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This week in IP: in-house on SPCs, YouTube opinion out, EU hints UPC alive
Managing IP rounds up the latest trademark, copyright and patent news, including some stories you might have missed

Bad news for second medical use
In-house counsel revealed this week that last Thursday’s decision
from the Court of Justice of the EU to refuse supplementary protection
certificates to second medical use indications provided welcome clarification
on the SPC regulation.
The Santen judgment came eight years after the Neurim case,
in which the EU’s highest court said Article 3d did not preclude innovators
from getting an SPC for a different application of a product that had already
been given a marketing authorisation.
However, the CJEU did not define what it meant by “different
application”, which led to fragmented interpretations of the ruling across the
EU.
The head of IP for biologics for a Switzerland-based pharma
company says that even though some innovators might not like the outcome of the
decision, they will still feel grateful that the CJEU has finally given some
clarity about how to interpret Article 3d.
“Now, in-house IP teams can go to their management and say
this is when we will lose exclusivity on this product. There will be some
innovator companies that will welcome the clarity even if they lose some exclusivity
terms.”
Read more here.
Other Managing IP stories from the week that you might want
to read include:
·
Opinion:
How to clean up a polluted IP world
·
Licensors:
video talks save time but can’t replace face to face
·
Qualcomm’s
Laurie Self on why diversity is crucial for innovation
·
India
needs central point of enforcement to fight counterfeits
·
WIPO’s
Gurry on accusations, COVID-19, and IP’s ‘watershed’ moment
·
PTAB:
new $400 appeal fast track is boon for important patents
YouTube shouldn’t be liable for infringing user content, says CJEU adviser
YouTube and similar platforms should not be liable for
user-uploaded infringing content because they do not communicate that content
to the public under the Infosoc and e-Commerce Directives, an adviser to the EU’s
highest court said yesterday, July 16.
In his opinion
– not available in English at the time of this article’s publication – in YouTube (C-682/18)
and Elsevier (C-683/18),
Advocate General Henrik Saugmandsgaard Øe found that while the Digital Single Market
Directive (2019/790)
introduced a new liability regime for illegally uploaded works, the directive was
not applicable to either case.
He pointed out that the directive does not come into
force until after its transposition period in 2021, and thus advised the Court
of Justice of the EU (CJEU) to base its decisions in these matters on the
regime currently in force.
In YouTube, music
producer Frank Peterson brought proceedings against the Google-owned content
platform in the German courts over the uploading of several phonograms
without his authorisation.
In the second case, publishing group Elsevier filed proceedings against Cyando in the German courts following the uploading of various works. Germany’s Federal Court of Justice referred both matters to the CJEU.
The CJEU usually rules on matters within three to five months
after an AG issues an opinion.
EU Commission says Germany can ratify UPCA despite Brexit
The European Commission would welcome Germany’s swift
ratification of the Unified Patent Court Agreement despite Brexit, commissioner
for the internal market Thierry Breton wrote on Wednesday, July 15.
In a letter
to MEP Patrick Breyer, who is from the German Pirate Party and asked in May whether
Germany could ratify the UPCA now that the UK has left the EU, Breton said that
Brexit does not affect the UPC’s ratification process.
The commissioner reasoned that the UK ratified the UPCA when
it was still an EU member state, and that its departure from the bloc simply
meant that it would not be able to participate in the UPC after the end of the
Brexit transition period.
“The unitary patent will be an effective tool for businesses
to protect their inventions on the European market at a competitive price, and
the Unified Patent Court will offer the possibility for these businesses to
enforce their patents at a European Union level, thereby enhancing legal
certainty and reducing costs,” Breton wrote.
“It will further boost innovation in Europe, which will be
key for the economic recovery following the COVID pandemic.”
The UK confirmed
in February that it would not seek to participate in the UPC, noting that
membership was inconsistent with its aims to become an independent and
self-governing nation.
In June, the German Federal Ministry of Justice called
for comments on a draft of its UPCA Approval Act, three months after the
Federal Constitutional Court ruled that Germany’s pre-ratification of the
agreement was void because it did not have a two-thirds majority in the Bundestag.
Washington Redskins scraps name, but could face uphill battle for new mark
The Washington Redskins announced on Monday, July 13, that it would change
its team name after mounting pressure from advertisers and sponsors, but could
face an uphill battle from trademark squatters as it looks to alter its brand
identity.
The decision came after the death of African-American
man George Floyd and the subsequent growth of the Black Lives Matter movement,
which have already compelled some brands, including Aunt Jemima, to change
their names.
In a press release, the NFL franchise said that owner Dan
Snyder and team coach Ron Rivera were working closely to develop a new name and
design approach that would enhance the standing of its franchise and inspire sponsors, fans and the community for the next 100 years.
The franchise has yet to reveal what it plans to change its
name to, but will undoubtedly be hindered by the fact that squatters have registered
so many viable nicknames for the team, including the 'Washington Braves' and 'Washington War Hogs'.
However, one particularly active filer and Redskins fan, Martin
McCaulay, who holds marks for the 'Washington Monuments', 'Washington Redtails', 'Washington Veterans', 'Washington Red Wolves' and 'Washington Warriors', claims to
have offered his registrations to the team for free.
He tweeted on Tuesday that he was embarrassed if he had done anything to slow down the team’s efforts to change its name, and that he was now holding on to the marks to prevent other squatters from leveraging them.
EBoA hears questions on computer-simulated inventions
In a rare hearing that was live-streamed to the public for
the first time in the EPO’s history, the Enlarged Board of Appeal heard three referred
questions in case G1/19 on the patentability of computer-simulated
inventions on Wednesday, July 15.
During the proceedings, the patent applicant argued that a
requirement of a direct link with physical reality (proposed by the referring
board) should be dropped or replaced by a different test and the requirement for a technical purpose.
The applicant also set out that even if there was no
difference between a computer simulation and a mathematical method, that fact
shouldn’t be a problem.
The hearing drew in a large crowd of virtual spectators who
were keen to assess how the EBoA might rule in this matter.
Simulations are now routinely used in all areas of
technology, from designing drugs and vaccines to engineering in all areas.
In-house counsel have argued in the past that severely limiting or ruling out
patentability for these inventions would have a damaging effect on European
industry.
The EBoA will probably deliberate the matter for several
months before issuing a decision.
Hirshfeld appointed for second term as USPTO patents commissioner
On Monday, July 13, the USPTO announced that secretary of commerce Wilbur
Ross had reappointed commissioner for patents Drew Hirshfeld for a second term.
His first term was due to expire in July.
Hirshfeld joined the USPTO in 1994 as a patent examiner, was
promoted to supervisory patent examiner in 2001, and became group director in the technology centre 2100 (computer architecture software and information
security) in 2008.
He has a mechanical engineering degree from the University
of Vermont, and a JD from Western New England College School of Law.
Ross said: “Commissioner Hirshfeld has made great contributions toward the mission of the patents organisation, and I am confident he will continue to do so throughout his second term.”
Hirshfeld’s second term will last for five years.
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