reyna, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Limited, United States Court of Appeals, Federal Circuit, Nos. 2017-1798, 16 April 2018
 
Pharmaceutical manufacturers seeking approval to market generic versions of Sunovion’s bipolar and schizophrenia treatment drug LATUDA failed to show that the federal district court in Newark, New Jersey, erred in construing a patent claim depicting the relevant compound’s chemical structure according to its plain and ordinary meaning, the U.S. Court of Appeals for the Federal Circuit has decided. The intrinsic evidence did not support limiting the claim at issue to a racemic mixture by importing a purported limitation from the specification (Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Limited, April 16, 2018, Stoll, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USa: Raniere v. Microsoft Corp., United States Court of Appeals, Federal Circuit, No. 2017-1400, 18 April 2018
 
The federal district court in Dallas did not err in concluding that Microsoft and AT&T were the prevailing parties in a patent infringement suit that was dismissed with prejudice for lack of standing, the U.S. Court of Appeals for the Federal Circuit has held. The district court’s dismissal with prejudice of the plaintiff’s case for an incurable standing defect was "tantamount to a judgment on the merits." Moreover, the Supreme Court in CRST Van Expedited, Inc. v. EEOC clarified that a favorable judgment on the merits is not necessary for a defendant to be deemed a prevailing party for purposes of statutory fee-shifting. The Federal Circuit incorporated CRST’s rationale in its jurisprudence, abrogating conflicting prior precedent (Raniere v. Microsoft Corp., April 18, 2018, O'Malley, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: ICOS Corp. v. Actelion Pharmaceuticals Ltd., United States Court of Appeals, Federal Circuit, No. 17-1017, 18 April 2018
 
The Patent Trial and Appeal Board did not err in holding that challenged claims of two patents held by ICOS Corporation for micronized tadalafil, a drug used to treat erectile dysfunction (ED) were obvious and substantial evidence supported its finding, the U.S. Court of Appeals for the Federal Circuit has decided. Thus, the Board’s findings—holding that claims 1–32 of U.S. Patent No. 7,182,958 and claims 1–11 of U.S. Patent No. 6,821,975 would have been obvious over PCT Application WO 97/03675 ("Daugan"), PCT Application WO 96/38131 ("Butler"), U.S. Patent No. 4,721,709 ("Seth"), and Wadke, et al., Preformulation Testing, in Pharmaceutical Dosage Forms ("Wadke"),—was affirmed (ICOS Corp. v. Actelion Pharmaceuticals Ltd., April 18, 2018, Moore, K.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: John Bean Technologies Corp. v. Morris & Associates, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1502, 19 April 2018
 
The owner of a patent for equipment used to cool poultry carcasses was not barred by equitable estoppel from pursuing infringement claims against a competitor based on activity that took place prior to the issuance of a reexamination certificate amending and adding the asserted patent claims, the U.S. Court of Appeals for the Federal Circuit has held. The asserted patent claims were amended or added following an ex parte reexamination in 2014, and the patent owner only sought damages for infringement of the reexamined claims. Therefore, a district court abused its discretion in finding equitable estoppel based on activity beginning in 2002, 12 years prior to the issuance of the reexamination certificate. The court also reversed the district court’s determination that the infringement suit was barred by laches, pursuant to the Supreme Court’s decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that laches cannot be asserted as a defense to infringement occurring within the six-year period prior to the filing of a complaint for infringement as prescribed by 35 U.S.C. §286 (John Bean Technologies Corp. v. Morris & Associates, Inc., April 19, 2018, Reyna, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Droplets, Inc. v. E*TRADE Bank, United States Court of Appeals, Federal Circuit, No. 16-2504, 19 April 2018
 
A patent must contain a specific reference to each prior-filed application to be entitled to those applications’ earlier filing dates, the U.S. Court of Appeals for the Federal Circuit has ruled. Further, incorporation by reference cannot satisfy this statutorily mandated specific reference requirement. Therefore, because U.S. Patent No. 8,402,115 (the ’115 Patent), owned by Droplets and challenged by E*TRADE Financial Corporation and several other entities (together, E*TRADE) by a petition for inter partes review contains a specific reference only to U.S. Patent No. 7,502,838 (the ’838 Patent), and not the earlier-filed U.S. Patent No. 6,687,745 (the ’745 Patent), or Provisional Application No. 60/153,917 (the ’917 Provisional), the Patent Trial and Appeal Board’s decision finding all claims of the ’115 Patent invalid as obvious was affirmed (Droplets, Inc. v. E*TRADE Bank, April 19, 2018, O'Malley, K.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Wi-Fi One, LLC v. Broadcom Corp., United States Court of Appeals, Federal Circuit, No. 2015-1944, 20 April 2018
 
