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This week in IP: vaccine waiver compromise agreed, IP intensive industries make 41% US GDP, and more

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UKIPO announces designs register corrections; Optis beats Apple in UK again; Amex files TMs for NFTs and metaverse; Federal Circuit judge retires; Tillis seeks unified IP office study (again); Federal Circuit declines Biogen rehearing

Counterfeiting report confirms COVID opportunism

A report into the sources and destinations of the most dangerous counterfeits has confirmed counsel’s suspicions that China and Hong Kong SAR are key threats, with Turkey also a lingering concern, Managing IP can reveal.

A joint report by the EUIPO and OECD called Dangerous Fakes. trade in counterfeit goods that pose health, safety and environmental risks, analysed data from customs seizures between 2017 and 2019. It was published yesterday, March 17.

Click here to read the full article. 

Other Managing IP stories published this week include:


UKIPO announces designs register corrections

The UKIPO said on Wednesday, March 16, that design applications filed on certain dates had been recorded with incorrect filing dates.

According to an announcement from the IP office, applications filed without a priority claim on a Saturday afternoon after 1pm, a Sunday, or a bank holiday were affected.

Any application filed with a priority claim and received on a Saturday, Sunday or bank holiday was also affected.

The IPO said most designs were unaffected because they were not received at these times.

The problem occurred because, according to designs legislation, these times fell outside of the UKIPO’s hours of business. Most applications received at these times were legally considered to have been filed on the next working day as such.

The problem dates back to the introduction of the UKIPO’s digital service for designs, introduced in September 2016.

In a statement, the UKIPO said: “We intend to update all affected designs so that our register shows the legally correct dates. Before making these changes, we will write to the owners of affected designs or their representatives to let them know of our planned corrections.”

It plans to write to all affected customers within 12 weeks.

The office said there will be an opportunity to object to its planned corrections, as set out in Section 21 of the Registered Designs Act. Under this process, owners of registered designs, and others who have an interest, may request a hearing if they do not think the register should be corrected.

The UKIPO said it will start making corrections next month and expects the process to take several weeks.

IP intensive industries make 41% of GDP, USPTO finds

Industries in the US that intensively used intellectual property accounted for 41% of domestic economic activity or output in 2019, according to a USPTO report published yesterday, March 17.

Altogether, IP-intensive industries accounted for 63 million jobs, or 44% of all US employment in 2019, the study found.

Further, about 33% of jobs (more than 47 million in total) were directly supported by IP-intensive industries. These sectors also indirectly supported an additional 15.5 million jobs through the supply of intermediate goods and services.

Geographically speaking, US states in the northeast, mid-Atlantic, upper mid-west, and west coast regions generally had the highest concentrations of workers in IP-intensive industries.

This report also said that workers in IP-intensive industries were more likely to earn higher wages than those in other industries.

Those with the highest earnings mainly worked in copyright-intensive sectors, followed by utility patent-intensive industries, design patent-intensive industries, and industries that focused on trademarks.

The report, called IP and the US economy: third edition, follows two previous reports that were published in 2012 and 2016.

Provisional TRIPS waiver agreed but no consensus yet

The head of the World Trade Organization welcomed news of a provisional compromise on an intellectual property waiver for COVID vaccines this week but warned that the necessary consensus had not yet been reached among WTO members.

The US, the EU, India, and South Africa agreed a provisional deal on Tuesday, March 15, to back a limited waiver of patent rights in developing countries.

The waiver would allow local manufacturers in those countries to produce their own versions of COVID vaccines without authorisation from the patent owners.

There are significant limitations in the proposed waiver, such as the stipulation that it should only apply to countries accounting for less than 10% of global COVID vaccine exports, excluding Brazil and China.

The compromise represents a major breakthrough in negotiations that have stalled for more than a year, with several major jurisdictions, including the EU, reluctant to dilute strong patent rights on vaccines.

The deal will still need to be approved by the WTO’s 164 member states, however.

“We are not there yet. We have more work to do to ensure that we have the support of the entire WTO membership,” said director general Ngozi Okonjo-Iweala.

News of the deal has been met with scepticism from pharmaceutical patent owners opposed to a waiver and access to medicine campaigners, who believe it doesn’t go far enough.

The International Federation of Pharmaceutical Manufacturers & Associations said on Wednesday that the proposed deal was “unnecessary and irrelevant” and should be shelved.

Waiver advocates including Médecins Sans Frontières criticised the deal for not covering treatments or diagnostic tools.

Apple suffers another SEP defeat in UK Optis suit

Apple infringed two Optis Cellular patents essential to the long-term evolution of cellular standards, the England and Wales High Court ruled on Tuesday, March 15.

The decision is the latest victory for Optis in a wide-ranging trial with Apple, which at one stage threatened to prevent the iPhone maker from selling its smartphones in the UK.

The judgment marks the end of trial D, the final technical trial in the litigation. A trial to determine fair, reasonable, and non-discriminatory (FRAND) terms of a licence to Optis’ SEPs will be held in July.

Last September, the court warned Apple that it had to agree to pay whatever terms the court later deemed as FRAND or face a UK injunction. Apple subsequently committed to take a court-determined FRAND licence.

The latest trial concerned two European patents that Optis acquired from Panasonic.

Apple had challenged the validity of the patents on the grounds of obviousness, and also disputed their essentiality to the LTE standard.

