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 23
December 2018
 
 
 

News

 
General Information (2)
 
 
EPO becomes WIPO DAS depositing and accessing office
 
On 1 November 2018, the European Patent Office (EPO) started functioning as both a depositing and an accessing office of the WIPO Digital Access Services (DAS) for electronic priority documents.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
European Patent Organization Full text
 
 
 
 
 
Sweden Patent and Registration Office launches new online services
 
The Swedish Patent and Registration Office has recently announced the launch of six new online trademark and design services, which have been developed with the help of the European Union Intellectual Property Office.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Sweden Full text
 
 
 
 
 
Patents/Utility Models (9)
 
 
Argentina changes utility model filing requirements
 
On 9 November 2018, the Argentinian National Institute of Industrial Property (INPI) implemented the changes brought to the process of prosecution of utility models by amending the legislation through Decree No. 280/2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Argentina Full text
 
 
 
 
 
Costa Rica begins receiving applications filed using ePCT
 
From 1 December 2018, the Registry of Industrial Property (Costa Rica) started receiving and processing international applications under the Patent Cooperation Treaty (PCT) filed electronically through ePCT-Filing.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Costa Rica Full text
 
 
 
 
 
WIPO revises equivalent amounts of certain fees payable to EPO
 
The Director-General of the World Intellectual Property Organization (WIPO) has revised the equivalent amounts of fees for international applications payable to the European Patent Office (EPO) in its capacity as Receiving Office or the International Preliminary Examining Authority (IPEA).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
European Patent Organization Full text
 
 
 
 
 
Brexit and its influence on German UPCA ratification
 
Will or should Germany proceed with the ratification of the Unified Patent Court Agreement in case of a dismissal of the German constitutional complaint against it?

This ‘at the risk that the UK may eventually not agree to the supremacy of Union Law and the CJEU as final arbiter (…) and/or that the EU and the UK will not manage to cut a “deal” on their further political and economic relationship at the end of the transition period. This could then mean an early end of the UK’s participation in the UPC Agreement and result in quite a bit of turmoil.’

This is one of many topics concerning the Unitary Patent project discussed in a post on the Kluwer Patent Blog. ‘The German Ministry of Justice has remained remarkably tight-lipped on this question so far.’
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Dec 2018
 
European Union, Germany, United Kingdom Full text
 
 
 
 
 
Italy completes preparations for Unitary Patent system
 
Italy completed its legislative preparations for the Unitary Patent project by adopting a Legislative Decree last month amending the Industrial Property Code to introduce unitary patent protection and related provisions and also to provide for the jurisdiction of the UPC.

Italy ratified the UPCA Agreement and signed the Agreement’s Protocol on Provisional Application in February 2017, and ratified the UPC’s Protocol on Privileges and Immunities in April 2018. 
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Dec 2018
 
European Union, Italy Full text
 
 
 
 
 
Germany might dodge UPC as Brexit uncertainty persists
 
Germany will not ratify the Unified Patent Court (UPC) Agreement if major uncertainty about the UK’s participation remains.

According to an article of IPPro Magazine, chairperson of the rules and procedure committee of the UPC Kevin Mooney said this at a conference in London.

Mooney warned ‘that if UK MPs reject the controversial Brexit withdrawal agreement, then the UK (…) may not be allowed to participate.’
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 10 Dec 2018
 
European Union, United Kingdom Full text
 
 
 
 
 
USPTO, KIPO to use WIPO DAS Service for priority document retrieval
 
From 1 December 2018, the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) will retrieve priority documents using the Digital Access Service (DAS) of the World Intellectual Property Organization (WIPO).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
South Korea, United States of America Full text
 
 
 
 
 
Uganda Registration Services Bureau now acts as PCT Receiving Office
 
The Uganda Registration Services Bureau (URSB) has recently started acting as PCT (Patent Cooperation Treaty) Receiving Office for its nationals and residents.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Uganda Full text
 
