This week in IP: China releases new IP guidelines, NYC sues designer over cannabis marks, and more
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This week in IP: China releases new IP guidelines, NYC sues designer over cannabis marks, and more


Tillis and Leahy announce two bipartisan patent bills; Switzerland leads innovation list; UK gets new IP minister; INPI ponders French design overhaul; SCOTUS to bring order to in-person questioning

Leahy confirms new bill to limit USPTO director’s PTAB power

Senator Patrick Leahy has announced that he plans to introduce legislation intended to prevent future USPTO directors from undermining the inter partes review process at the Patent Trial and Appeal Board.

Speaking at a webinar hosted by the US Manufacturers Association for Development and Enterprise (US MADE) on Wednesday, September 22, Leahy said the new bill would increase transparency for IPRs, prevent politicised meddling and limit the number of “so-called” discretionary denials.

Leahy’s announcement confirms reports made to Managing IP earlier this week that the senator would introduce a new PTAB-related bill.

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Other Managing IP stories published this week include:

China lays out new guidelines for IP

China issued Guidelines for Building a Powerful Country with Intellectual Property Rights (2021-2035) on Wednesday, September 22, to improve its intellectual property regime

The policy document, which includes several developmental goals as well as plans to launch new legislation, estimates that the added value of patent-intensive industries and copyright industries will account for 13% and 7.5% of China’s GDP by 2025, respectively.

The Central Committee of the Communist Party of China and the State Council jointly released the guidelines along with a notice calling all regions and departments to implement them.

The guidelines also cover plans for implementing a monetary compensation system for infringement, increasing damages, and lays out proposals to accelerate legislation covering big data, artificial intelligence and genetic technology.

They outline policies and laws to be fleshed out later by the government and lawmakers as well as measures to promote multilateral and bilateral IP negotiations.

Although stakeholders have advocated for increasing transparency in IP litigation in China on several occasions, the guidelines do not specify any measures on that front.

Tillis and Leahy announce two bipartisan patent bills

US senators Patrick Leahy and Thom Tillis introduced two intellectual property bills on Tuesday, September 21 – one to ensure that the public could identify the true owners of patents and another to bolster more diverse participation in the patent system.

The first bill, the Pride in Patent Ownership Act, would mandate that patent owners have to disclose their identities to the USPTO when a patent is issued or when ownership of a patent changes.

If passed, the act would also set out that applicants have to disclose whether any government entity – including a foreign one – provided funding for fees paid to the USPTO or to a lawyer or patent agent for prosecution.

The second, the Unleashing American Innovators Act, would require the USPTO’s satellite offices to conduct outreach to increase participation in the patent system from underrepresented groups, including women, people of colour, veterans and individual inventors.

It would also mandate that the USPTO director should establish a new satellite office in the southeast region of the US, and to look into whether the office needed additional satellite offices to increase underrepresented groups’ representation in the patent system.

Under the bill, the director would be compelled to establish a pilot programme to help first-time prospective patent owners assess the viability of potential applications.

The bill would also lower filing fees for small businesses and micro entities.

Leahy also announced his intention this week to introduce a bill that would limit the powers of the USPTO director over the Patent Trial and Appeal Board and “restore” the America Invents Act.

Switzerland leads innovation list as Korea breaks into top five

Switzerland retained top spot in the World Intellectual Property Organization’s annual ranking of countries’ innovation capacity.

The Global Innovation Index (GII), published on Monday, September 20, said innovation, R&D and intellectual property filings had all performed strongly in the past 12 months despite the impact of COVID-19.

Technology, pharmaceuticals and biotech industries boosted their investments.

In a sign of the growing influence of Asian economies – and their IP output – South Korea (fifth) entered the top five for the first time having been ranked tenth last year. Four other Asian economies also featured in the top 15: Singapore (eighth), China (twelfth), Japan (thirteenth) and Hong Kong SAR (fourteenth).

Europe and North America were the strongest performing regions. Sweden was ranked second, the US third and the UK fourth. All three of those countries were among the top five in the past three years.

Darren Tang, WIPO director general, said: “This year’s GII shows us that in spite of the massive impact of the COVID-19 pandemic on lives and livelihoods, many sectors have shown remarkable resilience.

“As the world looks to rebuild from the pandemic, we know that innovation is integral to overcoming the common challenges that we face and to constructing a better future.”

UK gets new IP minister … again

George Freeman has been named the latest minister with responsibility for intellectual property in the UK following a reshuffle of cabinet positions.

The Conservative member of parliament has taken over from Amanda Solloway as minister for science, research and innovation at the Department for Business, Energy and Industrial Strategy.

The MP wrote on Twitter: “A huge privilege and honour to be asked by the PM to take on the Minister for Science, Research + Innovation Portfolio and join the PM’s Science Cabinet Committee. We have a historic opportunity to unleash UK science & innovation for post-Covid Recovery.”

Freeman is the fifth politician to take on this role since 2016. His predecessor Solloway held the post for 18 months. Baroness Lucy Neville-Rolfe, Jo Johnson and Sam Gyimah have also all had the position in the past five years.

