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 2017 - Issue 21
October 2017
 
 
 

News

 
Patents/Utility Models (7)
 
 
EPO, Tunisia sign European patent validation agreement
 
In an effort to encourage filings and boost foreign investment in the country, the Tunisian Patent Office signed an agreement with the European Patent Office to allow European patents to take legal effect in Tunisia, although Tunisia is not a European Patent Convention member state.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Oct 2017
 
European Patent Organization, Tunisia Full text
 
 
 
 
 
‘German constitutional complaint against UPCA will cause much delay’
 
The constitutional complaint which was filed with the German Federal Constitutional Court (FCC) against the UPCA ratification comprises 170 pages and both formal and substantive arguments.

This is explained in a podcast of McDermott Will & Emery by its Düsseldorf IP partner Henrik Holzapfel (starting at 14.45). Holzapfel thinks that some elements of the complaint are strong and points out that the fact that the Federal Constitutional Court requested the German president not to sign the UPCA ratification bill, may be an indication the FCC thinks so as well. He expects the FCC to decide in spring 2018 to admit the claim and schedule a hearing no sooner than in the fall of next year.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Oct 2017
 
European Union, Germany Full text
 
 
 
 
 
Unified Patent Court ready for sunrise phase
 
The IT Team of the UPC Preparatory Committee launched a new version of its CMS on 9 October 2017, in line with the requirements of the period of Provisional Application of the UPCA ‘and specifically designed for the Court’s sunrise phase’ – the period preceding the UPC opening its doors, during which European patents can be opted out from its jurisdiction.

Users desiring access to the new system are invited to register for a new account at cms.unified-patent-court.org.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court NewsDate: 18 Oct 2017
 
European Union Full text
 
 
 
 
 
No clarity about timing Irish UPC referendum
 
The Irish government doesn’t want to comment on its reasons to defer a referendum on Irish participation in the Unitary Patent system.

In reaction to questions by Kluwer IP Law, the Department of Business, Enterprise and Innovation in Ireland only said: ‘The Government deferred making a decision on the timing of the Unified Patent Court referendum which remains a commitment in the Programme for Government. This issue will be kept under review.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Oct 2017
 
European Union, Ireland Full text
 
 
 
 
 
Philippines, Singapore ink PPH pilot
 
The Intellectual Property Office of the Philippines (IPOPHL) and the Intellectual Property Office of Singapore (IPOS) have signed a Memorandum of Bilateral Cooperation under which the two offices agreed to implement a Patent Prosecution Highway (PPH) pilot programme.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Oct 2017
 
Philippines, Singapore Full text
 
 
 
 
 
Changes to examination guidelines in the offing in Singapore
 
On 6 October 2017, the Intellectual Property Office of Singapore (IPOS) issued a circular announcing that changes to its patent examination guidelines will be published on 30 October 2017.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Oct 2017
 
Singapore Full text
 
 
 
 
 
WIPO, IFPMA sign pact on Pat-INFORMED
 
In an effort to add clarity to the patent information relating to medicines, the World Intellectual Property Organization (WIPO) and the International Federation of Pharmaceutical Manufacturers and Associations (IFPMA), the global trade association representing the research-based pharmaceutical companies and associations, have signed an agreement establishing the Patent Information Initiative for Medicines (Pat-INFORMED).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Oct 2017
 
World Intellectual Property Organization Full text
 
 
 
 
 
Trademarks (2)
 
 
Trademark data from Jordan now available through TMclass
 
On 10 October 2017, the Jordanian Industrial Property Protection Directorate under the Ministry of Industry, Trade and Supply (IPPD) 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 Oct 2017
 
Jordan Full text
 
 
 
 
 
Peruvian trademark data now available via TMview
 
On 10 October 2017, the Protection of Intellectual Property of Peru (INDECOPI) 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 Oct 2017
 
Peru Full text
 
 
 
 

Cases

 
Copyright (2)
 
 
VOB v Stichting, European Court of Justice (ECJ), C-174/15, 10 November 2016
 
The CJEU held that the concept of ‘lending’, within the meaning of Article 1(1), Article 2(1)(b) and Article 6(1) of Directive 2006/115/EC, covers the lending of a digital copy of a book where the lending is carried out by placing the copy on the server of a public library and allowing a user to reproduce that copy by downloading it onto their computer. Further, EU law, particularly Article 6 of Directive 2006/115, must be interpreted as not precluding a Member State from making the application of Article 6(1) of that directive subject to the condition that the digital copy of a book made available by a public library must have been put into circulation by a first sale or other transfer of ownership of that copy in the EU by the holder of the right of distribution to the public or with their consent for the purpose of Article 4(2) of Directive 2001/29/EC. Lastly, Article 6(1) of Directive 2006/115 precludes the public lending exception from applying to the making available by a public library of a digital copy of a book where that copy was obtained from an illegal source. 
 