In an inter partes review of a digital messaging patent owned by Wi-Fi One, LLC ("Wi-Fi"), the Patent Trial and Appeal Board’s rejection of Wi-Fi’s contention that Broadcom Corporation’s review petition was time-barred under Section 315(b) of the Patent Act was based on substantial evidence, the U.S. Court of Appeals for the Federal Circuit has held. In addition, the Board did not abuse its discretion in denying Wi-Fi’s request for discovery purportedly aimed at establishing privity between Broadcom and the defendants in a parallel infringement lawsuit, in order to support Wi-Fi’s time-bar defense. Readdressing the case after the court, sitting en banc, overturned a panel’s previous decision that the Boards time-bar determination was not appealable, the court again affirmed the Board’s ruling that the challenged claims of the reviewed patent were invalid as anticipated. Circuit Judge Jimmie V. Reyna dissented, arguing that the majority incorrectly concluded that to establish privity for Section 315(b) purposes, a petitioner must have had control over the prior district court litigation (Wi-Fi One, LLC v. Broadcom Corp., April 20, 2018, Bryson, W.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Voter Verified, Inc. v. Election Systems & Software LLC, United States Court of Appeals, Federal Circuit, No. 2017-1930, 30 April 2018
 
The federal district court in Tallahassee did not err in finding that a patent claiming voting methods and systems for verifying a paper ballot owned by Voter Verified was directed to a patent ineligible abstract idea, the U.S. Court of Appeals for the Federal Circuit has held. The court also affirmed the district court’s determination that issue preclusion did not bar defendant Election Systems & Software’s motion to dismiss under Section 101 because the issue of subject matter eligibility was not actually litigated in a prior case (Voter Verified, Inc. v. Election Systems & Software LLC, April 30, 2018, Lourie, A.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: James v. j2 Cloud Services, LLC, United States Court of Appeals, Federal Circuit, No. 2017-1506, 20 April 2018
 
A district court had jurisdiction over an individual’s claim for correction of inventorship with respect to a patent directed to systems and methods of receiving, converting, and forwarding electronic messages, the U.S. Court of Appeals for the Federal Circuit has held. The individual plausibly alleged that he did not assign his patent rights under the terms of a software development agreement, which referred to assignment of copyright interests, but did not mention patents. Nor was the inventor obligated to give up his patent rights under the "hired-to-invent" doctrine, for the same reason—the agreement between the parties could reasonably be read as not assigning or promising to assign the patent rights at issue. Dismissal of the individual’s complaint was reversed, and the case was remanded to the district court (James v. j2 Cloud Services, LLC, April 20, 2018, Taranto, R.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Naruto v. Slater, United States Court of Appeals, Ninth Circuit, No. 16-15469, 23 April 2018
 
A crested macaque named Naruto lacked standing under the Copyright Act to sue a photographer and a publisher over six photographs Naruto took of himself (the "Monkey Selfies") using the photographer’s camera, the U.S. Court of Appeals in San Francisco has held. The Ninth Circuit affirmed a district court’s dismissal of a complaint filed by the People for the Ethical Treatment of Animals (PETA), purporting to act as Naruto’s "next friend." Earlier this month, the court denied a request by the parties to vacate the district court’s judgment dismissing the claims after the parties reported that they had reached a settlement. In the Ninth Circuit’s view, the circumstances of the case—particularly PETA’s institutional interest in preventing the formation of adverse precedent—weighed in favor of denying the parties’ request to voluntary dismiss the case. In the latest decision, the court stated that the complaint included facts sufficient to establish Article III standing—the complaint alleged that Naruto was the author and owner of the photographs and had suffered concrete and particularized economic harms—but the monkey lacked statutory standing because the Copyright Act did not expressly authorize animals to file copyright infringement suits. One panel member wrote separately, concurring in the result but arguing that the case should have been dismissed for lack of jurisdiction because "next friend" standing was not available on behalf of an animal (Naruto v. Slater, April 23, 2018, Bea, C.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: ZW USA, Inc. v. PWD Systems, LLC, United States Court of Appeals, Eighth Circuit, No. 16-3999, 26 April 2018
 
