This week in IP: in-house reveal Brazil plans, TMview gets 32m China marks, Samsung loses $25m case
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
In-house reveal Brazil prosecution plans after SC ruling
With the Brazil Supreme Court having removed the guarantee of a 10-year term for successful patents – retroactively for pharma and medical device technologies – in-house counsel are planning to analyse the patent landscape and speed up prosecution, according to five sources.
Erick Stegun, an intellectual property manager at a pharmaceuticals company in São Paulo, says it’s important for companies to know how their patents have been affected by the retroactivity decision, because knowing how much exclusivity they have left will help them make better business decisions.
“We’re still talking and looking for ways to try and maintain the patents – but it’s hard, because the decision was very clear that all patents related to healthcare would be affected by the retroactivity of the decision,” Stegun says.
Managing IP broke the news two weeks ago that the Brazil high court had ruled nine to two in Direct Action 5,529 that the sole paragraph of Article 40 of Brazil's Industrial Property Law was unconstitutional.
The provision set out in the paragraph had guaranteed at least 10 years of patent term from grant date, to make up for long delays at Brazil's patent office.
The Supreme Court decided last Wednesday, May 12, that its ruling would be applied retroactively to pharma and medical device patents. One source says some of his company’s patents have been cut by six years as a result.
Other Managing IP stories published this week that you may have missed include:
EUIPO adds 32m Chinese marks to TMview database
China's IP office, CNIPA, has made its trademark data available on the TMview search tool, an EUIPO database launched in 2010.
The EUIPO announced the update on Wednesday, May 19. TMview now contains data from 75 participating offices, including 96.4 million trademarks, 32 million of which came from CNIPA.
CNIPA commissioner Shen Changyu and EUIPO executive director Christian Archambeau held a virtual meeting to celebrate the inclusion of the Chinese trademarks into TMview.
Archambeau said: “The go-live of Chinese trademark data in the TMview database is a tribute to the mutually beneficial cooperation between China and Europe in general, and more specifically between the CNIPA and EUIPO.
“This will help Chinese and European businesses of all sizes, including the small and medium-sized enterprises who are increasingly tackling global markets.”
Since its creation, TMview has facilitated more than 81 million searches from users across the world. Those from the US, Spain, Italy, Germany and China are among the most frequent visitors.
In its press release, the EUIPO noted that the inclusion of the Chinese trademarks was possible thanks to the support of IP Key China, an EU-funded project that promotes IP rights in China and co-operates with local authorities.
Samsung ordered to pay $25m in eastern Texas
A jury in the District Court for the Eastern District of Texas ruled on Wednesday, May 19, that Samsung should pay Acorn Semi $25 million for patent infringement.
The jury found that Samsung had infringed four of Acorn’s patents and eight claims in total. It did not find, however, that Samsung had wilfully infringed any of the claims. It awarded Acorn the money as a lump sum rather than as a running royalty.
Acorn filed the case in October 2019. It said the patents in question related to a discovery allowing researchers to insert material between a metal and a semiconductor to minimise contact resistance between them, rather than eliminating material between the substances.
The infringed patents in question were US numbers 8,766,336; 9,461,167; 9,905,691; and 10,090,395.
They were all titled "Method for depinning the fermi level of a semiconductor at an electrical junction and devices incorporating such junctions" and were issued to inventors Daniel Grupp and Daniel Connelly.
Acorn originally claimed that Samsung also infringed US patent numbers 7,084,423 and 9,209,261. But the court found the only asserted independent claim in the ’423 patent to be indefinite, while the plaintiff’s experts didn’t offer any infringement or damages opinions on the ’261 patent.
Biden names Colleen Chien to US Department of Commerce
President Joe Biden named Colleen Chien as a senior counsellor at the US Department of Commerce's Office of General Counsel on Tuesday, May 18.
Chien had been spoken of as a potential candidate for USPTO director, and it is unclear whether she could still take up that role.
She is a professor at Santa Clara University School of Law and previously served in the Obama administration as senior adviser on intellectual property and innovation to the chief technology officer. She was also a volunteer as part of the Biden-Harris transition team.
Chien was one of Managing IP’s 50 Most Influential People in IP in 2013. She was recognised for her work studying and fighting patent assertion entities – which included coining that term as an alternative to non-practising entity.
In 2019, she wrote a letter, along with Mark Lemley of Stanford Law School, Melissa Wasserman at the University of Texas School of Law and several other professors, expressing concern about the proposed STRONGER Patents Act.
The act was intended to strengthen US patent rights by reforming injunctive relief and inter partes reviews at the Patent Trial and Appeal Board.
Chien and the other signatories argued against a provision of the bill that would have limited petitioners to filing one petition per patent claim, and said that the provision ignored the realities of patent litigation.
She also testified before the Senate Judiciary Committee's subcommittee on IP in 2019 in a hearing about how Congress could prevent the issuance of low-quality patents.
Brazil PTO set to republish pharma patents with shorter lifespans
Brazil's National Institute of Intellectual Property issued a report on Tuesday, May 18, listing 3,341 pharmaceutical patents that must be adjusted to conform with a recent Supreme Court ruling removing a guarantee of a 10-year term for successful patents.
