By far the biggest news of the past week was the UK voting to leave the EU in a nationwide referendum. This result will have far-reaching ramifications for EU IP rights, the Unitary Patent and UPC, UK practitioners and other IP laws. Our managing editor James Nurton has published a handy primer on the impact of Brexit on IP, which you can read here.
Also on the blog in the past week were:
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Clinton calls for patent reform
Hillary Clinton, the presumptive Democratic presidential nominee, has announced an initiative on technology and innovation that includes some IP measures.
Clinton noted the positive effect of the America Invents Act.
“But costly and abusive litigation remains, which is why Hillary supports additional targeted rule changes,” said in the announcement of the initiative. “She supports laws to curb forum shopping and ensure that patent litigants have a nexus to the venue in which they are suing; require that specific allegations be made in demand letters and pleadings; and increase transparency in ownership by making patent litigants disclose the real party in interest.”
The initiative announcement also said Clinton “believes it is essential that the PTO have the tools and resources it needs to act expeditiously on patent applications and ensure that only valid patents are issued”.
“That is why she supports legislation to allow the PTO to retain the fees it collects from patent applicants in a separate fund – ending the practice of fee diversion by Congress, and enabling the PTO to invest funds left over from its annual operations in new technologies, personnel, and training,” it said. “Hillary also believes we should set a standard of faster review of patent applications and clear out the backlog of patent applications.”
Clinton also said the copyright system is in need of administrative reform to maximize its benefits in the digital age.
“Hillary believes the federal government should modernize the copyright system by unlocking – and facilitating access to – orphan works that languished unutilized, benefiting neither their creators nor the public. She will also promote open-licensing arrangements for copyrighted material and data supported by federal grant funding, including in education, science, and other fields. She will seek to develop technological infrastructure to supports digitization, search, and repositories of such content, to facilitate its discoverability and use. And she will encourage stakeholders to work together on creative solutions that remove barriers to the seamless and efficient licensing of content in the US and abroad.”
Republican nominee Donald Trump has made some IP-related proposals of his own, such as reportedly promising to restore the Washington Redskins trade marks "on day one" of his presidency and warning China about the consequences of stealing US intellectual property.
Ma clarifies fakes comment
Jack Ma, chairman of Alibaba, last week published an op-ed in the Wall Street Journal attempting to clarify comments about counterfeit goods that received bad press.
Ma was quoted as saying in a speech in Hangzhou earlier this month: “The problem is that the fake products today, they make better quality, better prices than the real products, the real names.”
Ma wrote in the Wall Street Journal that his comments had been taken out of context, saying that what he said was that the business model of some established brands may be challenged by Chinese manufacturers facing declining exports and the internet giving consumers ever-increasing access to products without the need for complex and costly distribution channels.
“I want to let you know where I stand on this: Counterfeit goods are absolutely unacceptable, and brands and their intellectual property must be protected,” wrote Ma. “Alibaba is only interested in supporting those manufacturers who innovate and invest in their own brands. We have zero tolerance for those who rip off other people’s intellectual property.
“Failing to protect original designs, trademarks and technology is akin to thievery, and it is detrimental not only to innovation but also to the integrity of the marketplace. We do not and will never condone any act of stealing.”
Qualcomm sues Meizu
In other China-related news, Qualcomm has filed its first patent lawsuit there, suing Meizu in the Beijing Intellectual Property Court.
The complaint requests rulings that the terms of a patent license offered by Qualcomm to Meizu comply with China’s Anti-Monopoly Law, and Qualcomm’s fair, reasonable and non-discriminatory licensing obligations. The complaint also seeks a ruling that the offered patent license terms should form the basis for a patent license with Meizu for Qualcomm’s technologies patented in China for use in mobile devices, including those relating to 3G and 4G wireless communications standards.
