This week in IP: IPAB closure splits counsel, USPTO slams AI inventorship, King captures copyright win
Managing IP rounds up the latest trademark, copyright and patent news, including some stories you might have missed
Counsel split on IPAB closure
While in-house and private practice counsel see the closure of India’s Intellectual Property Appellate Board as an opportunity for wider reform of the country’s overburdened judicial system, they have different views on how that reform should be achieved, several revealed to Managing IP this week.
While some say that the technical expertise of IPAB members has been useful for IP owners, others argue that the huge delays in appointing experts and members to the board have made the hearing process too arduous.
Mohit Patwardhan, legal and IP counsel at pharma company ACG Group in Mumbai, says that because the courts are already overburdened, the government should instead streamline and revolutionise the IPAB rather than shut it down completely.
Pankaj Soni, partner at Remfry & Sagar in New Delhi, believes many lawyers would like to see the IPAB retained but with an increased number of benches.
“For a country that sees upwards of 45,000 patent applications filed each year, to have only one bench to review appeals is, in some sense, setting it up for failure,” he says.
It was announced last week that a new bill had been proposed in India to abolish the IPAB and transfer all patent, trademark, geographical indication and plant variety cases to the high courts.
Other Managing IP stories published this week include:
USPTO slams AI inventorship in federal court; argues tech lacks ‘legal personality’ to invent
The USPTO urged the District Court for the Eastern District of Virginia on Wednesday, February 24, to dismiss a suit challenging its decision that an artificial intelligence tool could not be listed as an inventor in a US patent application.
The office made this argument in a 24-page summary motion to the court, defending its finding from April 2020 that the Patent Act defined an inventor as a person.
The office said in the summary that AI ultimately lacks the ‘legal personality’ to invent.
This slamming of AI inventorship comes after Stephen Thaler, who had made patent applications to the UKIPO, EPO and USPTO with his AI machine DABUS listed as the inventor, challenged the USPTO’s rejection of his patent filings at the federal court in August 2020.
Thaler – who told Managing IP in November that it would be “criminal to list myself as the inventor” in those patent applications – has so far failed to have any of his AI inventor patents approved.
He also made an appeal at the England and Wales High Court after the UKIPO rejected his patent application for similar reasons. However, Mr Justice Marcus Smith upheld the office’s finding in September 2020 and dismissed the case.
The topic of AI inventorship and patents has gained a lot of steam lately as intellectual property attorneys have started to ask whether refusing to grant such patents has the potential to devalue inventorship and cause companies to cut investment in new technologies.
Stephen is king in Dark Tower copyright dispute
A US appeals court has upheld an earlier ruling that the protagonist in Stephen King’s The Dark Tower series was not substantially similar to a character in an earlier comic book.
In a ruling handed down on Tuesday, February 23, the Court of Appeals for the Eleventh Circuit found that Dark Tower character Roland Deschain hadn’t copied traits of Restin Dane – also known as the Rook in a comic book series of the same name.
Benjamin DuBay, whose uncle created The Rook, sued King and publisher Simon & Schuster at the District Court for the Middle District of Florida in 2017.
He accused King of ripping off The Rook, which was created in 1976, six years before the first Dark Tower novel was published.
In the suit, DuBay also named Marvel Entertainment, which licensed a series of novels based on the series, and Sony Pictures Entertainment, which distributed the 2017 film based on the books.
However, the district court found that there were only basic similarities between Deschain and the Rook, prompting DuBay to appeal.
According to DuBay, there were substantial similarities between the Rook and King’s character, including that both were gunslingers who had a strong affinity with birds.
King countered that he had created many aspects of Deschain’s character before The Rook was even published.
In its judgment, the Eleventh Circuit found that any similarities were superficial and that the district court did not err in its decision.
DuBay has yet to announce whether he will try to petition for a full-court rehearing at the Eleventh Circuit or to the US Supreme Court.
In-house reveal COVID career management tips at MIP International Women's Leadership Forum
Managing IP held its International Women’s Leadership Forum on Wednesday, February 24.
In the final panel of the day, called "Leadership and managing your IP career during a pandemic", speakers reflected on working from home with children and mused on how it was not always possible to remove all distractions from video conferences.
Lindsay White, director of global litigation, investigations and IP at Applied Materials in California, said it was important not to worry about background noise.
She added that she found it crucial to communicate with colleagues and business contacts about her work environment because while some regions had gone back to work, hers had not.
Speakers also discussed best practices for keeping in touch and networking with colleagues.
White said her company had done virtual happy hours, and started to combine those hours with other events such as trivia nights.
She also said that her company had held a virtual escape room, which some employees loved and signed up for quickly.
Some panellists talked about their experience of moving jobs during the pandemic and getting to know their colleagues.
Helen Tieh, product counsel at Pandora in California, who joined her company during COVID, said she tried to meet as many people as possible during her interviews to get a good sense of the company.
Panellists also discussed the importance of self-advocacy, which they noted was especially important at a time when lawyers’ day-to-day work was less visible.
White at Applied Materials said she was up for a promotion in 2020 but was nervous about getting it because of the pandemic.
Her boss advised her to advocate for herself and “beat her own drum” about the work she was doing behind the scenes. White followed that advice and received her promotion last year.
She added that she has also made efforts to highlight the accomplishments of her employees to her boss and her general counsel. “They may not be tooting their own horn yet, but I know I can help them in that process,” she said.
In-house counsel and private practice lawyers will gather virtually again on March 2 and 3 for the MIP International Patent Forum to discuss additional pressing issues.
UK: Court of Appeal overthrows Vodafone Crown use defence
On Friday, February 19, the England and Wales Court of Appeal overturned a lower court ruling that Vodafone’s use of IPCom’s standard essential patent for a method of access in telecommunication networks was protected by Crown use.
Vodafone initially argued that it implemented the patent to comply with the government’s framework under the Mobile Telecommunication Privileged Access Scheme (MTPAS), which allows for priority access for first responders to join mobile networks in the event of an emergency.
In the UK, the Crown use exception under Sections 55 to 59 of the UK Patents Act gives the state the right to “use, make, import, sell or offer to sell a patent without the consent of the patent holder”.
Because IPCom’s patent allowed Vodafone to abide by the access scheme laid out by the government, the telecoms company argued, the alleged infringement was in service of the Crown.
However, the Court of Appeal ruled that Vodafone’s use of IPCom’s patent did not fall under the scope of Crown use because the government did not “express authorisation to work the patent or an authorisation to do an act in circumstances where that act necessarily infringes the patent.”
Myles Jelf, partner at Bristows in London and counsel to IPCom, says that had the Court of Appeal not overturned the lower court’s decision, the result would have been an influx of companies using the Crown use defence and then billing the government for the infringement.
“There were multiple ways for Vodafone to comply with MTPAS that did not involve infringing IPCom’s patent,” says Jelf.
“Take the trivial example of coffee mugs. If the government asks for 10,000 coffee mugs and you supply them with only the high-end ones that infringe a patent, when much cheaper ones would do that don’t infringe, why should the government have to pick up the tab for an infringement that didn’t have to happen.”
The court ruling brought clarity to this rarely used defence that could have ramifications during COVID-19.
Vodafone has yet to announce whether it will attempt to appeal the decision to the UK Supreme Court.