Generics wary of UK patent litigation despite better odds
UK courts’ stricter approach to preliminary patent injunctions is significant but the jury is out on whether more generics will launch at-risk, say in-house pharma counsel.
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Other Managing IP stories published this week include:
A year after IPAB shutdown, IP owners struggle with appeals
UPC software is ‘interactive and complex’, say counsel
China’s low fines for fake evidence stifle TM challengers
EUIPO executive director interview: make office ‘one-stop shop’
How Congress, the USPTO and firms can fix 101 woes: in-house
EUIPO conference: Be creative in modern world, brands told
Ethics rules need tweaks to help firms get clients and talent
Thales can’t block Philips from ITC, rules Fed Circuit
Thales couldn’t prevent Philips from seeking an exclusion order at the International Trade Commission, the Court of Appeals for the Federal Circuit ruled on Wednesday, July 13.
The appellate forum decided that the District Court for the District of Delaware hadn’t erred in ruling that Thales’s evidence of harm was conclusory and that it hadn’t showed the irreparable harm required to bar an ITC action. It affirmed the decision.
Thales had argued at the District of Delaware that a successful ITC action would cause it irreparable harm, and moved to obtain a preliminary injunction barring Philips from pursuing relief at the commission.
But the Federal Circuit said this type of speculative harm didn’t justify the rare and extraordinary relief of a preliminary injunction.
“Evidence of speculative harms, such as customers merely expressing concern that a potential future ITC exclusion order could affect Thales’s ability to deliver products down the road, is insufficient to show a likelihood of irreparable harm,” wrote chief judge Kimberly Moore.
The circuit ordered Thales to bear the costs of the case.
The action began after Thales and Philips, which both design and make telecoms equipment, couldn’t agree on a fair, reasonable, and non-discriminatory (FRAND) licence for Philips’s standard essential patents.
Philips sued Thales in the District of Delaware and at the ITC. In response, Thales filed a breach of contract counterclaim and declaratory counterclaim for a FRAND rate determination, along with its ITC injunction.
The ITC decided last week that the patents asserted by Philips were unenforceable and not infringed by Thales.
UKIPO appoints interim head amid organisational shakeup
UKIPO international director Adam Williams will step up as interim CEO when Tim Moss departs the office in September, it was announced on Wednesday, July 13.
Williams joined the UKIPO in 2009 as head of international coordination in the copyright and enforcement directorate.
He subsequently took the job of deputy director of international policy in 2014 before moving onto his current post in 2017.
The appointment will be effective from September 1 when Moss leaves to become chief operating officer and director general of the devolved Welsh government.
“I’m delighted to have been appointed interim CEO,” said Williams.
“Together with my colleagues on the executive board, we are looking forward to providing continuity of leadership to ensure we continue as a great place to work for our people and ensure excellent delivery for our customers,” he added.
The announcement came alongside confirmation of a new executive board, following a reorganisation of UKIPO senior management.
Outgoing CEO Moss said he had full confidence in the new leadership.
“It is testament to the strong leadership across the IPO that the organisation has clear succession planning in place, and we can seamlessly move from one state to another,” Moss said.
Canon’s European IP chief becomes IP Federation president
The IP Federation announced on Wednesday, July 13, that Canon’s European intellectual property chief Matthew Hitching has been elected as its new president.
Hitching’s appointment was effective from July 8.
The UK chartered and European patent attorney boasts 30-years’ experience in private practice and corporate roles.
Hitching worked at Haseltine Lake in London for the first part of his career. The firm became Haseltine Lake Kempner in 2019.
Hitching joined Canon in 2007 and has represented the Japan-based company at the IP Federation since 2018.
Since joining the camera company, the new president has been involved in oppositions, appeals, and patent litigation throughout Europe and the US.
His IP expertise includes brand management, anti-counterfeiting activities and standardisation and contractual issues.
Founded in 1920, the IP Federation is a UK-based IP trade association. Hitching will be supported by immediate past president Sonia Cooper, assistant general counsel at Microsoft.
Danny Keenan, lead patent counsel in the foods and refreshment division at Unilever, was elected vice president.
Avanci hikes licensing fee for 4G programme
Avanci will increase the licensing fee for its 4G, 3G, and 2G automotive programme to $20 per vehicle from September 1, the company announced on Tuesday, July 12.
The hike from $15 per vehicle will only affect new licensees who sign up to the platform after that date. Existing users and others who sign by August 31 will continue to pay the $15 rate.
An Avanci spokesperson said the rise reflected the increased success and size of the programme.
“Coverage of the Avanci licence is now far broader than when launched,” he said. “We have been more successful in attracting licensors than many would have imagined. When BMW signed on as our first licensee, we had 11 licensors. Today, we have 49.”
Avanci licenses tens of thousands of 4G, 3G, and 2G standard essential patents to at least 42 automakers.
The company was sued over its licensing model in the US by German automotive company Continental in 2017. The car firm’s arguments were thrown out by the District Court for the Northern District of Texas in 2020, and then by the Court of Appeals for the Fifth Circuit in 2022.
