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This week in IP: SG asks SCOTUS to tackle patent eligibility, UK trademark oppositions double, and more

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China IP office top for tech patents; USPTO reopens to public; Moderna points to US govt again; EPO publishes four millionth patent

Brands must not forget IP during Russia exit plans: sources

While many global brands suspended operations in Russia in March in protest against the country’s invasion of Ukraine, more and more companies are now announcing permanent exit plans.

Click here to read the full article. 

Other Managing IP stories published this week include:

China IP office top for tech patents

China's intellectual property office has been the most popular IP office for tech-related patent publications, figures published on Wednesday, May 25, showed.

Between 2017 and 2022, tech patent filings at the CNIPA grew by 17% compared to the average global growth of 8%, according to data and analytics company GlobalData.

In total, Chinese filings accounted for 38% of all global tech patent applications during the same period.

According to the research, the CNIPA had the highest share of patents for nine of the top 10 tech-related themes including cybersecurity, AI, e-commerce, fintech, cloud and robotics. The US was the next highest performing country.

Samsung, Huawei, IBM, Qualcomm, and LG were the top five tech patent filers respectively over the five-year period.

Swati Verma, principal analyst at GlobalData in India, said cybersecurity and AI were the top two themes driving tech patent publications in the Asia-Pacific region.

The figures were published in GlobalData’s latest thematic report called ‘Technology Patents by Top Themes, 2017-2021 – Thematic Research’.

UK trademark oppositions double as ‘Brexit effect’ kicks in

The number of oppositions to UK trademark applications more than doubled in 2021, an indicator of the increased number of disputes caused by Brexit, showed figures published on Monday, May 23.

According to law firm Mathys & Squire, oppositions rose to 8,026 over the course of 2021, up from 3,584 in 2020.

The firm attributed the sharp rise to Brexit. The UK officially left the bloc’s EU-wide trademark system in January 2021.

From that date, any business wishing to protect their trademark in the UK as well as the EU had to make separate applications in both jurisdictions. This increase in applications also resulted in a surge in the number of oppositions filed, Mathys & Squire suggested.

The increase in trademark applications and disputes related to them is likely to continue in the near future, the firm added.

Harry Rowe, managing associate at Mathys & Squire in London, said: “The Brexit-fuelled dash to file trademarks in the UK has inevitably led to more disputes. Businesses need to ensure that they police the register to maintain the distinctiveness and value of their brands.

“Brexit has opened up a whole new battlefield for businesses with valuable brands to protect. There is now twice as much ground to cover for businesses seeking to protect their investment in their brands.”

SG asks SCOTUS to tackle patent eligibility

The US solicitor general has asked the Supreme Court to accept the petition for writ of certiorari in American Axle v Neapco, a move that stakeholders will hope leads to certainty on patent eligibility law, it was revealed this week.

SCOTUS requested the solicitor general’s input on American Axle, a case in which a drive shaft patent was invalidated on the basis of Section 101 under Title 35 of the US Code, in May 2021.

Responding a year later, Elizabeth Prelogar, the solicitor general, said inventions like the one at issue in American Axle had “historically been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied”.

She also stated that the Court of Appeals for the Federal Circuit had “erred in reading [SCOTUS’s] precedents to dictate a contrary conclusion”.

In 2019, the Federal Circuit invalidated American Axle’s patent on the basis that it merely described a desired result and was thus ineligible for patent protection under Section 101.

The following year, the case was considered for en banc review. But the 12 judges from the Federal Circuit were evenly divided on whether American Axle should be reheard by the whole court, illustrating the mess of the patent eligibility legal framework in the US.

Several prominent politicians and groups had asked SCOTUS to take up the case. In March 2021, Senator Thom Tillis, former circuit judge Paul Michel, and former USPTO director Dave Kappos filed an amicus brief arguing that the high court should hear American Axle to finally fix Section 101.

SCOTUS has yet to confirm whether it will accept American Axle for writ of cert based on Prelogar’s recommendation.

USPTO reopens to public

The USPTO announced on Thursday, May 26, that it had reopened all of its locations to employees and had resumed some in-person events and appointments for the public.

The premises reopened included the USPTO headquarters in Virginia and the satellite offices in Texas, Colorado, Michigan and California.

The office said it would continue to monitor local conditions for all locations as determined by the Centre for Disease Control, and noted that in areas considered to be low or medium for transmission levels, mask-wearing was optional.

It added that visitors should review its health questionnaire before entering facilities.

Moderna points to US govt again in vaccine patent infringement claim

Moderna requested that the US District Court for the District of Delaware dismiss the claims of COVID vaccine patent infringement filed against it on Friday, May 20, on the grounds that it supplied the shots to the US government in response to a national emergency.

It argued in its motion that the plaintiff, Alnylam Pharmaceuticals, could only sue the US government in the Court of Federal Claims.

Alnylym Pharmaceuticals filed an action for patent infringement against Moderna in March, claiming that Moderna’s mRNA-1273 COVID-19 vaccine infringed its US patent number 11,246,933.

To defend its stand, Moderna relied upon Section 1498 of federal statute 28 US Code, which says when an invention patented in the US is used or manufactured by or for the government without license, the owner’s remedy shall lie against the US.

An Alnylam spokesperson told Reuters that its technology was foundational to the vaccines, and it had a fiduciary duty to shareholders to seek fair compensation for its use.

In another suit instituted by Arbutus Biopharma Corp and Genevant Sciences GmbH against it, Moderna had argued last month that its vaccine contract with the US government shielded it from the infringement claims.

Alnylym Pharmaceuticals has also sued Pfizer for violating its patent rights, but the biotech company has yet to respond to the infringement claims.

EPO publishes four millionth patent

The EPO announced that it had published its four millionth patent on its official publication platform, the European Publication Server, on Wednesday, May 25.

L'Oréal, the applicant for EP 4,000,000, was one of the top 10 French filers in the EPO’s 2021 Patent Index, which provided a comprehensive overview of recent activity in the global patent system.

The cosmetic brand’s concerned patent application covered an image recognition method in which artificial intelligence tools were trained to accurately estimate skin tone in images irrespective of lighting conditions.

The invention is designed to help customers choose cosmetic products that match their skin tone.

EP 4,000,000 is just one of a growing number of applications involving fourth industrial revolution (4IR) technologies, a trend observed in several EPO Chief Economist Unit studies, the EPO noted in its press release.

“Over the past decade, 4IR innovation such as AI has also spread into domains that are not traditionally regarded as digital, for example, the cosmetics sector.”

The EPO discontinued the paper publication of European patent documents in 2005. Now, patent applications are only published online on the European Publication Server.

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