Because there was conflicting evidence as to whether the registered mark ONEPUL, for dog waste disposal bags and dispensers was valid, a district court erred in granting summary judgment in favor of the mark owner on the question of validity, the U.S. Court of Appeals in St. Louis has decided. Although the fact that the mark had been registered without a requirement of a showing of secondary meaning constituted evidence that the mark was inherently distinctive, there was evidence that the mark was used by competitors in a descriptive or generic way. The question of mark validity was therefore one for the trier of fact, not the district court. The district court correctly held, however, that a defending competitor’s use of the term "one-pull" to describe its own bags was not likely to cause consumer confusion with the ONEPUL mark. The evidence submitted by the mark owner showed only that the parties were in competition; this alone was not sufficient to permit a jury to infer that consumers could be confused by the defendant’s product descriptions. Accordingly, the district court’s grant of summary judgment in favor of the defendant regarding that mark was affirmed (ZW USA, Inc. v. PWD Systems, LLC, April 26, 2018, Kelly, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., United States Court of Appeals, Federal Circuit, No. 2016-2121, 01 May 2018
 
In a dispute between competitors in the ambient light sensor market, the U.S. Court of Appeals for the Federal Circuit has affirmed a district court’s judgment, following a jury trial, of liability for trade secret misappropriation of technology relating to the photodiode array structure of ambient light sensors for electronic devices. The liability judgment stood, even though two of three asserted bases for trade secret misappropriation were deemed improper by the appellate court. The remaining basis for liability was sufficient to support the jury’s verdict. The appellate court, however, reversed a verdict that the defendant manufacturer infringed three method claims of the plaintiff’s patent because there was no evidence that the accused products used the patented methods, although the court affirmed the verdict of infringement with respect to three apparatus claims because the accused devices were capable of performing the patented function. Although the defendant was liable for misappropriating trade secrets, the damages award—based on disgorgement of all of the defendant’s profits—was vacated because it was based in part on bases for liability that were deemed improper, and because the equitable remedy of disgorgement was a matter that should have been decided by the district court instead of the jury. Patent infringement damages awarded by the jury also were vacated because they were improperly duplicative of the damages award for trade secret misappropriation. Finally, the Federal Circuit vacated the district court’s denial of the plaintiff’s request for an injunction, holding that the district court failed to conduct a sufficient analysis as to irreparable harm (Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., May 1, 2018, Taranto, R.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: Disc Disease Solutions Inc. v. VGH Solutions, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1483, 01 May 2018
 
The owner of two patents related to inflatable spinal braces adequately pleaded that a competing medical device maker infringed at least one claim of the asserted patents, the U.S. Court of Appeals for the Federal Circuit has decided. The appellate court reversed a decision of a federal district court in Georgia, which had determined that the patent owner’s complaint failed to meet the plausibility standards articulated by Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009). In the Federal Circuit’s view, the complaint sufficiently provided the defending device maker with fair notice of infringement of the asserted patents (Disc Disease Solutions Inc. v. VGH Solutions, Inc., May 1, 2018, Reyna, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: In re VerHoef,, United States Court of Appeals, Federal Circuit, No. 2017-1976, 03 May 2018
 
The Patent Trial and Appeal Board correctly rejected a patent application relating to a dog mobility harness device because the applicant did not solely invent the claimed subject matter on which he asserted sole inventorship, the U.S. Court of Appeals for the Federal Circuit has decided. A figure-eight loop for the claimed dog harness was conceived of and suggested by another person, and the invention was not complete without this essential feature. Furthermore, the applicant did not maintain "intellectual domination" over the inventive process, and the person not named on the application was a joint inventor. Therefore, the application was properly rejected under 35 U.S.C. §102(f) (In re VerHoef, May 3, 2018, Lourie, A.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: Energy Heating, LLC v. Heat On-The-Fly, LLC, United States Court of Appeals, Federal Circuit, No. 2016-1559, 04 May 2018
 
A determination by the federal district court in Fargo, North Dakota, that an inventor of a patent for a device for heating water in hydraulic fracturing operations committed inequitable conduct by failing to disclose 61 prior commercial sales and public uses of the patent’s technology during prosecution before the USPTO was affirmed because its findings were not clearly erroneous and the court did not abuse its discretion, the U.S. Court of Appeals for the Federal Circuit has held. Additionally, the district court’s findings of tortious interference and denial of remedies under two North Dakota statutes were affirmed. However, the lower court’s denial of attorney fees under Section 285 of the Patent Act was vacated due to the court’s lack of an articulated basis for the denial (Energy Heating, LLC v. Heat On-The-Fly, LLC, May 4, 2018, Stoll, K.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: The General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1012., 04 May 2018
 
