This week in IP – Plants non-patentable (again), SCOTUS swats preclusion rule, National Geographic victorious

The EPO’s Enlarged Board of Appeal declared yesterday that plants and animals exclusively obtained by essentially biological processes are not patentable, contrary to a 2018 decision from the office’s Technical Board of Appeal that such products were eligible for patent protection.

The decision was the latest in a series of attempts over 10 years to clarify whether patent protection can be obtained for plants in Europe, and falls in line with the EPO’s guidelines from 2017 that excluded plants from patent protection.

In its opinion on case G 3/19 (Pepper), the EBoA held that under Article 53b of the European Patent Convention, the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by an essentially biological process.

To ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the EBoA also ruled that the new interpretation of Article 53b would not have retroactive effect on European patents containing such claims that were granted before July 1 2017.

The interpretation will also not be extended to pending patent applications seeking protection for such claims that were filed before that date.

“I’m a bit surprised about this outcome from a purely legal point of view, but happy about it because this has been our business’s political position,” says Franck Coutand, former patent manager and current head of quality and safety at Limagrain, a plant breeder, in France.

In a ruling on a nearly two-decade-old trademark dispute yesterday, the US Supreme Court decided that Marcel Fashion Groups could not preclude Lucky Brand Dungarees from raising new defences under federal preclusion principles.

However, the opinion, written by Justice Sonia Sotomayor, left open the possibility that it might be suitable under certain circumstances for parties to apply claim preclusion to their defences.

“Here, however, this court need not determine when (if ever) applying claim preclusion to defences may be appropriate, because a necessary predicate – identity of claims – is lacking,” wrote Sotomayor.

Christian Liedtke, partner at Acuminis in California, says that based on the court’s unanimous opinion, it seems as though SCOTUS is at least sympathetic in principle to the idea of applying the concept of claim preclusion to defences.

The US District Court for the District of Colorado last Friday dismissed, with prejudice, claims brought against National Geographic for infringing the 'Wild America' trademark.

Marty Stouffer, a producer of the wildlife and nature documentary television programme Wild America, alleged that several National Geographic programmes infringed his trademark, the name of his long-running PBS series in the 1980s and early 90s. The titles included Untamed Americas, America the Wild and Surviving Wild America. 

Stouffer had demanded tens of millions of dollars in damages. But the Colorado court found that the objective facts of the case excused further inquiry into National Geographic’s subjective motives, and that those facts established that National Geographic’s titles for the series deserved first amendment protection.

Spotify has appointed WarnerMedia veteran Eve Konstan as its general counsel, replacing Horacio Gutierrez, who was promoted to head of global affairs and chief legal officer at the music streaming company.

Konstan, who most recently worked as executive vice president and general counsel at WarnerMedia Entertainment, had a career spanning 20 years at HBO.

She started at the cable network not long after the premiere of The Sopranos and was promoted to oversee legal at the WarnerMedia Entertainment portfolio just before the finale of Game of Thrones.

Konstan will provide support on legal issues at Spotify including intellectual property, litigation and risk management. She will be based in New York.