This week in IP: EPO data analysed, Huawei reveals 5G fees, Becerra confirmed to cabinet
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
Counsel warn new patent data masks COVID impact
Managing IP revealed this week that while recent reports from WIPO and the EPO suggest that patent filings haven’t plummeted despite economic hardship caused by COVID-19, those numbers don’t necessarily reflect the full impact of the pandemic.
Sources suggested that many of the patents in these statistics were filed for inventions created in 2019, and that it might not be until next year that the full impact of the pandemic on innovation is realised at the patent offices.
As the chief IP counsel for a technology company based in Munich explained: “Most companies start with a local application and continue with the PCT a year later for a second filing. The original applications were mostly filed in 2019, before COVID. These are largely pre-COVID inventions.”
Other stories published by Managing IP this week include:
Huawei to start charging royalties for 5G
Huawei will start charging smartphone makers royalty fees for using its patented 5G technologies, the Chinese telecoms company announced at a live event in Shenzhen on Tuesday, March 16.
In a speech, Huawei head of IP Jason Ding said (at 1:28:49 in the video) that the company would charge “a reasonable percentage royalty rate of the handset selling price, and a per unit royalty cap” of $2.50 for smartphones capable of connections to 5G and previous generations of mobile networks.
This price is lower than those of some of Huawei’s competitors, including Finnish telecoms company Nokia.
Ding estimated that Huawei should bring in between $1.2 billion and $1.3 billion from its overall licensing fees, including those just announced, between 2019 and 2021.
He said: “We hope that the royalty rate we announced today will increase 5G adoption by giving 5G implementers a more transparent cost structure that will inform their investment decisions moving forward.”
Huawei has 3,007 declared 5G patent families, the highest of any company in the world, according to analysis by intellectual property research organisation GreyB.
Xavier Becerra confirmed as health and human services secretary
Former California attorney general and anti-pay-for-delay champion Xavier Becerra was confirmed by the US Senate as health and human services secretary in President Joe Biden’s cabinet yesterday, March 18.
Becerra, who is expected to roll back former-President Donald Trump’s administration policies and oversee a major expansion in health coverage for US citizens, was narrowly confirmed by 50 votes to 49.
Republican senator Susan Collins of Maine joined all senators from the Democratic Party to deliver the confirmation, the tightest tally for any of Biden's cabinet picks so far and an unusually narrow margin for the position.
Becerra’s confirmation will probably unnerve counsel at innovator pharmaceutical companies, some of whom told Managing IP earlier this year that the former attorney general’s views and record on pay-for-delay law and government march-in rights against patents were unsettling.
In an interview with this publication on November 12 2020 – after the general election but before Becerra’s nomination to his current position – the-then attorney general said he hoped the federal government would be a partner in his goal to march in against Gilead’s remdesivir patents.
“It will really help if we have a federal partner that’s actually willing to help us find out what Gilead is doing with its federal funding,” he said.
Wirex victorious in UK cryptocurrency trademark dispute
Cryptocurrency payment platform Wirex has won a trademark infringement claim against two other providers in the digital currency field, in a judgment on Tuesday, March 16.
In the dispute, heard at the Intellectual Property Enterprise Court (IPEC) – a division of the England and Wales High Court – Wirex accused Cryptocarbon Global, Cryptocarbon UK and Bee-One UK of unauthorised use of its registered trademark ‘Cryptoback’.
Wirex was the first company to offer a cryptocurrency rewards scheme, which it branded Cryptoback. The scheme gives up to 1.5% of a transaction value in bitcoin back to customers who use their Wirex card for in-store purchases.
The company secured trademark protection for the term in 2018. It subsequently discovered that the defendants were using the Cryptoback name for their own cryptocurrency rewards scheme.
Wirex sued for trademark infringement in September 2019.
In the judgment on Tuesday, His Honour Judge Richard Hacon found that Wirex’s trademark was valid and had been infringed by the defendants. The defendants’ counterclaims, including an application to invalidate the Wirex-owned mark, were dismissed.
Steven James, partner at Brown Rudnick, which represented Wirex, said: “This case highlights how important it is for cutting-edge, fast-growth businesses to protect and enforce their trademarks and other IP. This is especially true in the case of the crypto industry, which has seen rapid growth but also a large number of copycat or otherwise infringing offerings.”
He added: “We hope the judgment will remind businesses of the importance of securing trademark protection at the earliest possible stage, and wherever possible prior to launching a new product or service.”
Qualcomm IP head takes over as InterDigital CEO
After almost 25 years as head of IP at Qualcomm, Liren Chen has been appointed CEO of InterDigital, with current CEO William Merritt set to retire in April. The news broke on Tuesday, March 16.
With Chen’s oversight, Qualcomm became one of the leading 5G players. February 2021 data from IPlytics showed that the business had an 11.24% share of 5G families, second only to Huawei.
Qualcomm, under Chen’s tenure, also won a big victory in FTC v Qualcomm in 2020. The Court of Appeals for the Ninth Circuit ruled that Qualcomm’s licensing model for standard essential patents (SEPs), including its “no licence, no chips” policy and insistence on licensing only to end-product manufacturers, was competitive.
InterDigital has also run into antitrust claims related to its SEPs. U-blox filed a lawsuit against the company in 2019, arguing that InterDigital’s demand for higher licensing rates was an antitrust violation.
But the companies reached an agreement in November 2019 which resulted in the antitrust case being dismissed.
While at InterDigital, Merritt has championed arbitration as a means of settling SEP disputes. It was why he was one of Managing IP’s 50 Most Influential People in IP in 2019.
Despite this pro-arbitration stance, the company announced in 2019 that it was suing Lenovo in the UK for allegedly infringing several SEPs. The companies began a trial over the 4G patents on March 3 2021.
