This week in IP: SCOTUS upholds Amazon win, hydrogen tech patents on rise, and more
McDonald’s sells Russia business but retains TMs; EPO announces inventor finalists; Apple fails in Optis patent trial; white men still highest earners; Musk hammers copyright law; UKIPO makes net zero commitment
UPC special focus: Invalidity risk a bitter pill for pharma to swallow
After almost a decade, Europe’s Unified Patent Court is nearly here, and pharma counsel are getting nervous.
The UPC promises cost savings, efficiency, and unprecedented enforcement options, including the possibility of Europe-wide injunctions.
But it also raises the threat of having a patent invalidated across almost the entire continent.
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Other Managing IP stories published this week include:
McDonald’s to sell business but retain TM rights in Russia
American fast-food chain McDonald’s has decided to shut its outlets and leave Russia permanently after 32 years of business in the country, it emerged this week.
Its decision was driven by a “humanitarian crisis” and “unpredictable operating environment” that followed Russia’s invasion of Ukraine.
Before announcing its exit plans, McDonald’s had temporarily closed its 850 outlets in March. The company is now looking for a local buyer to purchase its retail units.
Simultaneously, the fast-food business will start the process of “de-arching” its outlets by removing its iconic golden arches branding.
The company intends to retain the trademark rights to its name and logo in Russia. It will also not allow any buyer to use its menu.
The Russian and Ukrainian business of McDonald’s contributed 9% to its annual revenue, approximately $2 billion.
“Some might argue that providing access to food and continuing to employ tens of thousands of ordinary citizens is surely the right thing to do,” said McDonald's CEO Chris Kempczinski to the company’s staff.
He added: “But it is impossible to ignore the humanitarian crisis caused by the war in Ukraine. And it is impossible to imagine the golden arches representing the same hope and promise that led us to enter the Russian market 32 years ago.”
The Russian government previously threatened foreign businesses exiting Russia and drafted a bill in March that allowed it to seize IP and other assets of some foreign companies planning to leave the country.
The proposed legislation, now being considered by Russia’s parliament (the State Duma), would allow an external administration to take control of and use IP belonging to the foreign company, as well as IP licensed to it.
EPO announces the finalists for the European Inventor Award 2022
The European Patent Office announced on Tuesday, May 17, that 13 inventors and teams in the fields of cancer treatment, energy, climate, green industry, medtech and manufacturing had been selected as the finalists for this year’s European Inventor Award.
The office will hold a virtual ceremony on June 21 to announce the winners.
Launched in 2006, the European Inventor Award celebrates and rewards innovative solutions to contemporary challenges.
This year, the EPO will confer awards in four categories – industry, research, non-EPO countries and SMEs. It will also give out a lifetime achievement award to a single laureate.
On top of that, the public can vote online until June 21 to decide which of the 13 finalists should receive ‘the Popular Prize’.
The 2022 finalists belong to 12 different European and non-European countries, including Belgium, Canada, China, Estonia, France, Germany, Indonesia, Israel, Portugal, Spain, Switzerland and the US.
“Our finalists represent diverse sectors of industry and fields of technology, underlining the depth of human ingenuity while providing solutions for challenges that impact us all,” said EPO president António Campinos.
“The European patent system provides a framework that encourages inventors to develop their ideas, enabling them to keep us healthy, our planet sustainable, and our society prosperous.”
An independent, international jury picked the finalists from a pool of hundreds of inventors nominated by the public, European national patent offices and EPO staff.
A complete list of finalists is available here.
Third time unlucky for Apple in Optis patent trial
Apple’s bid for a retrial in its US patent dispute with Optis was denied on Tuesday, May 17, meaning a $300 million damages verdict against it will stand.
According to a judgment from the US District Court for the Eastern District of Texas, Apple’s demands for either a new damages trial or a ruling wiping out an original damages award was denied.
The case dates back to 2019 when Texas-based Optis sued Apple, alleging that certain 4G products including iPhones, iPads, and Apple Watches infringed its patents. Optis’s patents are essential to the international LTE wireless standard.
In April last year, Optis was initially awarded $506 million damages after a jury trial found in its favour. However, District Judge Rodney Gilstrap threw out that verdict in a post-trial hearing because the jury had not heard evidence about Optis’s duty to offer licences to the patents on fair terms.
Gilstrap upheld the finding that Apple had infringed the patents but ordered a new trial on damages. A new jury awarded Optis $300 million.
In October last year, Apple asked Gilstrap to throw out the award and hold what would have been a third trial. However, its request was denied.
White men still the big earners, report claims
White men made up the vast majority of top earning lawyers in 2020, a study by the American Bar Association published on Wednesday, May 18, found.
The report assessed factors including hiring, leadership and compensation at 287 law firms. Among the top 10% of earners, it found, 71% were white men.
White women meanwhile made up 13% of those top earners while black lawyers made up less than 1%.
