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Algeria introduces new VAT rate for IP services |
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With effective from 29 March 2024, the Algerian National Institute of Industrial Property has implemented a new value-added tax (VAT) on all official fees for intellectual property (IP) services in Algeria.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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Algeria |
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USPTO issues additional guidance on AI tools usage |
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On 11 April 2024, the United States Patent and Trademark Office (USPTO) published additional guidance in the Federal Register to inform patent and trademark professionals about the use of artificial intelligence (AI) tools in matters before the USPTO.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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United States of America |
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Ghana ratifies Arusha Protocol on plant variety protection |
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On 24 November 2023, the Republic of Ghana ratified the Arusha Protocol for the Protection of New Varieties of Plants, which aims to provide member states with a regional plant variety protection system.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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Ghana |
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UPC’s Düsseldorf local division hears its first case as unified patent court |
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On 5 March 2024, the Düsseldorf local division of the Unified Patent Court (UPC) conducted its first public hearing in a case between Ortovox and Mammut concerning a sales ban on avalanche rescue devices in Germany and Austria.
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Author(s): Kluwer IP Reporter |
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Source: Unified Patent Court News
Date: 29 Apr 2024 |
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Austria, European Union, Germany |
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EPO upgrades Deep Tech Finder tool |
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The European Patent Office (EPO) recently added new features to its Deep Tech Finder, thus responding to positive user feedback and improving the tool’s functionality in connecting investors with investment-ready deep tech startups
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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European Patent Organization |
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EPO starts accepting digital signatures for IP transfers and licenses |
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In order to align the document signing practices in the European Patent Office (EPO) with those in other major jurisdictions, the EPO started accepting digital and text string signatures in certain documents submitted as evidence for supporting registration requests for transfers and licenses with effect from 1 April 2024.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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European Patent Organization |
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EPO to fast-track opposition proceedings in case of parallel UPC litigation |
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With an aim to enhance legal certainty and consistency in the European patent system, the European Patent Office (EPO) has recently decided to accelerate opposition proceedings in case it receives information regarding parallel court actions from a competent authority of a contracting state or the Unified Patent Court (UPC).
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Author(s): Kluwer IP Reporter |
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Source: Unified Patent Court Cases
Date: 29 Apr 2024 |
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European Patent Organization, European Union |
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International legal teams gather for key court hearing on transparency |
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On 12 March 2024, the Court of Appeals of the Unified Patent Court (UPC) in Luxemburg discussed whether its legal processes and documents should be more open to the public, with lawyers from across Europe in attendance.
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Author(s): Kluwer IP Reporter |
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Source: Unified Patent Court News
Date: 29 Apr 2024 |
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European Union |
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U.S. apex Court denies pharmaceutical company’s obviousness appeal |
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On 22 April 2024, the U.S. Supreme Court declined to hear Vanda Pharmaceuticals’ appeal against the Court of Appeals for the Federal Circuit’s (CAFC’s) decision in Vanda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., which held that Vanda’s patents covering the use of tasimelteon drug (Hetlioz) to treat circadian rhythm disorders were obvious in nature.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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United States of America |
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USPTO proposes rulemaking on Director Review process |
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On 15 April 2024, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) in the Federal Register, seeking to formalise the Director Review process for decisions in Leahy-Smith America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB).
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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United States of America |
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EUIPO implements CP14 Common Practice |
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On 19 April 2024, the European Union Intellectual Property Union (EUIPO) released the Common Practice CP14 (Trademarks contrary to public policy or to accepted principles of morality) to provide common understandings of morality, public policy and other related concepts with examples while outlining the criteria for assessing trademarks against these concepts
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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European Union |
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Iraq modifies trademark processing terms |
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With effect from 4 April 2024, the Directorate of Trademarks, Patents, and Industrial Designs of Iraq introduced changes to the payment terms and submission requirements for trademark applications
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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Iraq |
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Trinidad and Tobago’s trademark data now available on TMview |
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On 15 April 2024, the Trinidad and Tobago Intellectual Property Office (TTIPO) made its trademark data available via TMview, an online search tool that allows users to access the databases of all participating trademark offices.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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Trinidad and Tobago |
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Madrid Protocol fees revised for Zambia |
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Pursuant to the provisions of the Common Regulations under the Madrid Protocol Concerning the International Registration of Marks, the World Intellectual Property Organization has published the revised individual fees applicable when Zambia is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.