Qualcomm said it “would have preferred to reach a resolution with Meizu without the need for litigation” but Meizu, “unfortunately, has been unwilling to negotiate in good faith and enter into a license agreement on the rectification plan terms while unfairly expanding its business through the use of Qualcomm’s innovations without compensating Qualcomm for the use of Qualcomm’s valuable technologies”.
More than 100 companies have accepted the rectification plan terms.
“Meizu is choosing to use these technologies without a licence, which is not only unlawful, but is unfair to other licensees that are acting in good faith and respectful of patent rights, and ultimately damaging to the mobile ecosystem and consumers,” said Don Rosenberg, executive vice-president and general counsel of Qualcomm Incorporated, in a statement.
Happy Birthday officially public domain
The court decision placing “Happy Birthday to You” into the public domain has been made official. Judge George King of the Central District of California gave final approval to the settlement in Good Morning to You Productions v Warner/Chappell Music.
The settlement includes the repayment of $14 million in royalties collected by Warner/Chappell and a court order placing the song in the public domain.
Donahue Fitzgerald partner Andrew MacKay, who worked on the case representing musician Rupa Marya, commented: “It was wrong for Warner/Chappell to collect royalties for a song they didn’t own, and I’m proud to have helped achieve this victory.”
The class action lawsuit sought to represent anyone who had paid to license the song. The four class plaintiffs were Good Morning to You Productions, Robert Siegel, Majar Productions and Marya. Marya had paid Warner/Chappell $455 to include the live rendition of “Happy Birthday to You” on an album.
Warner/Chappell alleged that their rights to the “Happy Birthday to You” song came from their 1988 acquisition of the Summy Company and the copyright would not expire until 2030.
In September 2015, Judge King granted partial summary judgment in favor of the plaintiffs, ruling that Warner/Chappell did not own the copyright to the lyrics of the song. The defendants agreed to settle the matter thereafter.
Federal Circuit saves 30,000 patents
The Federal Circuit has backed the USPTO’s interpretation of the deadline for filing a continuation application under Section 120, reports the PatentlyO blog.
The statutory language states that a continuation application must be filed “before the patenting or abandonment of or termination of proceedings”. The USPTO has long stated that this means continuation may be filed on the issue date, despite patents being thought to issue at 12.01am on their appointed day of issue.
This issue was appealed in Immersion v HTC. In a decision written by Judge Taranto and supported by Judges Prost and Linn, the Federal Circuit said: “In short, the repeated, consistent pre-1952 and post-1952 judicial and agency interpretations, in this area of evident public reliance, provide a powerful reason to read section 120 to preserve, not upset, the established position. And the conclusion is reinforced by the fact that Congress has done nothing to disapprove of this clearly articulated position despite having amended section 120 several times since its first enactment in 1952.”
The case was closely-watched because 30,000 patents were potentially in peril, according to analysis published by Faegre Baker Daniels last month.
“Procrastinating patent prosecution attorneys took notice when Delaware District Court Judge Richard G Andrews threw out the longstanding accepted practice that a continuation application may be filed on the issue date of a priority application,” the law firm noted. “The summary judgment ruling invalidated three Immersion Corp. touchscreen patents asserted against smartphone manufacturer HTC Corp on the basis of an invalid chain of priority. Immersion Corp v HTC Corp is now on appeal with the Federal Circuit and has the potential to invalidate thousands more patents.”
Converse hopes other shoe will drop in ITC case
The US International Trade Commission has ruled that only the diamond-patterned outsole of Converse’s iconic Chuck Taylor sneaker is entitled to an exclusion order, reports the New York Times.
Nike, which owns Converse, had been seeking exclusion orders for other parts of the sneaker such as the rubber-toe band, toe cap and stripe.
The New York Times quotes Brian Fogarty, senior director, global intellectual property litigation at Nike, as saying: “While we do not agree with all of the ITC’s findings, we feel confident our rights will be vindicated on appeal. This is but one step in a long process.”
In October 2014, Converse sued 31 companies in 22 district court cases and filed a complaint with the ITC.
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