In an interference proceeding, the Patent Trial and Appeal Board correctly determined that claims 65-67 of applicant General Hospital Corporation’s (GHC’s) U.S. Patent Application No. 13/789,575 for methods of removing hair by using nanoparticles to damage hair follicles lacked sufficient written description under § 112 of the Patent Act, the U.S. Court of Appeals for the Federal Circuit has ruled. However, the Board’s determination that GHC failed to show that its proposed new claim 74 was patentable and failed to meet its burden of showing that claim 74 interferes with any of the claims of U.S. Patent No. 8,821,941, owned by Sienna Biopharmaceuticals, was arbitrary and capricious. Thus, the Board’s denial of GHC’s contingent motion to add new claim 74 was vacated and the dispute remanded for further proceedings (The General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., May 4, 2018, Moore, K.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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Trademark (4)
 
 
USA: Rainbow School, Inc. v. Rainbow Early Education Holding LLC, United States Court of Appeals, Fourth Circuit, No. 17-1055, 10 April 2018
 
The federal appellate court in Richmond, Virginia has affirmed a district court’s order holding the operators of a childcare center in Fayetteville, North Carolina in contempt for violating an agreed injunction order preventing it from, among other things, using the word "rainbow" in connection with that facility. The district court had entered the injunction order as part of a settlement of trademark infringement claims brought by a child care center in Fayetteville that had long operated under the "Rainbow" name (Rainbow School, Inc. v. Rainbow Early Education Holding LLC, April 10, 2018, Agee, S.).
 
Author(s): Robert Margolis, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: Dropbox, Inc. v. Thru Inc., United States Court of Appeals, Ninth Circuit, No. 17-15078, 25 April 2018
 
File hosting service Dropbox, Inc., was entitled to more than $1.7 million in attorney fees and $500,000 in costs after prevailing in a trademark dispute with competing cloud storage service provider Thru Inc., the U.S. Court of Appeals in San Francisco has held, affirming a district court’s determination that Thru’s litigation conduct made the case "exceptional" for fee-shifting purposes. The district court did not abuse its discretion in concluding that laches barred Thru’s trademark infringement counterclaims or, in the alternative, that Dropbox’s trademark rights were senior to Thru’s. According to the court, Thru tried to strategically "slow walk" its dispute with Dropbox in order to take advantage of Dropbox’s initial public offering, which made Thru’s delay in taking action to enforce its asserted mark rights inexcusable. The complete lack of merit to Thru’s counterclaims supported a finding that the case was exceptional, as well as Thru’s conduct in filing a frivolous motion to dismiss and providing inaccurate responses to discovery questions (Dropbox, Inc. v. Thru Inc., April 25, 2018, per curiam).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: East Iowa Plastics, Inc. v. PI, Inc., United States Court of Appeals, Eighth Circuit, No. 16-4574, 30 April 2018
 
In a second appeal of a trademark dispute between two packing companies over rights to use the name "PAKSTER," the federal district court in Cedar Rapids’ award of $400,000 in attorney fees under Iowa common law to the plaintiff has been reversed by the U.S. Court of Appeals in St. Louis, Missouri. Although the defendant acted in bad faith by filing declarations with the USPTO falsely stating no other company was using the PAKSTER mark, that impropriety did rise to the level of "tyrannical, cruel, or harsh" misconduct required to avoid application of the American Rule. The appeals court previously vacated the district court’s order cancelling the defendants’ trademark registrations and its award of attorney fees to the plaintiff under the Lanham Act (East Iowa Plastics, Inc. v. PI, Inc., April 30, 2018, Kelly, J.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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USA: Ketab Corp. v. Mesriani and Associates, PC, United States Court of Appeals, Ninth Circuit, No. 16-55958, 02 May 2018
 
The federal district court in Los Angeles did not err in dismissing trademark infringement, dilution, and related claims brought by Ketab Corporation—a telephone directory and marketing services to the Iranian community in the Los Angeles area—against a competing directory service provider, an Iranian television channel, a law firm, and others involved in providing services to the Iranian community in Los Angeles. According to the U.S. Court of Appeals in San Francisco, the district court properly found that Ketab’s common law marks were not protectable because they were generic and that its registered mark was not infringed by any of the defendants. The district court also did not abuse its discretion in awarding attorney fees to the defendants under the Lanham Act or in sanctioning Ketab’s counsel for pursuing frivolous claims in bad faith. However, the case was remanded for clarification of what portion of the total fees and costs was "excess" and attributable to Ketab’s attorney’s unreasonable and vexatious conduct in accordance with 28 U.S.C. §1927 (Ketab Corp. v. Mesriani and Associates, PC, May 2, 2018, per curiam).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 May 2018
 
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