 
 
 
 
U.S. Supreme Court refuses to hear real estate search patents case
 
On 5 November 2018, the U.S. Supreme Court refused to review a ruling from the Court of Appeals for the Federal Circuit (CAFC) that invalidated Real Estate Alliance Ltd.’s (REAL) real estate search patents, titled “Real Estate Search and Location System and Method”.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
United States of America Full text
 
 
 
 
 
Trademarks (7)
 
 
EUIPO releases draft common practices of CP8 and CP9 projects
 
The European Trade Mark and Design Network has published the first draft of the Common Practices of European Cooperation Projects CP8 and CP9 on its website.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
European Union Full text
 
 
 
 
 
Georgia introduces Madrid e-filing facility
 
The Georgian IP Office has recently introduced Madrid e-filing as its preferred means for filing applications for international registration under the Madrid Protocol Concerning the International Registration of Marks.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Georgia Full text
 
 
 
 
 
Greece to accept recordings in International Register of licenses
 
On 25 October 2018, the Office of Greece notified the Director General of the World Intellectual Property Organization of its intension to withdraw, with immediate effect, its earlier notification under Rule 20bis(6)(b) of the Common Regulations under the Madrid Agreement and Protocol (according to which the recording of licenses in the International Register had no effect in Greece).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Greece Full text
 
 
 
 
 
Madagascar won’t accept requests for division/merger of registrations under Madrid Protocol
 
The Government of Madagascar has declared that it will not present to the International Bureau of the World Intellectual Property Organization (WIPO) requests for division or merger of an international registration of a mark in respect of Madagascar as a designated contracting party.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Madagascar Full text
 
 
 
 
 
Mexico to use Harmonised Database to list goods and services
 
From 12 November 2018, the Mexican Institute of Industrial Property (IMPI) started using the Harmonised Database (HDB) terms to enlist goods and services through TMclass using online tool ClasNiza.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Mexico Full text
 
 
 
 
 
Myanmar set to take final call on new trademark Bill
 
On 5 November 2018, the Bill Committee of the Lower House (Pyithu Hluttaw) of the Myanmar government reviewed and deliberated upon a new trademark Bill.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Myanmar Full text
 
 
 
 
 
Taiwan publishes trademark examination guidelines
 
On 19 October 2018, the Taiwan Intellectual Property Office (TIPO) published the Examination Guidelines on Procedural Examination of Applications for Trademark Registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 10 Dec 2018
 
Taiwan Full text
 
 
 
 

Cases

 
Copyright (3)
 
 
USA: In re McGraw-Hill Global Education Holdings LLC, United States Court of Appeals, Third Circuit, No. 17-2826, 21 November 2018
 
In consolidated copyright infringement actions brought by photographers against publisher McGraw-Hill, the U.S. Court of Appeals for the Third Circuit has ruled that while the photographers were not bound to a forum selection clause, the federal district court’s mistake in transferring the case to New York was not clear error. The court concluded that the photographers were not bound by forum selection clauses because they were not intended beneficiaries of the agreements, nor were they closely related parties. The court found, however, that the district court’s mistake in transferring the case from Pennsylvania to New York was not clear or indisputable to warrant transfer and grant a writ of mandamus (In re McGraw-Hill Global Education Holdings LLC, November 21, 2018, Smith, D.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Baker v. Warner/Chappell Music, Inc, United States Court of Appeals, Eleventh Circuit, No. 18-11798, 27 November 2018
 
The federal district court in Miami did not abuse its discretion by staying a case involving ownership and licensing rights to 14 musical works pending the resolution of a related state court action, the U.S. Court of Appeals in Atlanta has decided. The parties and issues in the federal and state suits were sufficiently parallel, and the Colorado River factors supported abstention because the state court action was filed eight years earlier, there was a risk of piecemeal litigation, and the sequence of events suggested that the plaintiffs filed the suit as an end run around a jurisdictional hurdle they had encountered in enforcing a prior settlement agreement (Baker v. Warner/Chappell Music, Inc., November 27, 2018, per curiam).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Close v. Sotheby’s Inc., United States Court of Appeals, Ninth Circuit, No. 16-56234, 03 December 2018
 
