This week in IP: Russia restricts IP payments to ‘unfriendly’ states, UKIPO chief to leave
Ford joins Avanci patent licensing programme; Philip Morris International fails to secure stay in patent trial; Manga intrigue fuels piracy rise
Russian plan to classify NFTs as IP is flawed, say lawyers
A bill introduced before the lower house of Russia’s parliament that proposes to recognise non-fungible tokens in the country’s intellectual property statute has left lawyers wondering about the potential implications.
Despite the growing recognition of rights vesting in NFTs, sources say that bringing them under the purview of IP rights might be overreaching for several reasons.
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Other Managing IP stories published this week include:
IP lawyers hope updated solicitor qualification could unite profession
Opinion: UPC has missed chance to redefine D&I in patent law
Managing IP Summit: Lumping NPEs together is bad idea
Managing IP Summit: AT&T IP chief stresses need for global collaboration
Communicate and delegate: how IP in-house update their GCs
Russia restricts IP payments to ‘unfriendly’ IP owners
Russia has adopted a new decree that restricts payments to some foreign IP owners who had previously agreed to licensing terms in the country.
Decree No. 322, approved on Friday, May 27, stipulated that payments outlined under IP agreements must only be paid via an account opened with a Russian bank. All payments must be in Russian Rubles.
Russian licensees do not need to pay any royalties until the rights owner agrees to the new method. In addition, IP owners are not allowed to transfer funds outside Russia without government permission.
Those affected by the order include rights owners from countries that have imposed sanctions on Russia (known as “unfriendly states”) and any rights owner who has publicly approved sanctions or criticised Russian forces or authorities.
It also targets rights owners who have published allegedly offensive information about Russian forces or authorities online.
The order also applies to IP owners who stopped or reduced supplies and production of goods and services to Russia, or who prohibited the use of their IP in the country “without economic justification”.
However, the order does not apply to agreements relating to the import or production of drugs, medical equipment, industrial and agricultural products, food, and provision of communication services.
UKIPO chief to leave role this year
The chief executive of the UKIPO is to leave after five years in the role, it was revealed on Wednesday, June 1.
Tim Moss has been appointed as the chief operating officer and director general at the Welsh government. He will take up that role on September 1, 2022.
Managing IP understands Moss intends to stay at the UKIPO until that time.
In an emailed statement, Moss said: “I have had an amazing time at the UKIPO, leading a brilliant team of people. Deciding to leave and take on this new challenge has been incredibly difficult for me, and I am immensely proud of what we have achieved together.
“This country has one of the best IP systems in the world, and I am grateful to our partners for their support in helping us keep it that way.”
Recruitment for Moss’s successor will start immediately, and plans are being put in place for leadership in the period between his departure and his successor starting should a replacement not be in place by September.
Moss previously told Managing IP that Brexit was the defining challenge of his tenure, with the UKIPO having to create two million new UK rights.
“The fact that it went so smoothly, even to the point that it happened in the background and people almost didn’t notice it, is testament to the fantastic work the team have done,” Moss said last November.
He was also CEO when the UK government ultimately decided to leave the unitary patent and concurrent Unified Patent Court.
Ford takes Avanci patent licence
Ford has become the latest company to reach an agreement with Avanci to licence its 4G, 3G and 2G standard essential patents, it was announced Tuesday, May 31.
This gives the car company access to patents owned by 49 patent owners, as well as those owned by any IP owners who decide to join the programme in the future.
The agreement means Ford is the fifth US-based auto maker to sign a licence with Avanci. General Motors also joined Avanci’s patent pool earlier this month.
“Avanci extends a warm welcome to Ford, one of the world’s leading automotive manufacturers,” said Kasim Alfalahi, founder and chief executive officer of Avanci.
“Ford is the fifth US-based automaker to join the growing list of companies who have adopted the industry solution offered by our independent marketplace.”
In the last few months, Volkswagen announced it had taken a 4G licence from Avanci, having previously only been licensed up to 3G.
Avanci licensors also ended a long-standing dispute with German car maker Daimler when it agreed to take a licence to the pool in December 2021.
UK court will hear BAT’s attack on PMI patent
The England and Wales High Court refused Philip Morris International’s request to stay proceedings in a patent validity trial against British American Tobacco on Friday, May 27.
The decision is the latest twist in PMI’s global patent dispute with BAT centring on tobacco-heating devices.
PMI told Mr Justice James Mellor that the proceedings should be halted pending the outcome of a parallel invalidity case between the two parties at the EPO.
But Mellor said the court should press ahead with BAT’s action, which seeks to revoke one of PMI’s tobacco-heating patents (EP 3266323). The trial will begin in March 2023.
Mellor said the litigation was causing significant commercial uncertainty for BAT, and the balance of justice favoured resolving this as quickly as possible.
In his judgment, Mellor wrote: “In my view the balance of justice comes down firmly in favour of eliminating, as soon as possible, the uncertainty created for BAT … and hence in favour of refusing the stay sought by PMI.”
A BAT spokesperson said: “BAT is pleased with the decision dismissing PMI’s application to stay UK revocation proceedings brought by BAT against PMI’s patent. BAT has consistently maintained that this patent is invalid.”
Manga intrigue fuels global piracy rise
Visits to piracy websites increased by almost 30% in the first quarter of 2022 compared to the same period last year, according to a report by a UK-based technology and anti-piracy company published on Wednesday, May 31.
The ‘Piracy by Industry’ dataset, compiled by London-based MUSO, measures demand for film, TV, music, software and publishing content across streaming, torrent, web download and stream-ripping sites.
The figures showed there were 52.5 billion visits to piracy websites in the first three months of 2022 – a 29.3% increase in 2021.
The biggest increases were directed to the film and publishing industries, which increased by 42.5% and 58.5% respectively.
According to MUSO, the spike within the publishing industry was driven by worldwide demand for Manga. Manga-based searches equated to 18.3% of all visits in 2022 compared to 12.4% in 2021.
In terms of jurisdiction, the US showed the strongest demand for piracy. Just under 11% (10.9%) of all traffic emanated from the US. Russia, India, China and France made up the rest of the top five.
A MUSO spokesperson said the figures will make for “alarming reading” for the entertainment industries.
The spokesperson added: “MUSO would anticipate this trend to continue especially in the current climate of subscription wars for subscription video on demand platforms combined with the economic squeeze and fast-growing global inflation.”