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Author(s): Kluwer IP Reporter |
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Source: Manual IP News
Date: 29 Apr 2024 |
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Cases
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USA: I Dig Texas, LLC v. Creager, United States Court of Appeals, Tenth Circuit, No. 23-5046., 12 April 2024 |
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The company also could not be liable for indirect damages for infringement.
A company that makes equipment for heavy machinery did violate the Lanham Act by criticizing a competitor for sourcing equipment from overseas when it, too, used some overseas materials, the U.S. Court of Appeals for the Tenth Circuit has held. The court, affirming the district court’s grant of summary judgment on behalf of the heavy machinery company, also found that the company could not be liable for copyright infringement because there was no plausible evidence that it had profited specifically from its use of the competitor’s photographs (I Dig Texas, LLC v. Creager, April 12, 2024, Bacharach, R.).
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Author(s): Matthew Hersh, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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UPC: Ocado Innovation Ltd. vs. C. Stothers, UPC Court of Appeal, Luxembourg, CoA 404/202319369/2024584498/2023, 10 April 2024 |
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Requests for access to the written pleadings and evidence have been treated in different ways by the first instance courts of the UPC. When such access was allowed by the Nordic-Baltic regional division, the initial claimant, Ocado, appealed that order. Now, the Court of Appeal has set out which interests have to be weighed in order to grant access.
In an earlier order, the Court of Appeal did not involve technically qualified judges in the panel. The present decision sets out the basis for the court to be able to do so.
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Author(s): Bart van Wezenbeek, Hoffmann Eitle |
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Source: Unified Patent Court Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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Europe |
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EPO: Intel Corp., European Patent Office (EPO), Board of Appeal, T 0438/22, 23 November 2023 |
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The present decision is one of the many decisions on amendment of the specification to align with the allowable claims, a hot topic in recent times. The decision specifically addresses the allowabilityof claim-like clauses. It includes the following headnotes:
1. There is no provision stipulating that examples within the meaning of Rule 42(1)(e) EPC should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description. There is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims.
2. It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC.
3. The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected.
4. A referral to the Enlarged Board of Appeal whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring uniform case law within the boards or for the board's decision is not admissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Article 10(2)(a) EPC.
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Author(s): Bart van Wezenbeek, Hoffmann Eitle |
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Source: Kluwer Patent Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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European Patent Organization |
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EPO: T 0682/22, European Patent Office (EPO), Board of Appeal, ECLI:EP:BA:2022:T068222.20220720, 20 July 2022 |
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The board held that improper failure to grant interlocutory revision (Article 109(1) EPC) was a “special reason” (Article 11 RPBA 2020) justifying remittal to the examining division. Furthermore, the board noted a divergence between the Guidelines and case law on denial of interlocutory revision when an appeal gives rise to an objection which was not the subject of the contested decision. Case law holds that such an objection cannot preclude interlocutory revision if the appeal was otherwise well founded, whereas the Guidelines suggested that a new Article 123(2) EPC objection to an amended claim could preclude interlocutory revision.
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Author(s): Lars De Haas, Reporter EPO Mechanical Engineering |
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Source: Kluwer Patent Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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European Patent Organization |
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EPO: BlackBerry Limited, European Patent Office (EPO), Board of Appeal, T 3000/19, 06 July 2022 |
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The board found fault in the then-existing EPO Guidelines on converting internet video evidence into a citation, by including a URL for accessing the video and a screenshot. A decision that relies on such electronic evidence is insufficiently reasoned absent measures for collecting, storing and preserving electronic evidence (the internet video) and guaranteeing accessibilty. This was a substantial procedural violation.
