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