This week in IP: In-house want remote mix, NCAA relaxes rights rules, USPTO releases Arthrex guidance
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
In-house want mix of in-person and remote in law firm relationships
In-house counsel told Managing IP this week that they wanted a mix of in-person and remote interactions with external counsel from now on.
Sources said that while they were excited to see private practice lawyers in person again, they preferred to hear work pitches remotely because the calls saved time and were more convenient than in-person meetings.
Most said, however, that when they did maintain virtual connections, they wanted private practice lawyers to remain in regular communication with them to help nurture the relationship.
Other Managing IP stories published this week that you may have missed include:
How pharma in-house teams do M&A deals
Doctrine of equivalents still murky despite Birss ruling: lawyers
IP Enforcement Summit: Ships and couriers under spotlight in counterfeit fight
SCOTUS imposes new limits on assignor estoppel
ID checks and Ts and Cs: in-house reveal social media wish list
College counsel share notes on how they choose to litigate
PTAB survival guide: in-house set out how to save patents
NCAA says student athletes can benefit from their own images
The National Collegiate Athletic Association (NCAA) unveiled a new interim policy on Wednesday, June 30, just over a week after the US Supreme Court's ruling in NCAA v Alston.
The policy set out that starting July 1, NCAA college athletes would be able to benefit from their names, images and likenesses (NIL), so long as the use was consistent with the laws of the states where their colleges are located.
The policy also allowed individuals to use professional services providers for NIL matters.
NCAA President Mark Emmert said that with the variety of state laws adopted across the country, the association would continue to work with Congress to develop a solution that would provide clarity on a national level.
“The current environment — both legal and legislative — prevents us from providing a more permanent solution and the level of detail student-athletes deserve,” he said.
Although the policy could allow students to make money from playing sports, the NCAA indicated that it did not support universities paying college students directly for their participation on teams.
Sandra Jordan, chair of the Division II Presidents Council and chancellor at the University of South Carolina Aiken, said: “The new policy preserves the fact college sports are not pay-for-play.
“It also reinforces key principles of fairness and integrity across the NCAA and maintains rules prohibiting improper recruiting inducements. It’s important any new rules maintain these principles.”
This announcement comes on the heels of another victory for student athletes. The US Supreme Court ruled on June 21 that the NCAA could not prevent its member schools from providing athletes with education-related benefits.
USPTO releases Arthrex-driven guidance
The USPTO announced on Tuesday, June 29, that it had implemented an interim procedure where the USPTO director could initiate reviews of Patent Trial and Appeal Board (PTAB) decisions.
This change came as a result the Supreme Court’s ruling in US v Arthrex, which set out that the appointment of administrative patent judges at the PTAB was unconstitutional, but that this problem could be fixed by giving the USPTO director more power to overturn the board’s decisions.
Patentees and challengers that want the USPTO director to re-evaluate their cases can file requests for rehearing and send those requests to director_PTABdecision_review@uspto.gov, while copying attorneys for both parties.
The USPTO allowed the public to ask additional questions about this process at the PTAB Boardside Chat yesterday, July 1 – part of a series that addresses best practices before the board.
Drew Hirshfeld, commissioner for patents at the USPTO, is currently performing the duties of the director while the US waits for President Joe Biden to select a nominee.
In conversations with Managing IP after the Arthrex ruling came out, in-house counsel were divided over whether the ability of the USPTO director to overturn PTAB decisions would open the USPTO head up to political lobbying and increase the importance of Biden’s pick.
USPTO reminds patent applicants to ‘properly present predicted results’
The USPTO reminded patent applicants to clearly distinguish between real and predicted results when drafting patents yesterday, July 1.
In a notice on the Federal Register, the office said applicants should “properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted experimental results and working examples that report actual experimental results”.
The distinction, it said, should be clear enough to satisfy the written description and enablement requirements and comply with the applicant's duty of disclosure.
The notice, written by acting USPTO director Drew Hirshfeld, also set out that best practice was to take care to ensure the proper tense was employed to describe experiments and test results so readers could distinguish between actual results and predicted results.
Any ambiguities, it said, should be resolved so a person with ordinary skill in the art, including those who might not have the level of skill of the inventor, could rely on the disclosure as an accurate description of experiments that supported the patent claim coverage.
The USPTO wrote that questions about the notice should be directed to legal advisers Ali Salimi and Raul Tamayo.
INTA supports non-challenged agreements at CJEU
INTA has filed an amicus brief at the Court of Justice of the EU in support of so-called non-challenge clauses in trademark-related private contracts, it was announced on Wednesday, June 30.
In its brief in Leinfelder Uhren München v E Leinfelder (C-62/21), the organisation argued that non-challenge clauses were not invalid per se and that national court rulings enforcing these obligations needed to be considered at an EU level.
The association noted that non-challenge obligations were customary in trademark-related agreements, including licence, transfer or pledge agreements, to safeguard the economic basis of valid registrations.
INTA said broad public access to cancellation and revocation proceedings would not suffer if access were blocked for a few individuals.
The CJEU will consider these arguments in relation to two questions posed to it by the German Federal Supreme Court on the effect of private contracts on IP office and litigation proceedings.
The German court asked the CJEU in February whether a revocation application for an EU trademark on the ground of non-use would reduce the effectiveness of these contracts.
