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This week in IP: Podcasts, Ericsson, Banksy and more

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

MIP podcasts shed light on fakes and FRAND

In-house counsel discussed some of the hottest topics in the trademark and patent arenas on Managing IP podcasts.

In our first podcast of the week, IP counsel at watch companies Cluse and Daniel Wellington, and a former counsel at Italian fashion brand Bulgari, discussed some of the challenges watch-owners face when taking down counterfeiters and best practices for online brand protection.

In our second, Richard Vary, partner at Bird & Bird, Clemens Heusch, global head of dispute resolution at Nokia, and Matthias Schneider, chief licensing officer at Audi, discussed standard essential patent licensing and fair, reasonable and non-discriminatory terms.

Other Managing IP stories we published this week include:

·         Pharma fears corruption of ‘hugely successful’ Bayh-Dole Act

·         APIs should take centre stage in Google v Oracle, lawyers say

·         Why counsel should copy competitors when optimising patents

·         Trust is a must: managing UK virtual exams         

·         GI protection ‘subsidiary concern’ in EU trade talks

·         Summer of FRAND love: a roundup of SEP cases

·         Opinion: It won’t be courts that drive virtual litigation

CBM review programme ends

Wednesday, September 16 marked the end of the covered business method patent review programme, which was introduced by the America Invents Act in the US.

The AIA says a CBM patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service”. The term does not include patents for technological inventions.

The programme was put in place to review CBM patents and allow petitioners to challenge patents on broader grounds than they could at inter partes review (IPR) trials.

Use of the programme has become less common in recent years. Statistics from the USPTO found that although 1,145 IPRs were filed in FY2020, just 11 CBM review petitions were filed in the same timeframe.

Senate holds hearing on DMCA

Witnesses testified on Section 1201 of the Digital Millennium Copyright Act in a US Senate hearing titled “Are Reforms to Section 1201 Needed and Warranted?” on Wednesday, September 16.

Section 1201 makes it illegal to circumvent technological measures that prevent unauthorised access to copyrighted works. The US Copyright Office runs a triennial rulemaking process to determine exemptions to this act.

The hearing consisted of two panels. Regan Smith, general counsel and associate register of copyrights at the Copyright Office, was the sole speaker at the first.

The second panel comprised six speakers: Vanessa Bailey, global director of intellectual property policy at Intel; Blake Reid, director at University of Colorado Law School; Matthew Williams, partner at Mitchell Silberberg & Knupp; Seth Greenstein, partner at Constantine Cannon; Morgan Reed, president at The App Association; and Aaron Lowe, senior vice president at the Auto Care Association.

Bailey at Intel said in her written testimony that Section 1201 helped spur the digital revolution and that the rulemaking process run by the Copyright Office accommodates fair uses and meets the needs of digital content marketplaces. Broad permanent exemptions to the act would undermine this flexibility, she wrote.

She added that anti-trafficking exemptions would increase opportunities for copyright infringement.

Reid at the University of Colorado Law School argued that the statute limits good-faith, non-infringing activity by ordinary people and that the Copyright Office’s triennial review process is burdensome.

The next hearing, “Can Private Agreements and Existing Technology Provide a Solution to Online Piracy?”, is scheduled to take place on October 6.

China Supreme Court issues e-commerce guidance

The Supreme People's Court of China released a guiding opinion for IP civil cases that involve e-commerce platforms on Saturday, September 12.

In doing so, the court referenced China’s E-Commerce Law, which went into effect on January 1 2019.

The guidelines say that e-commerce sites can create in-platform notification measures for IP rights holders to alert them of infringements. These measures can be based on the types of IP rights and characteristics of goods and services, but they cannot set unreasonable obstacles for IP owners.

According to China’s E-Commerce Law, those who cause loss to operators of a platform through a maliciously false infringement notice will be held liable for twice the damages.

The guidelines say that the court can consider a range of factors when it determines whether a user had malicious intent. Users who forge or alter proof of rights, submit error notices repeatedly or know that the status of their rights is unstable could be found to have malicious intent.

Ericsson en banc petition denied

The US Court of Appeals for the Federal Circuit denied Ericsson's petition for an en banc rehearing on Tuesday, September 15, in Ericsson v TCL Communication Technology.

In April, the Federal Circuit reversed a decision from the US District Court for the Eastern District of Texas that found TCL liable for patent infringement, and awarded Ericsson $110 million.

In the April ruling, the Federal Circuit said the patent being litigated contained ineligible subject matter because it was directed to an abstract idea.

Judge Pauline Newman dissented. She wrote: “The majority ignores the pretrial findings of the district court, rejects the estopped findings of the Patent Trial and Appeal Board in the related IPR proceeding, and discards the guidance of precedent, to hold the subject matter of claims 1 and 5 ineligible for patenting.”

Banksy trademark cancelled on bad faith

Banksy, the anonymous UK street artist who famously asserted that “copyright is for losers,” lost a trademark registration for his ‘Flower Thrower’ work at the EUIPO because it was a bad-faith registration.

Pest Control Office Limited, Banksy’s authentication body, had registered the mark.

Full Colour Black, the applicant that opposed Banksy’s mark, claimed his trademark was an attempt to monopolise the image on an indefinite basis.

Banksy opened up a storefront called Gross Domestic Product, a shop window that displayed items but did not sell them in person, to strengthen his claim to his mark. Some of the objects were available for sale online.

In its ruling, the EUIPO said: “It is clear that when the proprietor filed the EUTM he did not have any intention of using the sign to commercialise goods or provide services. The use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trademark law and thus there was no intention to genuinely use the sign as a trademark.”

Banksy was one of Managing IP’s 50 most influential people in IP in 2019.

Bank of America breaks its patent record

Bank of America announced on Monday, September 14, that it broke its own record for the most patents filed and granted in the first six months of any year in its history.

The company was granted 184 patents in H1 2020, a 20% increase from last year, and applied for 415 patent in that time period.

The patent applications involve bill payments, money transfer and augmented reality for check verification.

Bank of America also noted that 26% of the inventors were women, a figure that was double the global average of 13%.

“Our work is driven by the wants and needs of our clients. We work across lines of business to enable our clients, with the best, most comprehensive, high-tech digital capabilities, for a range of access that reflects the many ways clients choose to do business with us,” said second-leading patent holder at Bank of America, Katherine Dintenfass, in a statement.

Managing IP spoke to Keith Agisim, chief IP counsel at Bank of America, in April about his strategies for prosecution and portfolio management, and IP changes he’s seen in the financial services industry.

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