In the Supreme Court decision, nine of the 11 justices wrote that a minimum 10-year patent term violated the country’s constitution because the extension was automatic and did not prevent ‘evergreening’ on pharmaceutical patents.
The justices found that a minimum term constituted a term extension that automatically extended that patent’s life.
They also argued that a minimum term increased medical costs by creating monopolies that had a negative impact on Brazilians’ access to medicine.
The 10-year patent guarantee was in place because of the infamously slow processing times for patents at Brazil's patent office, one of the longest pendency times in the world.
A report from 2016 showed that, on average, a patent application took more than 11 years to be granted, with some patents taking up to 20 years.
Since the Supreme Court’s decision on May 6, generic companies have filed 46 lawsuits against 79 patents.
Albright pushes third VLSI v Intel trial to December
Judge Alan Albright has postponed the third patent trial between VLSI Technology and Intel at the District Court for the Western District of Texas by six months, it was revealed on Monday, May 17.
The third trial, which was originally set to take place on June 12, will now go ahead on December 6 2021.
Patent litigators will be keen to tune into the third trial, given that the first ended with a $2.18 billion damages award for VLSI in March, yet the second finished in a victory for Intel in April.
In the first trial, the jury ruled that Intel infringed patents belonging to VLSI, awarding the Fortress Investment Group subsidiary $1.5 billion for US patent number 7,523,373 and $675 million for number 7,725,759.
In the second, a jury ruled that Intel was not liable for the $3.1 billion in damages that VLSI was seeking.
VLSI sued Intel at the Western District of Texas in April 2019, alleging that the tech company had infringed its patents pertaining to speed shift technology.
South Africa backtracks on decision to pass copyright bills
South Africa’s Portfolio Committee on Trade and Industry decided on Friday, May 14, that the National Assembly should rescind its 2018 decision to pass the Copyright Amendment Bill and the Performers’ Protection Amendment Bill.
The committee’s decision follows President Cyril Ramaphosa’s letter in June last year that outlined reservations about the constitutionality of the two bills. His objections included concerns about how copyright could be traded and how performances of ‘traditional works’ would be regulated.
Ramaphosa also said the copyright bills “may constitute retrospective and arbitrary deprivations of property”.
“These provisions mean that going forward, copyright owners will be entitled to a lesser share of the fruits of their property than was previously the case,” he added.
Various interest groups and individuals have offered opinions on how the National Assembly, the lower house of the parliament, should consider Ramaphosa’s hesitations.
A group of African copyright academics issued a joint letter in which they argued that the current Copyright Act was unconstitutional because it unfairly discriminated against people living with visual and print disabilities, did not permit uses of work to the degree required for freedom of expression, and inhibited access to modern-day educational materials.
The decision by the trade and industry committee means the process of reconsidering and amending the bills has been launched.
China backs COVID IP waiver
China has indicated apparent support to a call from developing countries to waive intellectual property rights for COVID-19 vaccines.
“China fully understands and is supportive of the developing world’s demand for [an] IP rights waiver for COVID-19 vaccines,” foreign ministry spokesman Zhao Lijian said on Monday, May 17, according to the South China Morning Post.
“This would be in line with the idea that COVID-19 vaccines are a ‘global public good’, and part and parcel of [China’s] efforts to build a global community of health for all,” he added.
Zhao’s statement concerns a controversial proposal from India and South Africa for the World Trade Organization (WTO) to waive IP restrictions on COVID-19-related medical products.
However, his quote refers specifically to vaccines, not other medical products.
The waiver proposal has been backed by more than 100, mostly developing, countries.
Earlier this month, the US threw its weight behind the proposals.
“This is a global health crisis, and the extraordinary circumstances of the COVID-19 pandemic call for extraordinary measures,” said Ambassador Katherine Tai, the US trade representative, in a statement released on May 5.
Other nations, including Germany, are opposed to the plans.
According to the South China Morning Post, Zhao also said China was working to provide doses of a vaccine from state-owned vaccine maker Sinopharm to COVAX, the WHO-backed vaccine distribution programme.
Second Banksy trademark revoked
Banksy, the anonymous UK street artist, has lost a second trademark dispute against a greetings card company – this time surrounding his ‘monkey sign’ artwork.
In a decision published on Tuesday, May 18, the EUIPO Cancellation Division declared the trademark invalid. This follows an earlier decision in September 2020 when the EUIPO also declared the artist’s ‘flower thrower’ EU trademark (EUTM) invalid.
In October 2019, and in response to the ‘flower thrower’ case, Banksy opened a storefront called Gross Domestic Product. He used the shop window to display items but not to sell them in person, to strengthen his claim to his EUTMs including the ‘monkey sign’ artwork.
However, the claim failed. In fact, the EUIPO made reference to that earlier decision in this week’s ruling.
It found that Banksy was not trying to carve out a portion of the commercial market by selling his goods, but that by opening the shop he was merely trying to fulfil the trademark class categories to show use and to “circumvent the non-use of the sign requirement under EU law”.
The artist, the EUIPO added, also made prior statements that the goods were created and being sold solely for this cause.
Banksy, the EUIPO said, also admitted that this was not genuine trademark use but “only to circumvent the law”.