The week in IP – Brexit agreement, Bio-Rad’s $24m damages, new INPI rule, $120m Palm verdict, EPO broccoli patent revocation

We’ve posted the following articles in the past week:

Biosimilar makers forgo “cut-and-thrust” launch tactics

Why Judge Koh’s Qualcomm FRAND ruling is a big deal

Are NPEs good for China’s patent system?

US district court patent cases – top plaintiffs, defendants and law firms in 2018’s first nine months

Why optimism in the patent monetisation market is rising

IP Corporate Strategy - A glimpse into the future

UK Supreme Court affirms Warner-Lambert’s pregabalin patent is invalid

Petitioners rushed to PTAB ahead of claim construction change

CJEU: Taste of food cannot have copyright protection

LES hopes new standard will raise IP awareness in boardrooms

Argentina releases new utility models prosecution rules

The EU and UK Government has published an updated draft withdrawal agreement. The paper reconfirms that owners of registered EU trade marks and registered community designs will have their rights cloned onto the UK register to ensure continued protection.

It also has been agreed that UK chartered trade mark attorneys will maintain rights of representation for ongoing proceedings at the EUIPO.

Immediate Past-President of The Chartered Institute of Trade Mark Attorneys Kate O’Rourke said businesses and IP rights owners will be reassured that the continued protection of registered EU trade marks and registered community designs in the UK has been reaffirmed in the draft withdrawal agreement.

“We are encouraged that rights of representation at the EUIPO will continue for ongoing proceedings. This ensures some continuity and is a step in the right direction,” she said. 

“However, it is very disappointing that there is no clarity on continued rights of representation for UK Chartered Trade Mark Attorneys before the EUIPO. We firmly believe that it is in the best interests of business and the UK legal professions that UK professional representatives should retain their rights to practice before the EUIPO.”

The draft withdrawal agreement includes a transition period until the end of December 2020. This could be extended with agreement from both sides. During the transition UK chartered trade mark attorneys would continue to have the rights to practice before the EUIPO.

The draft agreement will now go forward to a so-called Brexit summit on Sunday November 25.

Article 97 of the draft agreement covers rights of representation at the EUIPO. It states: “Where, before the end of the transition period, a person who is authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law was representing a party in a procedure brought before that Office, that representative may continue to represent that party in that procedure. This right shall apply to all stages of the procedure before that Office.”

The agreement adds that “such representative shall in every respect be treated as a professional representative authorised to represent a natural or legal person before the European Union Intellectual Property Office in accordance with Union law.”

Alan Johnson of Bristows discussed what the agreement’s implications are for the UPC and unitary patent dossier on the Kluwer Patent Blog.

“From that perspective, the important point about this draft agreement is the expected Transition Period. Union law still applies to the UK in this period including, of course, the unitary patent and translation Regulations,” he wrote. “These Regulations require that unitary patents are litigated in the UPC, and hence the effect of the Withdrawal Agreement is implicitly to sanction the UPC Agreement coming into force with the UK as a participant.  ‘All’ then that is required is for the Bundesverfassungsgeright to deal with the Stjerna Complaint – which rumours suggest might happen this year.” 

The McRO patent that was one of the first to survive a Federal Circuit Section 101 analysis post-Alice has been invalidated by the Central District of California, reports Law.com’s Scott Graham in his Skilled in the Art newsletter.

Judge Wu ruled that the set of rules for computerised lip-synching program covered by the patent was too broad to teach a person skilled in the art how to use the invention.

Villanova professor Michael Risch commented in a thread on Twitter: “This is an interesting enablement case, and one to learn from. The claims are really broad, but that's not enough. The question is whether the PHOSITA could fill in the gaps.”

INPI, Brazil’s IP office, issued a new rule on patent examination on October 30, reports Moelller IP. It is aimed at reducing the backlog.

Rule 227/2018 regulates the analysis of patents using the results of searches in other patent offices.

According to Mueller IP, it applies to patent applications that have not already been submitted to technical examination by INPI, have not had any other form of priority examination by INPI, have not received any pre-grant opposition, and have a counterpart application with prior art searches by a national or regional patent office in other countries.

If these conditions are met, INPI will publish an opinion setting out prior art documents cited by other patent offices and inviting the applicant to submit new claims or arguments regarding the patentability of the claimed invention. The applicant will then have 60 days from the date of publication to answer any queries.

Mueller IP added: “The new Rule is based on the findings of an existing pilot program introduced in January 2018, with the objective of evaluating the possible simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018, which seeks to reduce the backlog of patents in the INPI (currently there are approximately 200,000 patent applications pending examination).”

A New York Supreme Court judge has awarded more than $120 million to plaintiffs in a trade mark licensing suit involving royalties to be paid for the Palm restaurant intellectual property.

