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

Volkan Hamamcıoğlu joins us for our ‘Five minutes with’ series to discuss meditation, tackling deadlines, and taking inspiration from Hamlet
A $110 million US verdict against Apple and an appellate order staying a $39 million trademark infringement finding against Amazon were also among the top talking points
Attorneys are watching how AI affects trademark registrations and whether a SCOTUS ruling from last year will have broader free speech implications
Patent lawyers explain why they will be keeping an eye on the implications of a pharma case and on changes at the USPTO in the second half of 2025
The insensitive reaction to a UK politician crying on TV proves we have a long way to go before we can say we are tackling workplace wellbeing
Adrian Percer says he was impressed by the firm’s work on billion-dollar cases as well as its culture
In our latest interview with women IP leaders, Catherine Bonner at Murgitroyd discusses technology, training, and teaching
Developments included an update in the VAR dispute between Ballinno and UEFA, the latest CMS updates, and a swathe of market moves
The LMG Life Sciences Americas Awards is thrilled to present the 2025 shortlist
A new order has brought the total security awarded to a Canadian tech company to $45 million, the highest-ever by an Indian court in an IP case
Gift this article