The patents covered a functionality allowing mobile phones to transmit certain signals, a feature referred to in the judgment as a code multiplexing structure (CMS).

Apple phones sold in the UK have this functionality but do not use it. According to Apple, this meant the patents weren’t essential to the standard.

But Mr Justice Richard Meade concluded that the patents simply required a mobile phone to be able to operate with a CMS.

“It is on this basis, and only on this basis, that I have found infringement despite the fact that the relevant functionality is not ever used in the UK,” Meade wrote.

American Express files TMs for NFTs and metaverse in the US

Payment services company American Express has filed seven metaverse and NFT-related trademark applications before the USPTO, revealing its intention to exploit its assets in the Web3, it emerged this week.

The applications cover the company’s ‘American Express’, ‘Amex’, ‘Centurion’, ‘Membership Awards’ and ‘Shop Small’ marks and logos, and a wide range of goods and services under classes 9, 35, 36, 39, 42, and 45.

The filings suggest that American Express might be planning to provide banking facilities in the metaverse and other virtual worlds and create an online marketplace for NFT buyers and sellers.

With this move, American Express joined its peer J P Morgan, which began its metaverse journey in February by launching a virtual lounge in Decentraland‘s Metajuku mall.

Visa and Mastercard also ventured into the Web3 space by entering crypto partnerships earlier this year.

American Express first started dabbling in Web3 technologies in July 2021, when it launched a line of NFTs with musician SZA that only cardholders could purchase.

Federal Circuit judge Kathleen O’Malley retires

Kathleen O’Malley retired from the Court of Appeals for the Federal Circuit on Friday, March 11, after 28 years on the bench.

She spent 11 years at the Federal Circuit and worked as a district judge at the District Court for the Northern District of Ohio before that.

The Federal Circuit is the only federal appellate court that hears patent appeals, apart from the Supreme Court.

O’Malley has decided several notable IP cases, including Oracle v Google in 2014, in which, she reversed a lower court’s decision to hold that Oracle’s java application programming interface (API) was eligible for copyright protection.

She later ruled in 2018 that Google’s use of the API in the Android operating system did not fall under “fair use”, though that decision was overturned by the US Supreme Court in April.

Before her judicial career kickstarted, O’Malley was a partner at Porter, Wright, Morris & Arthur, specialising in complex corporate and commercial litigation, including IP.

The US Senate confirmed on February 9 that Judge Leonard Stark from the District Court for the District of Delaware would take O’Malley’s place on the Federal Circuit.

When president Joe Biden announced Stark’s appointment in November, O’Malley told Managing IP that the Federal Circuit would be in good hands with the Delaware judge.

“He will bring a wealth of knowledge regarding how trial records are developed in patent cases and the challenges district courts face in those complex and contentious matters,” she said.

O’Malley also told Managing IP that she planned to work on some international projects with WIPO after leaving the court and would like to serve on some boards.

“There’s a whole variety of things I might be interested in, but I’m not closing my mind to anything just yet.”

Tillis seeks unified IP office study (again)

Senator Thom Tillis sent a letter on Tuesday, March 15 asking the National Academy of Public Administration to conduct a study on whether Congress should create a unified intellectual property office.

He addressed the letter to NAPA CEO Teresa Gerton and asked the academy to partner with the USPTO and the US Copyright Office to conduct the study.

Tillis first wrote a letter to the Administrative Conference of the US (ACUS) in January asking it to conduct the same review, but the agency said it didn’t have the expertise or resources and suggested NAPA instead.

“I appreciate and respect ACUS’s candour and diligence when assessing the request and recommending a path forward for this evaluation,” Tillis wrote in his letter to NAPA.

The unified agency would combine the USPTO, the Copyright Office and possibly the White House Office of the US IP Enforcement Coordinator.

Tillis said the study should assess whether this office should be funded from fees or from taxpayer dollars.

He said it should also investigate how the unified agency would perform certain functions, such as registering trademarks, copyrights and patents, advising government officials on IP issues and representing the US in international IP-related negotiations.

He asked that Gerton confirm receipt of the letter and advise on whether NAPA could undertake this study no later than March 31 and complete it no later than March 31 2023.

Federal Circuit declines to rehear Biogen’s dispute with Mylan

The US Court of Appeals for the Federal Circuit denied a combined petition for panel rehearing and rehearing en banc in Biogen’s dispute with Mylan on Wednesday, March 16.

The three-judge panel at the Federal Circuit ruled in November 2021 in Mylan’s favour, setting out that Biogen’s written descriptions were not clear enough and that its patents were thus invalid for lack of written description under Section 112 in Title 35 of the US Code.

Judges Alan David Lourie, Kimberly Ann Moore and Pauline Newman dissented from the majority that voted not to rehear the case, with Lourie writing the dissent.

He said that by denying rehearing en banc of this case, the judges let a panel majority opinion stand that imported extraneous considerations into the written description analysis and blurred the boundaries between Section 112 and the other statutory requirements for patentability.

“In doing so, the court has contributed to the muddying of the written description requirement,” he said.

Biogen sued Mylan in 2017 in the District Court for the Northern District of West Virginia after Mylan sought ANDA approval to market a generic version of Biogen’s drug. Mylan sought a declaratory judgment that the patent was invalid and not infringed.

The district court held a bench trial in February 2020 and ruled that the patents were invalid for lack of written description.

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