The 1976 Copyright Act did not preempt applications for attorney fees filed by two auction houses following a determination that the California Resale Royalties Act (CRRA)—a statute that grants visual artists a right to receive 5% of the proceeds on any resale of their artwork under specified circumstances—was expressly preempted by the 1976 Act with respect to CRRA claims regarding sales that took place after its January 1, 1978 effective date, but not with respect to sales that occurred between the CRRA’s effective date of January 1, 1977, and January 1, 1978, the U.S. Court of Appeals in San Francisco has held. In granting the applications, the appeals court determined that even though the 1977 claims against one of the auction houses had been remanded, the auction house qualified as a prevailing party because those claims were not subject to the CRRA fee-shifting provision (Close v. Sotheby’s Inc., December 3, 2018, per curiam).
 
Author(s): Pamela C. Maloney
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (12)
 
 
Germany: Tretkurbeleinheit, Federal Court of Justice of Germany, X ZR 19/12, 27 August 2013
 
The FCJ confirmed that a new means of challenge based on the technical content of a document filed for the first time in the course of appeal proceedings is only to be admitted under the provisions of Section 531 paragraph 2 numbers 1 to 3 of the German Code of Civil Procedure, irrespective of whether the document’s effective date and content are undisputed. The same applies to a new means of defense.

Further, if a plaintiff pleads that a document has only been found in a search performed after a first instance ruling, the means of challenge based on such document is only to be admitted under Section 531 paragraph 2 number 3 of the German Code of Civil Procedure, if the plaintiff substantiates that the document could not have been found with an appropriate search profile in a search preceding the plaintiff’s nullity action.
 
Author(s): H. Jeremias V. Wollschlaeger, Hoffmann Eitle
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Spain: Judgment no. 550/2018, Court of Appeal of Barcelona, 550/2018, 26 July 2018
 
In a Judgment dated 26 July 2018, the influential Barcelona Court of Appeal (Section 15) rejected an overly narrow, "literalistic" interpretation of a patent claim. A claim's terms must be interpreted according to the meaning that a person skilled in the art would give them – even if it is not the most scientifically "puristic" interpretation – also taking account of the patent's description. Patentees and (alleged) infringers alike in close-call infringement cases can find some useful guidance in this decision.
 
Author(s): Adrian Crespo, Clifford Chance, Barcelona
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
Reporter for: Spain
 
Spain Full text Full text as PDF
 
 
 
 
 
United Kingdom: Hospira UK Limited v Cubist Pharmaceuticals, LLC, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2016] EWHC 2661 (Pat), 17 October 2016
 
Following its judgment in the main action, in which it revoked three patents owned by Cubist, the Court ruled on the appropriate allocation of costs between the parties. The Court refused Cubist permission to appeal as it had failed to identify any real error of law or principle which was material to the judgment.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Actavis Group PTC EHF v ICOS Corporation, Court of Appeal of England and Wales, Civil Division, [2017] EWCA Civ 1671, 01 November 2017
 
The Court of Appeal overturned the Patent Court's first instance decision concerning the validity of one of ICOS’s patents (licensed to Eli Lilly) covering a 1 to 5mg dosage form of tadalafil (Cialis®) for oral administration up to a maximum of 5mg per day for the treatment of sexual dysfunction.  The Court held that the Judge had erred in concluding that the patent was not obvious, and made interesting comments on the requirement that the person skilled in the art would have a reasonable expectation of success in trying the invention.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: Actavis Group PTC EHF & ors v ICOS Corporation & anr, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2017] EWHC 2880 (Pat), 10 November 2017
 