Author(s): Sophia Urlich
 
Source: Kluwer Copyright CasesDate: 18 Oct 2017
 
European Union Full text Full text as PDF
 
 
 
 
 
Copyright protection of an idea, Supreme Court of Poland, II CSK 400/16, 02 March 2017
 
The Polish Supreme Court held that the creative (original) nature of a work protected by copyright may manifest itself in the creative, new and simplified combination of known elements e.g. insurance products. The condition of individuality of such a work will be met if it is unique from the statistical point of view, meaning that it is unlikely that another person will prepare an identical work in the future.
 
Author(s): Marcin Balicki, Jagiellonian University
 
Source: Kluwer Copyright CasesDate: 18 Oct 2017
 
Poland Full text Full text as PDF
 
 
 
 
 
Patent (9)
 
 
Judgment of 12 June 2013 of the Spanish Supreme Court, Supreme Court of Spain, Third Contentious-Administrative Law Chamber, 434/2013, 12 June 2013
 
In a Judgment dated 12 June 2013, the Spanish Supreme Court confirmed that it was possible to discriminate between different objective technical problems within the same set of claims. Accordingly, an independent claim may be found to be obvious, and yet one of its dependent claims could still be deemed valid, provided that it claimed an additional feature providing a non-obvious solution to another, distinct objective problem. The Supreme Court also found that, when assessing inventive step, it is necessary to take into account the teachings of the patent specification, although they are not part of the prior art.
 
Author(s): Adrian Crespo, Clifford Chance, Barcelona
 
Source: Kluwer Patent CasesDate: 18 Oct 2017
 
Reporter for: Spain
 
Spain Full text Full text as PDF
 
 
 
 
 
Beamocular AB v. C-Rad Positioning AB, case No. PMT 10360-16, Patent and Market Court of Appeal of Sweden, PMT 10360-16, 20 June 2017
 
Beamocular brought proceedings against C-Rad, alleging that Beamocular had the superior right to an Invention made by K.M. who was at the time an employee of C-Rad.

The Swedish Patent and Market Court of Appeals confirmed that the primary work duties of K.M. did not constitute research activities and therefore the Invention was not a so-called "research invention", nor was it a solution to a specified task in K.M.'s work for C-Rad. However, the Court applied an offer-accept model in accordance with principles of contract law to a so-called "Assignment" document between K.M. and C-Rad, and concluded that it did constitute a valid assignment.  Therefore the Invention had been validly transferred to C-Rad.
 
Author(s): Beatrice Nybert, Bird & Bird
 
Source: Kluwer Patent CasesDate: 18 Oct 2017
 
Sweden Full text Full text as PDF
 
 
 
 
 
USA: Aqua Products, Inc. v. Matal, United States Court of Appeals, Federal Circuit, No. 2015-1177, 04 October 2017
 
In a lengthy opinion, a divided en banc U.S. Court of Appeals for the Federal Circuit has ruled in that in this case—involving a dispute over a patent for swimming pool cleaning devices—and going forward in all other inter partes review proceedings ("IPRs") under the Leahy-Smith America Invents Act ("AIA"), the Patent Trial and Appeal Board (PTAB) must assess the burden of persuasion of proposed substituted claims without placing the burden of persuasion on the patent owner. In so finding its way to that very narrow legal conclusion that defined its judgment, the court held that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims, and that there was no interpretation of the statute by the USPTO to which the court was required to defer under Chevron, U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Finally, the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) and must justify any conclusions of unpatentability with respect to amended claims based on that record (Aqua Products, Inc. v. Matal, October 4, 2017, O’Malley, K.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Amgen Inc. v. Sanofi, United States Court of Appeals, Federal Circuit, No. 2017-1480, 05 October 2017
 
In a patent dispute related to competing cholesterol medications, a district court erred by excluding post-priority-date evidence regarding written description and enablement of the two patents-in-suit and improperly instructed the jury on written description, the U.S. Court of Appeals for the Federal Circuit has held. Therefore, the district court’s judgment that the patents were not invalid was reversed in part and remanded for a new trial on written description and enablement. The appellate court also vacated the district court’s grant of a permanent injunction barring sales of the defending manufacturers’ drug. The district court’s denial of the defending manufacturers’ request for judgment as a matter of law (JMOL) of no written description and enablement was, however, affirmed, along with the district court’s grant of the complaining manufacturer’s JMOL of nonobviousness (Amgen Inc. v. Sanofi, October 5, 2017, Prost, S.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Sacchetti v. United States, United States Court of Appeals, Federal Circuit, No. 2017-1484, 06 October 2017
 
The Court of Federal Claims did not err in ruling that it lacked subject matter jurisdiction over the patent and trademark infringement claims by two inventors of a dual handset telephone against the federal government. The inventors’ patent claims fell outside of the six-year statute of limitations and the court had no jurisdiction to hear the trademark claims. Thus, the U.S. Court of Appeals for the Federal Circuit affirmed the Court of Federal Claims’ dismissal of the inventors’ claims for lack of subject matter jurisdiction (Sacchetti v. United States, October 6, 2017, per curiam).
 