The court awarded damages for the defendants’ breach of fiduciary duty and usurpation of corporate opportunities, including $71.3 million in past royalties and $1.7 million in lost rent. With interest and attorneys’ fees, the total award is at least $120 million.

The plaintiffs were represented by Fred Newman of Hoguet Newman Regal & Kenney and Josh Rievman of Cohen Tauber Spievack & Wagner. “The Palm is iconic, and the court found that the correct and proper way to license valuable intellectual property is to use the percentage of sales methodology,” said Newman. “This is the first time a trial court has fully resolved that important question.”

The original Manhattan location of the Palm was opened in 1926 by a pair of Italian immigrants. Two of their grandsons, defendants Walter Ganzi Jr. and Bruce Bozzi, hold an 80% stake in the company that owns the Palm name, with their cousins, the plaintiffs, owning the remaining 20%. The two defendants opened over 20 additional Palm restaurants using wholly-owned companies and licensed the rights to use the Palm name, logo, and other intellectual property to themselves at a flat rate per restaurant regardless of sales.

Plaintiffs challenged the flat fee royalty rate, set over 40 years ago, for the Palm restaurant intellectual property as substantially below market and as calculated in an unusual and inappropriate manner for famous trademarks. The trial court agreed and required a royalty based upon 5% of sales.

The case is Ganzi, Gary C v. Ganzi J, Walter.

A Paris court has ordered Jeff Koons and the Pompidou Center to pay $170,000 for copyright infringement, reports The New York Times.

Koons’ 1988 statue Fait d’hiver depicts a woman lying in snow being nuzzled by a pig. Clothing brand Naf Naf had a 1985 advert also called Fait d’hiver, which also featured a woman lying in snow being nuzzled by a pig.  

The New York Times explained: “There are multiple differences. Mr Koons’s ‘Fait d’hiver’ is a sculpture, not a black-and-white photograph, for a start. Mr. Koons’s woman also has sunglasses on her forehead, while his pig is wreathed in flowers. The sculpture also features two penguins.

“But to Franck Davidovici, the creator of the ad, the resemblance was obvious the moment he saw a picture of Mr. Koons’s “Fait d’hiver” in autumn 2014, in the catalog for a blockbuster Koons retrospective held at the Pompidou Center in Paris.”

The court was not persuaded by the defendant’s arguments that Koons should have artistic expression, the work was a parody and the complaint was not made for almost 30 years. The judgment said the statue has the same “very recognisable staging”, including both works featuring a lock of hair on the left cheek and the same facial expression.

Koons is no stranger to IP disputes. He was sued over his 1988 exhibition “Banality”, which was based on images from advertising and magazines, settling three lawsuits. In addition, a Paris court last year ruled that Koons had infringed a French photographer’s copyright to make a porcelain sculpture of two naked children holding flowers.

A district of Delaware jury on November 13 found that 10X Genomics willfully infringed three patents owned by the University of Chicago and exclusively licensed to Bio-Rad Laboratories.

In awarding Bio-Rad $23.9 million in damages, the jury unanimously found that all single cell and linked-read genomics products sold by 10X Genomics infringed the patents.

In a separate earlier action before the International Trade Commission, an administrative law judge made an initial determination that certain microfluidic devices used by 10X in its products infringe patent rights owned by Bio-Rad.

The EPO has for the first time revoked a patent as a result of amended regulations that exclude plants and animals obtained by a biological breeding process, reports Kluwer Patent Blog.

The blog said: “The revocation, last month, concerned European patent number 1.597.965, covering a type of broccoli adapted to make harvesting easier. The patent was granted in 2013 to Monsanto, which was later bought up by Bayer. The revocation follows an opposition filed in 2014 by a coalition of organisations, supported by 75.000 signatures.”

In the latest of the IPfolio blog’s series looking ta famous patent wars takes a look at the history of patents relating to laser technology.

Gordon Gould came up with a theoretical solution to amplify visible light, but delayed applying for a patent for it until 1959, letting others in first. A change in strategy in the mid-1970s, applying for a patent narrower in scope but essential for all laser systems proved more successful. Gould’s invention of an optically pumped laser amplifier was formally recognized with U.S. Patent 4,053,845 and, in 1979, US Patnt 4,161,436.

A court ordered the USPTO to grant a third patent in 1985, which led resistant companies to finally license the technology after a successful infringement suit in 1987.

IPfolio noted: “The irony of Gould’s three decade-wait to secure formal recognition and patent protection is that by the time he did, the commercial value of his IP portfolio had soared. Licensing opportunities were much greater in the late-1980s than in the early-60s. Between 1960 and 1965, the value would have been 100% of very little. By the time Patlex’s licensing program was humming during the Bill Clinton presidency, Gould owned 20% of millions in royalties.”