The Court refused Lilly's application for an interim injunction to restrain the launch of Actavis' generic tadalafil product, pending the outcome of a petition to the Supreme Court for permission to appeal and any subsequent appeal, because it did not consider that there was any reasonable prospect that such an appeal would succeed. Further, the potential unquantifiable harm to Actavis from the grant of an injunction considerably outweighed any unquantifiable loss to Lilly.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Actavis v Eli Lilly, Court of Appeal of England and Wales, Civil Division, [2013] EWCA Civ 517, 21 May 2013
 
The Court of Appeal dismissed Lilly's appeal and confirmed that Actavis' application for a declaration of non-infringement had been properly served on Lilly. The Court of Appeal confirmed that it may, at least in principle, be appropriate to hear the arguments relating to infringement of several designations of the same European Patent together in London.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: Actavis Group v ICOS Corporation, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2016] EWHC 1955 (Pat), 10 August 2016
 
The patents court held that at least claim 7 of the 181 patent (covering a 1 to 5mg dosage form of tadalafil for oral administration up to a maximum of 5mg per day) was valid and would be infringed by the generics.  The 092 patent (covering a co-precipitate formulation of the drug) succumbed to attacks on novelty, inventive step and sufficiency, but would have also been infringed by the generic claimants.

The court also considered the merits of a quia timet (threatened) infringement action brought in response to a revocation action, in particular whether a generic’s “clearing the way” action could be construed as a threat to infringe in circumstances where the generic’s intention to launch the product was contingent on it successfully revoking the patents. 
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 10 Dec 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
USA: Schlafly v. Saint Louis Brewery, LLC, United States Court of Appeals, Federal Circuit, No. 17-1468, 26 November 2018
 
A craft brewery’s mark SCHLAFLY met the requirements to be registered in connection with beer, according to the U.S. Court of Appeals for the Federal Circuit. The court affirmed the Trademark Trial and Appeal Board’s dismissal of two consolidated oppositions to the brewer’s application to register the mark, which had been filed by now-deceased conservative political activist Phyllis Schlafly and her son, orthopedic surgeon Dr. Bruce S. Schlafly. Substantial evidence supported the Board’s decision that the mark had acquired distinctiveness. The court rejected the opposers’ arguments that the Board failed to recognize that the SCHLAFLY mark was "primarily merely a surname" and that the Board improperly found that the mark had acquired secondary meaning although the applicant did not provide survey evidence. In addition, the court rejected the opposers’ claims that their First Amendment, Fifth Amendment, and Due Process rights were violated (Schlafly v. Saint Louis Brewery, LLC, November 26, 2018, Newman, P.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: DBN Holding, Inc. v. International Trade Commission, United States Court of Appeals, Federal Circuit, No. 2017-2128, 27 November 2018
 
The International Trade Commission (ITC) was not barred from reassessing a civil penalty assessed against a satellite technology company for violating a consent order barring it from using imported components that infringed a U.S. patent, in light of a federal district court’s subsequent finding that the patent claims at issue were invalid, the U.S. Court of Appeals for the Federal Circuit has determined. In denying the company’s petition to rescind or modify the civil penalty, the ITC erred by relying on the doctrine of res judicata. Although the Federal Circuit had affirmed the ITC’s imposition of the civil penalty, neither the ITC nor the Federal Circuit had considered whether to rescind or modify the civil penalty in light of the invalidity of the relevant patent claims (DBN Holding, Inc. v. International Trade Commission, November 27, 2018, Reyna, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Victaulic Co. v. Iancu, United States Court of Appeals, Federal Circuit, No. 2017-2424, 29 November 2018
 
There was substantial evidence to support the Patent Trial and Appeal Board's ruling that certain claims of Victaulic Company's pipe-joining patent were not patentable as obvious or anticipated in light of prior art, the U.S. Court of Appeals for the Federal Circuit has ruled. Accordingly, the Board’s decision invalidating the claims in an inter partes review proceeding was affirmed (Victaulic Co. v. Iancu, November 29, 2018, Stoll, K.).
 
