This week in IP: EPO video policy ‘misses pain points’, UK changes address rules, INTA elects new president

In-house counsel revealed mixed views to Managing IP on the benefits of video conferences this week – while the EPO’s president agreed that stalling tactics by some parties had denied access to justice.

The EPO announced last week that all hearings below appeal level – namely examination and opposition proceedings – would be virtual until September 2021.

Until now, virtual hearings had been permitted so long as both parties agreed. From January 4 2021, the need for both parties’ consent will be removed.

Miriam Colling-Hendelkens, head of patents in crop science at Bayer in Germany, suggests that the EPO’s decision is a bad one because it’s important for parties to be able to observe each examination/opposition division member’s reaction on the arguments provided.

She added: “The interpretation that opting for video conferences is a delay tactic might miss some additional real pain points and seems to be the underlying rationale in rare and very specific cases.”

Click here to read more

Other Managing IP stories published this week include:

• INTA 2020: Peering into the future of licensing and diversity

• Sisvel IP counsel on re-choreographing the FRAND dance

• Why a pandemic is the perfect time to open a new law firm

• Exclusive: Qualcomm litigation chief speaks out about FTC win

• INTA 2020: Brands must ‘walk the walk’ in CSR goal

• Senator Tillis interview: ‘I will overhaul the DMCA in 2021’

• Open COVID co-creator: compulsory licensing should be treasured sword

• California AG will seek Biden help with COVID patents access

• Generic.com brands fear uphill battle despite USPTO guidance

• Counsel strategies already accounting for post-pandemic life

The UK government confirmed on Thursday, November 19, that only UK addresses for service would be accepted for new applications and new requests to start contentious proceedings before the UKIPO after January 1 2021.

The UKIPO updated its information page for intellectual property after January 1 2021 shortly after the news, stating that the new rules would apply to patents, trademarks and designs.

The change does not affect actions that were lodged with the UKIPO before the end of the Brexit transition period, as there is a three-year guarantee of continued European Economic Area (EEA)-based representation rights under the Brexit Withdrawal Agreement.

But the alteration will mean that EEA-based representatives will no longer have such representation rights at the UKIPO from January 1.

HGF partner Lee Curtis in Manchester posted after the announcement: “In short it is maybe wise to appoint a UK or Channel Islands-based representative ... sooner rather than later.”

Chris McLeod, partner at Elkington + Fife in London, said the announcement was “good news for UK chartered trademark attorneys and the UK IP profession generally”.

The rules change came following a call for views, which the UK government released in July and which received 1,068 responses.

INTA has elected Oracle general counsel Tiki Dare as its 2021 president and chair of its board of directors, it was announced on Thursday, November 19.

Based in Redwood City in California, she will assume her one-year term on January 1 2021.

Dare, who replaces NBA deputy general counsel Ayala Deutsch, will lead INTA in advancing its priorities on IP policies around the world, partly by implementing its 2022-2025 strategic plan.

“I’m honoured to be named INTA’s president, and I look forward to taking on the challenge of successfully leading the association into a new era,” she said.

“Brands and intellectual property practice are evolving rapidly amid both challenges and opportunities, offering INTA the enormous potential to weigh in on key issues as well as adapt the organisation itself to successfully embrace change.”

INTA CEO Etienne Sanz de Acedo said Dare’s extensive experience in trademark and copyright law, both as in-house counsel and a private practitioner, would prove to be invaluable in her new role.

The announcement came in the same week that the INTA Annual Meeting, the organisation’s first fully virtual annual showpiece, was being held.

On Tuesday, November 17, the USPTO set out new fee structures for trademark filings and proceedings at the Trademark Trial and Appeal Board. They will come into effect after January 2 2021.

In its published Final Rule, the office has increased fees for the TEAS Plus option for an application from $225 per class to $250 per class, and raised the costs of the TEAS Standard option up to $350 from $275 per class.

At the TTAB, petitions to cancel or oppose trademarks have been raised from $400 to $600 per class.

New fees have also been introduced by the USPTO for letters of protest ($50 per application), requests for oral hearings ($500 per proceeding) and appeal briefs in an ex parte appeal filed through ESTTA ($200 per class).

The new fee for deleting goods, services, and classes from a registration after submitting a Section 8 or 71 declaration, but before the declaration is accepted, will be $250 per class if filed through TEAS.

The new fee for a second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA will be $100 per application.

On LinkedIn, Kalamaras Law Office partner Stacey Kalamaras said those who have been thinking about filing a new trademark application might want to do so before the new year to save some money.

This is the first time that the USPTO has adjusted trademark fees in the past three years.

Bemanya Twebaze was appointed the next director general of the African Regional Intellectual Property Organization on Tuesday, November 17, replacing Fernando dos Santos after eight years at the head of the agency.

Twebaze, who currently serves as the registrar general at the Uganda Registration Services Bureau, was elected by the Administrative Council of ARIPO during its 44th session in Harare, Zimbabwe.

He will take up his new role as the sixth director general for ARIPO in January 2021, serving until at least January 2025.

After his win, Twebaze said: “Thank you to the Administrative Council of ARIPO for entrusting me to lead ARIPO for the next four years. I will give my best energy to make meaningful transformations at ARIPO.”

ARIPO is an intergovernmental organisation that grants and registers intellectual property rights across 20 African member states.

The company representing Nirvana sued a graphic designer last week in the District Court for the Central District of California in a bid to clarify the rightful owner of the band’s iconic ‘smiley face’ logo.

In December 2018, Nirvana sued fashion label Marc Jacobs for infringing its copyright and misusing its trademarks with its Bootleg Redux Grunge collection of clothing. Lawyers for the band argued that the logo was created by Kurt Cobain in 1991 and registered for copyright in 1993.

But former Geffen Records art director Robert Fisher, who designed the covers to most of Nirvana’s releases after 1991, argued that he, not the late bandleader, designed the logo.

The band is seeking a declaration from the Los Angeles-based court that Nirvana is the rightful copyright owner of the band’s iconic smiley face logo design.

In a submission to the court, Nirvana’s lawyers suggested that it was strange that Fisher had never once objected to the band’s exploitation of the smiley face logo in 29 years, while claiming during the band’s litigation with Marc Jacobs that he owned the right to that design.

The court has yet to rule on this matter, but the outcome will be hotly awaited by copyright counsel and grunge fans.