Author(s): Linda O'Brien, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Owens Corning v. Fast Felt Corporation, United States Court of Appeals, Federal Circuit, No. 2016-2613, 11 October 2017
 
In an inter partes review proceeding relating to a patent for a process of applying reinforcements on roofing and building cover materials, the Patent Trial and Appeal Board erred in rejecting a challenge to the claims in the patent as unpatentable due to obviousness, the U.S. Court of Appeals for the Federal Circuit has ruled in a precedential opinion. Thus, the determination of the patent’s validity was reversed (Owens Corning v. Fast Felt Corporation, October 11, 2017, Taranto, R.).
 
Author(s): Linda O'Brien, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Organik Kimya AS v. Rohm and Haas Company, United States Court of Appeals, Federal Circuit, No. 2015-1983, 11 October 2017
 
In a case involving the patentability of claims in two patents related to polymers used in opaque coatings, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decisions sustaining the validity of the patent claims. The three-judge appellate court found no grammatical ambiguity in the PTAB’s construction of the phrase "swelling agent" as stated in the claims for the patents. The court also rejected the argument that the patent claims are invalid on the grounds of anticipation and obviousness (Organik Kimya AS v. Rohm and Haas Company, October 11, 2017, Newman, P.).
 
Author(s): NewGen - US IP Law Daily NG
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Small Justice LLC v. Xcentric Ventures LLC, United States Court of Appeals, First Circuit, No. 15-1506, 11 October 2017
 
Xcentric Ventures, the operator of the website RipoffReport.com, was not liable under various tort, Massachusetts consumer protection statute (Chapter 93A), or copyright infringement theories for hosting allegedly libelous postings that plaintiff Christian DuPont authored and then posted on the site, the U.S. Court of Appeals in Boston has decided. A federal district court’s grant of Xcentric’s motion to dismiss, the district court’s March 2015 grant of summary judgment in favor of Xcentric, the district court’s December 31, 2015 fees award order, and the district court’s May 2, 2016 orders related to the fees award, were all affirmed (Small Justice LLC v. Xcentric Ventures LLC, October 11, 2017, Barron, D.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Ignite USA LLC v. CamelBak Products LLC, United States Court of Appeals, Federal Circuit, No. 2016-2747, 12 October 2017
 
Following inter partes review of several claims of a patent directed to a trigger/seal mechanism for a beverage container, the Patent Trial and Appeal Board properly applied the broadest reasonable in construing a connection limitation disclosed in the challenged claims, the U.S. Court of Appeals for the Federal Circuit has decided. The Board’s construction was supported by the claims, the specification, and the prosecution history. The PTAB also did not err in finding one claim obvious over a prior art reference (Ignite USA LLC v. CamelBak Products LLC, October 12, 2017, Wallach, E.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (2)
 
 
USA: Savannah College of Art and Design, Inc. v. Sportswear, Inc, United States Court of Appeals, Eleventh Circuit, No. 15-13830, 03 October 2017
 
The claims of a non-profit college that owned a registered trademark were not limited to the goods specified on the registration certificate but extended to any goods on which the use of an infringing mark was likely to cause confusion, the U.S. Court of Appeals in Atlanta has decided. Thus, the district court’s grant of summary judgment in favor of the defendant was reversed and remanded (Savannah College of Art and Design, Inc. v. Sportswear, Inc., October 3, 2017, Jordan, A.).
 
Author(s): Linda O'Brien, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: EarthGrains baking Companies, Inc. v. Sycamore, United States Court of Appeals, Tenth Circuit, No. 15-4145, 10 October 2017
 
The federal district court in Salt Lake City did not err in terminating Leland Sycamore’s rights under a trademark license agreement (TLA) that granted him the right to use the "Grandma Sycamore’s Home Maid Bread" and "Grandma Sycamore’s Home Maid Bread Design" trademarks (the Sycamore marks), or in the scope of a permanent injunction it awarded to EarthGrains Baking Companies, that permanently enjoined Sycamore from using the Sycamore marks nationwide, the U.S. Court of Appeals in Denver has decided. Sycamore’s Lanham Act violations of trademark infringement and unfair competition provided an independent basis for the injunction granted by the district court, and Sycamore’s arguments on appeal to the contrary were without merit (EarthGrains baking Companies, Inc. v. Sycamore, October 10, 2017, Holmes, J.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Oct 2017
 
United States of America Full text Full text as PDF
 
 
 
 
 
 
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