Author(s): Edward L. Puzzo, Wolters Kluwer
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc., United States Court of Appeals, Federal Circuit, No. 2018-1121, 29 November 2018
 
Wok & Pan, Ind., Inc.—a Chinese-based company that makes plastic folding tables—does not have sufficient minimum contacts with Tennessee for the exercise of personal jurisdiction by a federal district court in that state, in a declaratory judgment action seeking a declaration of non-infringement of a patent for tables. Accordingly, the U.S. Court of Appeals for the Federal Circuit has affirmed the district court’s decision to dismiss the case for lack of personal jurisdiction. The Federal Circuit reaffirmed that in the declaratory judgment context, notice letters do not suffice for personal jurisdiction because they do not satisfy the "fair play and substantial justice" prong due to policy considerations unique to patent law (Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc., November 29, 2018, Dyk, T.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Sprint Communications Co., L.P. v. Time Warner Cable, Inc., United States Court of Appeals, Federal Circuit, No. 2017-2247, 30 November 2018
 
The U.S. Court of Appeals for the Federal Circuit has affirmed a $139.8 million jury verdict in favor of Sprint Communications against Time Warner for infringement of five Sprint patents related to VoIP technology. The appeals court concluded that the district properly admitted evidence relating to the jury verdict in an earlier, related case brought by Sprint against Vonage, another carrier offering VoIP service. Time Warner failed to show that the evidence presented at trial was insufficient to support the jury’s damage award and verdict. Circuit Judge Haldane Robert Mayer wrote a dissenting opinion arguing that the patents asserted by Sprint are invalid as a matter of law (Sprint Communications Co., L.P. v. Time Warner Cable, Inc., November 30, 2018, Bryson, W.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (2)
 
 
USA: Gordon v. Drape Creative, Inc., United States Court of Appeals, Ninth Circuit, No. 16-56715, 20 November 2018
 
The U.S. Court of Appeals in San Francisco has withdrawn and reissued its July 30, 2018, opinion involving greeting card manufacturers’ use of trademarked "Honey Badger" catchphrases in order to correct a misapplication of the Rogers test in the court’s earlier ruling. The court’s superseding opinion clarifies that greeting cards are expressive works and that use of the Honey Badger phrases on the cards had some artistic relevance as a matter of law under the first prong of the Rogers test, leaving only the second prong of the test for the jury to decide on remand; i.e., whether the defendants’ use of the trademarked phrases was explicitly misleading as to the source or content of the cards (Gordon v. Drape Creative, Inc., November 20, 2018).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Sleepy’s LLC v. Select Comfort, United States Court of Appeals, Second Circuit, No. 15-3560, 27 November 2018
 
For purposes of the Lanham Act’s fee-shifting provision, "exceptional" cases are those that stand out from others in the manner set forth for Patent Act fee awards in the Supreme Court’s holding in Octane Fitness, the U.S. Court of Appeals in New York City has held, joining several other circuit courts. The Second Circuit vacated and remanded a district court’s award of attorney fees to defendants that successfully defended against Lanham Act claims regarding statements made to a representative of a bedding retailer in the presence of a third party. The fee award itself also was vacated due to the district court’s failure to explain its rationale for apportioning 75 percent of the time billed to the Lanham Act claim in calculating the amount of the award. In addition, the Second Circuit vacated the district court’s determination that the statements at issue could not support defamation claims because they had not been "published" under New York’s law of defamation. The district court was instructed on remand to determine whether the retailer consented to the publication (Sleepy’s LLC v. Select Comfort, November 27, 2018, Sack, R.).
 
Author(s): Matt Pavich
 
Source: IP Law Daily - Selected US CasesDate: 10 Dec 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
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