Its second question aimed at obtaining an answer on the specific procedural setting of the case and the relationship between the jurisdiction of national courts and proceedings before the EUIPO and EU courts in trademark matters.
In its brief, INTA contended that both questions “trigger the capacity of trademarks as objects of property and that trademark laws are designed to respect this capacity in general”.
Prior to the German high court referral, two lower German courts refused to acknowledge the existence of a party’s non-challenge obligation in a pending litigation because the party violated this obligation by filing a petition for revocation due to non-use.
The refusal was based on an earlier ruling of the EU General Court in Carrera (T-419/16), which set out that broad public access to revocation and cancellation-proceedings in the EU Trademark Regulation prohibited non-challenge obligations per se.
EPO hails digital transformation as patent applications fall
The EPO has said the year 2020 prompted an accelerated switch towards a digital workspace – due to plans brought forward because of the COVID pandemic – and that European patent applications fell marginally in that time.
In its Annual Review, published on Tuesday, June 29, the EPO said it had accelerated the digitalisation of the patent granting process and extended teleworking to almost all staff, introducing changes during the course of the year that were originally due to be implemented by 2023.
According to the EPO, 97% of matters across the entire volume of workflows were performed digitally by the end of 2020. As a result, the office used 58.7 million fewer sheets of paper compared to 2019 and saw an 80% reduction in duty travel.
“These encouraging trends were supported by the large-scale switch to oral proceedings by videoconference, which also ensured access to justice and greater transparency,” said an EPO spokesperson.
But the review also showed that demand for European patents declined very slightly when compared with 2019. There were 180,250 European patent applications filed in 2020, 0.7% fewer than the previous year.
António Campinos, EPO president, said: “Thanks to the determination and ingenuity of staff, our close co-operation with partners worldwide, our fresh strategic approach to quality and our accelerated digital transformation, the office has been able to both manage the challenges presented by the pandemic.”
Cobra fails to bite in Bitcoin copyright scrap
The England and Wales High Court handed down a default judgment in favour of self-styled Bitcoin creator Craig Wright on Monday, June 28, following a copyright dispute against the operator and publisher of the Bitcoin.org website.
In its judgment, the court said Cobra, the pseudonymous creator of the site, should stop hosting a copy of the Bitcoin white paper, which was published in 2008.
The ruling from His Honour Judge David Hodge follows a lawsuit filed by Wright in April. The matter was filed after Wright issued letters to Bitcoin.org, Bitcoin.com and Bitcoincore.org in January demanding that the sites remove copies of the white paper because they were infringing his copyright.
Hodge ruled in favour of Wright because Cobra – although in attendance at the virtual hearing – chose not to offer a defence in order to maintain anonymity.
Authored by an individual named Satoshi Nakamoto, the 2008 white paper was the first document to outline the principles of the cryptocurrency.
Wright, a computer scientist and Australian national, has said he and Nakamoto are one and the same, although he has yet to prove these claims.
A separate case to challenge Wright’s claim in the High Court is ongoing, led by the non-profit organisation the Crypto Open Patent Alliance (COPA).
Managing IP interviewed the head of COPA earlier this year.
Canada announces new independent IP regulator
As part of its first ever Intellectual Property Strategy, the Canadian government has established the College of Patent Agents and Trademark Agents to help regulate the IP profession and ensure all Canadians have access to high-quality IP advice.
It was announced on Monday, June 28, that the college would be responsible for maintaining standards within the IP profession, which will include administering a licensing system and making sure that only qualified professionals are authorised to provide agent services.
"The establishment of the College of Patent Agents and Trademark Agents marks an important milestone not only for our government's Intellectual Property Strategy but also for the entire patent and trademark profession,” said François-Philippe Champagne, minister of innovation, science and industry.
“I look forward to seeing the college become a strong and dedicated professional regulator that will promote the highest quality of IP support so Canadians can better protect and leverage their good ideas.”
The college will also provide a range of support to patent and trademark agents so that they can stay informed on the evolving IP landscape and better serve Canadian businesses and innovators.
Other responsibilities will include maintaining the registers of patent and trademark agents, and administrating qualifying exams.
SCOTUS rejects petition for Jersey Boys copyright suit
The US Supreme Court denied a petition to review a copyright case between an author and the producers of the hit Broadway musical Jersey Boys, essentially upholding an earlier ruling from the Court of Appeals for the Ninth Circuit.
Donna Corbello, the wife of the author who had ghost-written Four Seasons band member Tommy DeVito's autobiography, sued the musical’s producers in 2016 at the District Court for the District of Nevada.
She claimed that DeVito had given an unpublished copy of the book to the producers in the 1980s, which they later used to write the musical.
In judgment published on Monday, June 28, the Ninth Circuit upheld the lower court decision and ruled that any similarities between the biography and the musical were based on historical fact and therefore did not qualify as infringement.
The court also affirmed copyright estoppel, which meant the author couldn’t claim infringement if elements of a story were fictionalised after they claimed they were historically accurate.
The 2005 musical Jersey Boys follows the rise and fall of the 1960s rock and roll group the Four Seasons. The musical won four Tony Awards in 2006 and includes renditions of ‘Sherry’, ‘Big Girls Don’t Cry’, and ‘Can’t Take My Eyes Off of You’.