Solloway’s moment in the spotlight in the role was to finally confirm that the UK did not wish to participate in the proposed unitary patent and Unified Patent Court.

NYC sues designer over cannabis marks

The City of New York sued clothing designer Robert Lopez on Monday, September 21, for counterfeiting after he sold goods and apparel bearing marks that the city claimed were virtually identical to its registered marks.

The marks include logos for the Department of Sanitation and the City of New York Parks & Recreation.

NYC said the defendant had rejected the city’s demand to cease and desist and had expanded his unlawful use of the NYC New York Cannabis marks. It added that Lopez is now also offering trademark licensing and cannabis-related business consulting services to third parties.

The city also claimed that the defendant had a history of copying and mimicking well-known trademarks and that he sells hats that bear marks resembling those of the San Francisco Giants, the National Football League, the Los Angeles Lakers, the Olympics and the Las Vegas Welcome sign.

NYC is hardly the only well-known entity to turn to litigation in response to cannabis or cannabis-related offerings.

Sacha Baron Cohen sued cannabis company Solar Therapeutics in July for copyright infringement, false advertising and misappropriation of his right of publicity over a billboard that used the likeness of his famous character Borat.

And in May 2021, Wrigley filed lawsuits against cannabis product sellers that allegedly infringed its Skittles, Starburst and Life Savers brands.

AI and closing the book on Brexit: UKIPO’s year in review

Intellectual property and the work of the UKIPO has been central to the government’s innovation strategy and in promoting economic growth, the office argues in a new report published on Wednesday, September 22.

Trademark and design filings both hit record levels over the past year, at 140,894 and 69,520, respectively.

This is possibly due to EU rights no longer covering the UK, said the latest Innovation and Growth Report, which summarises the UKIPO’s activities over the past year.

The UKIPO also converted a total of 1.5 million EU trademarks, alongside 700,000 designs, to the UK registers.

“The UK has an extraordinary heritage of innovation stretching back to the industrial revolution, and an effective IP regime has been at the heart of its development,” said UKIPO CEO Tim Moss.

“Our latest report captures the IPO’s contribution towards making the UK the most innovative country in the world, capable of meeting our biggest challenges now and in the future,” Moss added.

Artificial intelligence (AI) formed a significant part of the UKIPO’s work over the past year, after it published a call for views on AI and IP last September.

The government has since pledged to consult on issues including AI inventorship and potential reforms of patent and copyright law.

AI is likely to remain high on the UKIPO’s agenda for the coming year, particularly in light of Lord Justice Colin Birss’s dissenting opinion in the latest Court of Appeal ruling on the DABUS case.

INPI ponders French design overhaul

The French intellectual property office is seeking public views on potential reforms to its design system, including a new invalidity procedure.

Users will have until October 31 2021 to return a questionnaire on proposed reforms, which could come into effect in 2024.

The National Institute of Industrial Property (INPI) said the main reforms are centred around modernising the filing process and introducing a new invalidity procedure for registered designs.

The fee for the invalidity procedure is pitched at €600 ($705), although this is a proposal the INPI is seeking feedback on.

Also on the INPI’s agenda is the introduction of new formats for filing designs, including MP4.

Currently, filings can be made either in colour or black and white, with the jpg, jpeg, png, and tif formats, with a 5MB limit on the size of the file.

The INPI is also seeking views on whether it should reduce design fees for SMEs, individuals, and non-profits, in line with the current rules on patent filings.

SCOTUS to bring order to in-person questioning

The US Supreme Court will bring rules from its telephone-based oral arguments to those in person, according to its updated guide to counsel for the October 2021 term.

The court said that once a lawyer’s time expires, each justice will have the opportunity to question that attorney individually in order of seniority, just like they did during telephone hearings amid COVID.

Before COVID, justices questioned attorneys in no particular order. However, they will still be able to do this during lawyers’ designated argument times.

This practice could be relevant to IP lawyers when the court hears copyright case Unicolors v H&M on November 8 in person. SCOTUS will hear oral arguments in person again starting this October.

US copyright body wants strict anti-piracy measures from China

US-based copyright industry association the International Intellectual Property Alliance has shared its concerns over piracy in China with the US Trade Representative as part of an annual review of China’s World Trade Organization obligations, it emerged this week.

The alliance’s letter, addressed to the Trade Representative on Wednesday, September 15, referred to China as a significant market for the creative industries. It highlighted that legitimate content continues to be hampered by piracy, discriminatory and restrictive market access policies, and long-standing unfulfilled international obligations.

IIPA is a coalition of five member associations with each member representing a segment of the US copyright industry.

The association lauded some of the positive measures already taken by China such as the recent copyright law amendments to introduce broadcasting and public performance rights for producers of sound recordings, but sees a lot more room for improvement.

It called for stronger criminal enforcement measures against infringers, highlighting that though infringing websites are of major concern, search engines such as Baidu that offer cloud hosting services also facilitate piracy.

The alliance also expressed its concerns over piracy-enabling apps and large-scale manufacturing and distribution of devices in China that support the installation of such apps.

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