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Author(s): Lars De Haas, Reporter EPO Mechanical Engineering |
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Source: Kluwer Patent Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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European Patent Organization |
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EPO: Intellectual Property Enabler Stockholm AB, European Patent Office (EPO), Board of Appeal, T 0752/19, 04 April 2022 |
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The board ruled that improved patient compliance due to a claimed combination of a medicine and a computer program was not a technical effect that could be used to define an objective technical problem for judging inventive step. The improvement in patient compliance was conditional on the patient's mental activities (broken technical chain) and thus could not be used to establish an overall technical effect. It could further be ruled out that the computer program of the claim led to an overall technical effect, because the computer program did not interact with the intrinsic properties of the pharmaceutical composition.
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Author(s): Lars De Haas, Reporter EPO Mechanical Engineering |
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Source: Kluwer Patent Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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European Patent Organization |
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EPO: G 001/22, European Patent Office (EPO), Enlarged Board of Appeal, G 001/22, 10 October 2023 |
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The EBA ruled that the EPO must assess entitlement to the right to claim priority under the autonomous law of the EPC. This assessment should presume entitlement to the benefit of the applicant of a European patent application for which priority was claimed if the applicant had claimed priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations. The presumption was “strong”, in that a challenge required specific facts that supported serious doubts about the subsequent applicant's entitlement to priority. For euro-PCT applications from the US, entitlement obtained by implicit agreement between joint applicants should usually be presumed.
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Author(s): Lars De Haas, Reporter EPO Mechanical Engineering |
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Source: Kluwer Patent Cases
Date: 29 Apr 2024 |
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Reporter for: Netherlands |
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European Patent Organization |
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USA: Avago Technologies International Sales Pte. Ltd. v. Netflix, Inc., United States Court of Appeals, Federal Circuit, No. 22-2147, 12 April 2024 |
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Court’s broader interpretation of the term "quality level" in Avago’s patent claims led to findings of obviousness under 35 U.S.C. § 103.
The United States Court of Appeals for the Federal Circuit upheld a decision of the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) and affirmed the unpatentability of certain claims of U.S. Patent No. 8,270,992 (the ’992 patent), owned by Avago Technologies International Sales Pte. Ltd. The appellate court found that the asserted claims of the ’992 patent were obvious and therefore not patentable under 35 U.S.C. § 103 (Avago Technologies International Sales Pte. Ltd. v. Netflix, Inc., April 12, 2024, Taranto, R.).
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Author(s): Saurabh Kashyap, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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USA: TBL Licensing, LLC v. Vidal, United States Court of Appeals, Fourth Circuit, No. 23-1150, 15 April 2024 |
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The district court had focused on whether the public associates the specific design features of Timberland boots with Timberland, and found they did not meet the criteria for distinctiveness or non-functionality.
The U.S. Court of Appeals for the Fourth Circuit has affirmed the decision of the federal district court in Alexandria, Virginia, which sided with the U.S. Patent and Trademark Office (USPTO) in a trade dress dispute involving TBL Licensing, LLC, commonly known as Timberland. Timberland sought to register certain design features of its boot as trade dress under the Lanham Act. The USPTO refused registration, concluding that the design was not distinctive and was functional. The district court agreed with this assessment, granting summary judgment in favor of the USPTO. The Fourth Circuit affirmed the district court’s decision, focusing on the lack of distinctiveness in the design without making a decision on functionality (TBL Licensing, LLC v. Vidal, April 15, 2024, Quattlebaum, A.).
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Author(s): George Basharis |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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United States of America |
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USA: City of New York v. Henriquez, United States Court of Appeals, Second Circuit, No. 23-325, 16 April 2024 |
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When a mark corresponds so closely to the product it designates, the mark is suggestive and the mark “Medical Special Operations Conference” is inherently descriptive.