The ABA said it would make individual law firm data available to companies that signed up for the organisation’s Pledge For Change – a commitment to diversity and inclusion.
The ABA said its study aimed to bring law firms and clients together for “an honest discussion about the vital role of diversity” and ways to improve it.
SCOTUS upholds Amazon win
The US Supreme Court declined to review an Amazon patent litigation victory on Monday, May 16.
This rejection amounted to an upholding of a Court of Appeals for the Federal Circuit ruling from 2020 in PersonalWeb Technologies v Patreon, which set out that non-practising entity PersonalWeb Technologies couldn’t bring lawsuits against Amazon Web Services customers.
The court said this was the case because of the 1907 SCOTUS decision in Kessler v Eldred, which prohibited patent owners from suing manufacturers’ customers over the same products that they’d unsuccessfully sued the manufacturers over.
SCOTUS invited the acting solicitor general to file a brief in this case in October 2021. Elizabeth Barchas Prelogar, the solicitor general, did so in April 2022 and said further review was not warranted. She noted that the Federal Circuit erred in treating Kessler as controlling but said the error did not have practical importance.
“This case would also be an unsuitable vehicle in which to address the question presented, given the further proceedings that have occurred since the panel decision,” she said.
Hydrogen tech innovation on the rise, with China in pole position
Innovation in hydrogen cell tech that could help combat climate change is booming, a new WIPO report published Tuesday, May 17, has found.
China and Japan are leading the way in patent filings for the tech, which can help power electric vehicles among other things, according to WIPO’s ‘Patent Landscape Report: Hydrogen fuel cells in transportation’.
WIPO director general Daren Tang unveiled the study in Bratislava, Slovakia, on Tuesday at a hydrogen tech in transport conference jointly hosted by WIPO and the Slovakian government.
The technology works by converting hydrogen and oxygen into electricity to power cars, emitting water and heat.
The report studied patent filings in the hydrogen fuel cell sector from 2016 to 2020, finding an increase in applications of 23.4% over that period.
Chinese applicants accounted for 7,261 filings, or 69% of the total. Japan followed with 1,186 filings (11.3%), while German applicants made 646 (6.2%).
South Korea and the US rounded out the top five, with 583 (5.6%) and 403 (3.8%) filings respectively.
“Climate change is a serious global challenge that requires innovation from everywhere for our common benefit – and new clean technologies like hydrogen fuel cells will play a critical role in creating a healthier planet for future generations,” Tang said.
“Climate change demands that we increase innovation-centered policies, incentives and investment to ensure that hydrogen fuel cell and other clean technologies reach consumers quickly,” he added.
Musk hammers copyright law, citing anti-Disney bill
Elon Musk, founder of Tesla, criticised the state of copyright law in response to a controversial copyright bill that would set copyright terms at 28 years on Thursday, May 12.
In a tweet, Musk indicated that he might support the proposed legislation. He wrote that “current copyright law in general goes absurdly far beyond protecting the original creator” in response to a story about the bill on news website Slashdot.
He added: “Overzealous DMCA is a plague on humanity.”
The bill in question, the Copyright Clause Restoration Act, has little to do with the Digital Millennium Copyright Act, other than the fact that they both concern copyright.
The act was introduced by Republican senator Josh Hawley with the senator saying it would “strip woke corporations like Disney of special copyright protections”.
Under the bill, copyright terms would last for 28 years and copyright owners would be allowed to extend their terms for a further 28 years. This change would be retroactive for entities with a market capitalisation of over $150 billion, such as Disney.
The DMCA, however, doesn’t concern the length of copyright terms. Rather, the law protects online service providers from copyright infringement litigation so long as they have no knowledge of the infringement and they establish notice and takedown procedures for infringing content.
The law also makes it illegal to circumvent technological measures that prevent unauthorised access to copyrighted works.
This law has been controversial among copyright owners and online platforms. The former often argue that the legislation does not do enough to hold websites accountable for keeping infringing content off their platforms.
Meanwhile others argue that false notice and takedown claims are too common.
UKIPO makes net zero commitment
A new UKIPO strategy published last Thursday, May 12, pledged to make the office a carbon net zero organisation, while also helping the UK achieve its own climate targets.
The strategy document states that by 2026, the UKIPO will have delivered environmental improvements and have agreed a plan for becoming a net zero organisation.
And by March 2023, the UKIPO will have agreed a plan to promote the development and adoption of green technologies, the office said.
Elsewhere in the wide-ranging priorities, published last Thursday, May 12, the UKIPO promised to produce new legislative proposals on designs by the end of March 2023.
The UK has been reviewing its designs system since leaving the EU, and the office has already issued a call for views from stakeholders.
Other commitments for the next year include a decision on any new policies to deal with unfairness in the music streaming industry.
A UK parliamentary committee found last July that new legislation was needed to ensure artists receive a fair share of streaming income.