Merritt has been InterDigital’s CEO since 2005. Prior to that, he served as general patent counsel of the company.
Federal Circuit vacancy opens as judge takes senior status
Evan Wallach, a judge at the US Court of Appeals for the Federal Circuit, will take senior status on May 31, a decision which will leave his seat open for a new nomination, it was announced on Tuesday, March 16.
Senior status is a form of semi-retirement for US federal judges. They can continue to hear cases, but their seats become vacant.
This opening will be the first vacancy in the Federal Circuit since 2014 when Judge Randall Ray Rader retired. He was replaced in 2015 with Judge Kara Farnandez Stoll.
According to data from Docket Navigator, Wallach has been assigned 365 patent cases since he assumed his position.
Among many notable cases, he issued the Federal Circuit’s opinion in Nautilus v Biosig Instruments, where the court ruled that patent owners only had to show that challenged claims were amenable to construction.
The US Supreme Court reversed this decision in 2014, ruling that this test didn’t satisfy the definiteness requirement of Section 112 under Title 35 of the US Code.
Although Wallach heard many patent cases during his tenure at the Federal Circuit, he did not have a background in patent law before joining the appellate court. He had worked at the US Court of International Trade, from which the Federal Circuit hears appeals.
He is also known for his expertise in the law of war.
Former President Barack Obama nominated Wallach to the court in 2011 as a replacement for Judge Arthur Gajarsa. It is not yet known whom President Joe Biden will appoint to replace Wallach.
UK IP salaries still attractive, report shows
UK-based intellectual property lawyers and attorneys continue to command healthy salaries, despite the COVID-19 pandemic’s potential impact on budgets, an annual report from a legal recruiter shows.
The figures, released on Monday, March 15, by recruitment agency Dawn Ellmore Employment, include details on expected salaries for IP solicitors, attorneys across a range of seniority, and technical support staff, paralegals and business support staff.
New entrants can earn up to £36,000 ($50,300) as trainee patent attorneys and up to £34,000 ($47,300) as trainee trademark attorneys.
Once attorneys have a few years’ experience under their belts, salaries rise significantly, the report shows. For example, patent attorneys with up to four years’ post-qualification experience can earn up to £95,000 ($132,200) as a basic salary, while trademark attorneys at the same level may receive £82,000 ($114,100).
The overall figures were higher for solicitors. However, they were far more varied, largely due to the wide range of law firms.
It is generally known that some global firms, including those in the City of London, offer salaries in excess of £100,000 ($139,200) for newly qualified solicitors.
On average, according to the report, a trainee solicitor is expected to earn between £25,000 and £38,000 ($34,800 to $52,900), rising to between £40,000 and £60,000 ($55,700 to $83,500) upon completion of the two-year training period.
Solicitors with five years’ post-qualification experience could earn upwards of £95,000 ($132,200), while those who reach partner level could expect to earn in excess of £100,000 ($139,200).
Luke Rehbein, associate director of the patents and trademarks division at Dawn Ellmore, said: “It is pleasing to see how the IP profession has evolved to cope with the challenges that have been thrown up over the past 12 months, and current indications show that the market will remain strong over the coming months.”
VICO legality referred to EPO Enlarged Board of Appeal
On Friday, March 12, an EPO Board of Appeal referred a question to the Enlarged Board of Appeal on whether compulsory oral proceedings could continue without the consent of both parties involved.
The referral submitted to the EBoA reads: “Is the conduct of oral proceedings in the form of a video-conference compatible with the right to oral proceedings as enshrined in Article 116 (1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a video-conference?”
Video-conferences (VICOs) were introduced at the EPO early last year in response to the travel and safety restrictions introduced in response to the COVID-19 pandemic. On January 4 2021, the EPO announced that all examination and opposition proceedings would be conducted virtually until September 2021, even if one party withheld consent.
Some parties have objected to online oral proceedings on the basis that the highly technical nature of many of their cases means justice would be denied if arguments had to be presented virtually.
Others claim that patent owners have made this argument against VICO simply to stall the invalidation of their patents. Given that travel restrictions could be in place until well into 2021, an insistence on in-person hearings, they argue, would unfairly prolong the life of bad patents.
Tomos Shillingford, general counsel at Insud Pharma in Madrid, told Managing IP: “Given that this global situation could go on for an extended period, society needs to get on with collective life, and there is no real reason that hearings cannot be done virtually.”
The EBoA has said it will consider the referral (via VICO) on May 28, and that the deadline to submit observations is April 27.
French court issues €7m penalty for illegal sports streaming
The Rennes Criminal Court has convicted three men of running illegal sports streaming sites, and ordered them to pay €7 million ($8.3 million) in damages to Canal+, beIN Sports and RMC Sport – a much lower sum than the €91 million demanded by the sports channels – it was revealed this week.
It was found that between 2014 and 2018, the three men broadcasted a huge number of sporting events, including rugby, tennis and football, that would normally have been broadcast only on private sports channels.
The channel Canal+, for example, was broadcast for free, non-stop for 24 hours a day.
French newspaper Le Monde reported that one of the defendants, listed as Jean-Eric M, claimed he was the Robin Hood of illegal sports channels.
Katell Plançon, counsel for one of the defendants, said: “It is a satisfactory decision in the sense that the damages are extremely reduced compared to the sums requested. However, this is still an extremely high sentence.”
Between 2014 and 2017, the 20 websites in question had over 7.5 million visitors, who were bombarded with advertisements worth €230,000, paid for by more than 50 advertising agencies.
The €7 million will be split between the three channels: BeIN Sports will receive €3.94 million, Canal+ €2.75 million and RMC Sport approximately €600,000.