Concluding that the federal district court in Brooklyn, New York, erred in assessing the strength of the trademarks “Medical Special Operations Conference” and its acronym, “MSOC,” the federal appeals court in New York has vacated a preliminary injunction entered in favor of a conference organizer against the Fire Department of New York (FDNY). The U.S. Court of Appeals for the Second Circuit concluded that the marks “Medical Special Operations Conference” and MSOC are inherently descriptive, and the district court overestimated the trademark strength of the marks (City of New York v. Henriquez, April 16, 2024, Carney, S.).
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Author(s): Brian Craig, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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USA: Kars 4 Kids Inc. v. America Can, United States Court of Appeals, Third Circuit, Nos. 23-1273 & 23-1281, 17 April 2024 |
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District court, for the second time, failed to apply the correct legal standard to laches defense, including improperly assigning the burden of persuasion and improperly analyzing prejudice to the defendant.
For the second time, the U.S. Court of Appeals for the Third Circuit has found that the district court did not properly analyze the laches defense proffered by nationwide charity Kars 4 Kids Inc., in the long-running trademark infringement lawsuit brought by Texas charity America Can! Cars for Kids. After a partial remand in 2021, when the Third Circuit had affirmed a jury’s finding of trademark infringement, but remanded and instructed the district court to properly analyze the nationwide charity’s laches defense, the district court stood by its findings that laches did not preclude the lawsuit. On the nationwide charity’s appeal of that decision, the Third Circuit has held that the district court “repeated the mistake” of its initial analysis, and that the doctrine of laches applies. The Third Circuit vacated the district court’s judgment awarding the Texas charity monetary and injunctive relief, and remanded to the district court with instructions to dismiss the Texas charity’s claims with prejudice (Kars 4 Kids Inc. v. America Can, April 17, 2024, Fisher, D.).
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Author(s): Robert Margolis, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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USA: Underwood v. Bank of America Corp., United States Court of Appeals, Tenth Circuit, No. 22-1402, 18 April 2024 |
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On second visit to Tenth Circuit, media website operator fails to establish basis to proceed with infringement claims against Bank of America over its ERICA virtual financial assistant product.
An individual and his business, which operated a website that allows users to search for movies and actors in an online database, failed to establish that their asserted trademark, “E.R.I.C.A.,” clearly identified and distinguished the services offered on the website, according to the U.S. Court of Appeals in Denver. Uses of “E.R.I.C.A.” (and “ERICA”) on the website were either too obscure or too descriptive to indicate that the term identified services offered in commerce, particularly since some of the references were to an application that was still under development. None of the examples offered by the plaintiffs were enough to show use of the mark in commerce. Therefore, they were unable to show a protectable interest in their unregistered mark, and their infringement claims against Bank of America Corp. (BoA) were properly resolved by a district court in BoA’s favor on summary judgment (Underwood v. Bank of America Corp., April 18, 2024, Moritz, N.).
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Author(s): Thomas Long, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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USA: Hetronic International, Inc. v. Hetronic Germany GmbH, United States Court of Appeals, Tenth Circuit, No. 20-6057, 23 April 2024 |
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Domestic activities for advertising, marketing, and distributing all count as infringing uses in commerce.
Following a U.S. Supreme Court decision that trademark infringement claims extend only to uses in domestic commerce, the U.S. Court of Appeals for the Tenth Circuit has remanded a case involving the HETRONIC mark to the district court to determine the extent of a jury’s $96 million damages award were attributable to domestic use. In the revised opinion, the Tenth Circuit held that domestic activities for advertising, marketing, and distributing that led to confusion among consumers of the mark for radio remote control products all count as infringing uses in commerce. Along with remanding the case to the district court to determine the $96 million for disgorgement of profits, the appeals court narrowed the scope of a permanent injunction to only domestic activities (Hetronic International, Inc. v. Hetronic Germany GmbH, April 23, 2024, Phillips, G.).
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Author(s): Brian Craig, Wolters Kluwer Legal & Regulatory US |
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Source: IP Law Daily - Selected US Cases
Date: 29 Apr 2024 |
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Reporter for: United States of America |
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United States of America |
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