Pfizer and Moderna vaccines ‘violate new patent’
Alnylam Pharmaceuticals filed two new lawsuits before the District Court for the District of Delaware on Tuesday, July 12, alleging that Pfizer and Moderna’s COVID vaccines infringed its patent on lipid nanoparticle technology for delivering RNA-based therapeutics or vaccines.
The Massachusetts-based pharma company relied on a patent granted by the USPTO on the same day it filed the infringement suits.
Alnylam claimed in its new lawsuits that the specific class of LNP covered under its patent was essential to the efficacy and safety of Moderna and Pfizer’s COVID vaccines.
“The Alnylam LNP Technology is foundational to the success of the recently-developed messenger RNA (“mRNA”) based COVID vaccines,” the company claimed.
The firm asked the Delaware court to award damages and royalties from both vaccine makers.
Alnylam sued Pfizer and Moderna in March for infringing another LNP patent.
Pfizer refuted those claims in May and responded that its vaccine was outside the scope of Alnylam’s invention.
Moderna, however, argued that it was immune from the claims because it provided the shots for the US government's national vaccination programme.
UKIPO plots further designs policy review
The UK government will consider joining the WIPO digital access service for designs and weigh the impact of any new criminal sanctions for infringement of unregistered rights, the UKIPO confirmed this week.
The UKIPO made the commitments in its response to a call for views on the future of the UK designs system.
In a summary of responses, the government said it needed more evidence before committing to a shift in policy on key issues such as pre-registration search and examination for designs.
Stakeholder responses included mixed views on whether the UK should impose criminal sanctions for intentional infringement of unregistered designs, as it does for registered rights.
The government will seek further evidence on these issues in a future consultation before changing policy, the UKIPO said.
Matthew Ridley, chair of the Chartered Institute of Patent Attorneys’ designs and copyright committee, welcomed plans for a continued review of policy.
“Further consultation will provide further opportunity to identify improvements to the UK design framework – particularly in the areas of simplifying the unregistered design and copyright systems, considering the searching and examination of registered designs and implementing a harmonised deferment provision under UK law,” Ridley said.
The UKIPO began the call for views in January 2022. It received 57 responses in addition to 288 responses to a survey aimed at designers with a lower level of IP knowledge.
CEO Tim Moss said the review of designs policy would help unleash the potential of the UK’s creative and innovative industries.
“In a competitive global marketplace, great design helps UK products stand out, demonstrate quality and reach new customers all over the world,” he said.
The UKIPO say when it planned to make a decision.
USPTO requests official form for patent term adjustment claims
The USPTO published a notice of proposed rules to standardise patent term adjustment statements this week, in which it mandated use of an official office form.
The proposal, published on Tuesday, July 12, set out that PTA statements should be submitted on an official PTO/SB/133 form.
This move, according to the office, was intended to streamline prosecution by more accurately capturing and accounting for PTAs. The USPTO said it hoped to minimise back-and-forth between the office and applicants, as well as eliminate the need for a manual review of PTA statements.
PTAs enable applicants to extend the lifeline of their patents in cases of prosecution delay attributable to the USPTO.
The USPTO’s new proposed rules said PTA applicants must demonstrate that they have engaged in reasonable efforts to conclude prosecution or examination of applications.
According to the office, a PTA may be reduced if an applicant fails to file a petition to revive an application within two months after a notice of abandonment, or if there was is am omission in a reply to a notice of abandonment.
The USPTO said its algorithms will also be modified to automatically detect when Form PTO/SB/133 is submitted to ensure it contains the correct material information.
The USPTO said it was seeking feedback before implementing any rules. The period for comments closes on September 12.
UK and South Korean IP offices ink MoU at WIPO meeting
The UKIPO agreed a cooperation pact with the Korean Intellectual Property Office in Geneva this morning, July 15.
KIPO and the UKIPO will share expertise on use of emerging technologies, such as artificial intelligence and machine learning, in IP office administration.
The UKIPO also renewed existing memorandums of understanding (MoU) [CE(1] with the Singaporean and Vietnamese IP offices this week, and will do the same with Brazil on Monday, July 18, Managing IP can also reveal.
UKIPO CEO Tim Moss and KIPO commissioner Lee Insil, who are both in Geneva for the WIPO General Assemblies this week, met to sign a MoU today.
“The MoU on comprehensive cooperation [that] KIPO and the UKIPO have signed today well demonstrates our two offices' continued commitment to engaging with each other more actively even in wider areas that matter to both offices,” said Insil.
“I am confident that what we will do and achieve together under the MoU will greatly contribute to boosting each office's ongoing efforts to build a stronger IP landscape at home and abroad,” the KIPO commissioner added.
Moss, who will depart the UKIPO for the Welsh government in September, added: “It is crucial that we work effectively with our global partners in areas of common interest, and today’s MoU creates a positive framework to pool expertise and knowledge.”
