This week in IP – Plants non-patentable (again), SCOTUS swats preclusion rule, National Geographic victorious

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

This week in IP – Plants non-patentable (again), SCOTUS swats preclusion rule, National Geographic victorious

adobestock-240034481.jpg

Managing IP rounds up the latest trademark, copyright and patent news, including some stories you might have missed

EPO rules plants not patentable in Pepper (again)

The EPO’s Enlarged Board of Appeal declared yesterday that plants and animals exclusively obtained by essentially biological processes are not patentable, contrary to a 2018 decision from the office’s Technical Board of Appeal that such products were eligible for patent protection.

The decision was the latest in a series of attempts over 10 years to clarify whether patent protection can be obtained for plants in Europe, and falls in line with the EPO’s guidelines from 2017 that excluded plants from patent protection.

In its opinion on case G 3/19 (Pepper), the EBoA held that under Article 53b of the European Patent Convention, the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by an essentially biological process.

To ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the EBoA also ruled that the new interpretation of Article 53b would not have retroactive effect on European patents containing such claims that were granted before July 1 2017.

The interpretation will also not be extended to pending patent applications seeking protection for such claims that were filed before that date.

“I’m a bit surprised about this outcome from a purely legal point of view, but happy about it because this has been our business’s political position,” says Franck Coutand, former patent manager and current head of quality and safety at Limagrain, a plant breeder, in France.

Lucky for some in SCOTUS ruling

In a ruling on a nearly two-decade-old trademark dispute yesterday, the US Supreme Court decided that Marcel Fashion Groups could not preclude Lucky Brand Dungarees from raising new defences under federal preclusion principles.

However, the opinion, written by Justice Sonia Sotomayor, left open the possibility that it might be suitable under certain circumstances for parties to apply claim preclusion to their defences.

“Here, however, this court need not determine when (if ever) applying claim preclusion to defences may be appropriate, because a necessary predicate – identity of claims – is lacking,” wrote Sotomayor.

Christian Liedtke, partner at Acuminis in California, says that based on the court’s unanimous opinion, it seems as though SCOTUS is at least sympathetic in principle to the idea of applying the concept of claim preclusion to defences.

National Geographic survives Wild America encounter

The US District Court for the District of Colorado last Friday dismissed, with prejudice, claims brought against National Geographic for infringing the 'Wild America' trademark.

Marty Stouffer, a producer of the wildlife and nature documentary television programme Wild America, alleged that several National Geographic programmes infringed his trademark, the name of his long-running PBS series in the 1980s and early 90s. The titles included Untamed Americas, America the Wild and Surviving Wild America. 

Stouffer had demanded tens of millions of dollars in damages. But the Colorado court found that the objective facts of the case excused further inquiry into National Geographic’s subjective motives, and that those facts established that National Geographic’s titles for the series deserved first amendment protection.

HBO counsel of 20 years goes to Spotify

Spotify has appointed WarnerMedia veteran Eve Konstan as its general counsel, replacing Horacio Gutierrez, who was promoted to head of global affairs and chief legal officer at the music streaming company.

Konstan, who most recently worked as executive vice president and general counsel at WarnerMedia Entertainment, had a career spanning 20 years at HBO.

She started at the cable network not long after the premiere of The Sopranos and was promoted to oversee legal at the WarnerMedia Entertainment portfolio just before the finale of Game of Thrones.

Konstan will provide support on legal issues at Spotify including intellectual property, litigation and risk management. She will be based in New York.

more from across site and SHARED ros bottom lb

More from across our site

Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
The England and Wales High Court has granted Kirkland & Ellis client Samsung interim declaratory relief in its ongoing FRAND dispute with ZTE
A UDRP decision that found in favour of a small business in a domain name dispute could encourage more businesses to take a stand in ‘David v Goliath’ cases
In Iconix v Dream Pairs, the Supreme Court said the Court of Appeal was wrong to interfere with an earlier ruling, prompting questions about the appeal court’s remit
Chris Moore at HGF reflects on the ‘spirit of collegiality’ that led to an important ruling in G1/24, a case concerning how European patent claims should be interpreted
The court ruled against the owner of the ‘Umbro’ mark, despite noting that post-sale confusion can be a legitimate ground for infringement
Shem Otanga discusses the importance of curiosity and passion, and why he would have loved to have been a professional recording artist
Gift this article