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This week in IP: PTAB rankings revealed, Chinese consulate closed, UK leaves UPC

The Chinese consulate in Houston, Texas, which is being shut down. Credit: Google Maps

Managing IP rounds up the latest patent, trademark and copyright news, including some stories you may have missed

PTAB half year rankings revealed

Patent Trial and Appeal Board filings were up in the first half of 2020 compared to the same period in 2019, but still lower than in either 2018 or 2017.

Between January 1 and June 30 2020, 721 petitions were filed at the PTAB. This figure was up by 10% from the 655 petitions filed in the first half of 2019 – what became a record low year for PTAB filings – and by 8% from the 667 in the second half.

Samsung was the top petitioner, Rovi the lead patent owner, and Finnegan and Fish & Richardson were the most prolific law firms.

Read more here.

Other Managing IP stories from the week that you might like to read include:

US closes Chinese Houston consulate ‘to protect intellectual property’

In the latest development on the growing tensions between the US and China, the US government on Tuesday, July 22, ordered the Chinese consulate in Houston to shut down within 72 hours, citing concerns over intellectual property theft.

The government had accused diplomats of aiding economic espionage and the attempted theft of scientific research. State Department spokesperson Morgan Ortagus said the US was acting to “protect American intellectual property and Americans' private information”.

Republican Senator Marco Rubio, acting chairman of the Senate Intelligence Committee, had described the Houston consulate on Twitter as the central node of the Communist Party’s vast network of spies and influence operations in the US.

Consulate employees burned papers in open metal barrels in a courtyard of the Houston building hours after the order was given, prompting police officers and firefighters to rush to the area.

In response to the closure, China's foreign ministry spokesman Wang Wenbin said on Thursday, July 23, that the allegations of Houston consulate staff stealing IP was “malicious slander”, and warned the US to think carefully about where their relationship was heading.

The shutdown is the latest in a series of IP-related fallouts between the US and China that arguably started when President Donald Trump imposed tariffs on billions of dollars worth of Chinese goods in 2018 because of alleged IP theft, to the detriment of both sides.

Some wounds were mended when phase one of the US-China trade deal was signed in 2019, but that act by itself hasn’t been enough to appease either side completely.

UK formally withdraws UPC ratification

On Monday, July 20, the UK government announced that it had formally withdrawn the country’s ratification of the Unified Patent Court Agreement, having stated its intention not to pursue membership of the harmonised European patent project in February.

In a published statement on the UK parliament website, IP minister Amanda Solloway reiterated her comments to the House of Lords from earlier this year that the UK no longer wishes to participate in the UPC system because of Brexit.

“Participating in a court that applies EU law and is bound by the CJEU would be inconsistent with the government’s aims of becoming an independent self-governing nation,” she wrote.

She noted that while the agreement had not entered into force, the UK government had chosen to withdraw ratification at that time to ensure clarity and facilitate the agreement’s orderly entry into force for other states.

Gregory Bacon, partner at Bristows in London, says it is not certain whether the UK’s deposit of the withdrawal notification is sufficient or whether any further steps are required to ensure the withdrawal is effective.

The UK ratified the UPCA in April 2018, almost two years after the Brexit vote. Sam Gyimah, then Conservative MP and minister for IP, announced the ratification shortly after the foreign secretary at the time, Boris Johnson, signed the letter that accomplished the ratification.

EPO qualifying examination to be held online next year

The EPO plans to move its European qualifying examination online next year, the office’s president Antonio Campinos revealed in a podcast on Thursday, July 23.

In the podcast, called Two IPs in a Pod, featuring Campinos and Chartered Institute of Patent Attorneys president Richard Mair, the EPO president said he expected the COVID pandemic to last until March next year, when the next set of exams are set to take place.

“You hope for the best but you plan for the worst,” he said. “I think there is no alternative but to move to an e-EQE and we are working very hard with EPI [Institute of Professional Representatives before the EPO] to make it happen.”

The EPO followed up on the president’s comments with a published statement from the EQE Supervisory Board that confirmed the office’s intent. In it, the board said a working group composed of EPO and EPI representatives has been set up to work out the arrangements for next year's EQE.

“Their aim is to ensure that the examination can be conducted in an orderly manner in a safe environment and to guarantee fair conditions for all candidates. The Supervisory Board is in close contact with the working group and oversees all its tasks.”

The statement noted that further details would be announced at a later date, including an option for candidates to test the system in good time before the exam.

USPTO publishes update on female inventor progress

On Tuesday, July 21, the USPTO released an update to a study on the progress and potential of female inventors in the US. It showed that the number of patents with at least one woman registered as an inventor had gone up by more than 1 percentage point in three years.

The study, called Progress and Potential: 2020 Update on US Women Inventor-Patentees, showed that 21.9% of US patents had at least one female inventor at the end of 2019, compared to 20.7% in 2016. This represented a 0.4 percentage point increase per year.

The office first published this report in February 2019, and released the update this week to illustrate new data accumulated that covered patent filings between 2017 and 2019.

The report also found that the women inventor rate (WIR) – the share of US inventors receiving patents who were women – had increased from 12.1% in 2016 to 12.8% in 2019.

Among the leading patent filers illustrated by the update, 3M showed the most improvement in the participation of female inventor-patentees. The company increased its WIR average from 15.2% from 2007 to 2016, to 16.6% from 2007 to 2019.

The top five companies for WIR averages, respectively, were P&G, Bristol-Myers Squibb, Abbott, MIT and AT&T.

Commenting on the report on LinkedIn, Facebook head of patents Jeremiah Chan said: “It's clear to me that if we want to see meaningful change, the private sector must do more to advance diversity, equity and inclusion in innovation.”

The report also highlighted changes in WIR rates by state, and the gender gap in the number of inventor-patentees who stay active by patenting.

USITC to investigate Novartis complaint against Regeneron

The US International Trade Commission voted on Tuesday, July 21, to institute an investigation of some pre-filled syringes for intravitreal injection and related components allegedly belonging to Regeneron Pharmaceuticals, after a complaint was made by Novartis.

The complaint, made on June 19, alleged that Regeneron had violated Section 337 of the Tariff Act by importing and selling these pre-filled syringes that infringed a Novartis patent.

Novartis asked the ITC to issue a limited exclusion order and a cease and a desist order.

In a press release, the ITC said it had not yet made any decision on the merits of the case and that its chief administrative law judge (ALJ) would assign the case to one of the organisation’s other ALJs.

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