This week in IP: generics rebuke patentees, FTC seeks appeal, WIPO chief starts work

Generics weigh in on virtual EPO oppositions

The coronavirus has upended patent challenge proceedings everywhere, forcing courts and intellectual property offices to prioritise physical safety and rely heavily on video conferencing. The EPO is no exception, but generics drug companies say the office’s new rules are being abused.

The EPO Opposition Division, unlike the office’s Boards of Appeal (BoA), has stopped in-person proceedings until December 31, but allowed oral arguments to be made by video conference. Both parties have to consent to a video conference, however, and numerous patentees have refused.

Six generic drugs companies, including Insud Pharma, Accord, Fresenius Kabi, Zentiva and Gedeon Richter, tell Managing IP that this system has caused them problems because patentees often choose to delay, and often seemingly in an effort to stall the invalidation of their patents.

Several argue that patentees should be forced to attend to avoid delaying the release of cheaper drugs.

Read more here.

Other Managing IP stories we published this week include:

Why start-ups need to learn about IP

In-house panel: how to cultivate talent during challenging times

WIPO courts database a hit with judges and lawyers

Opinion: Fred Perry’s troubles reveal how vulnerable brands are

Inventorship win reinforces public-private collaborations in US

Chinese counsel concerned with top court’s precedents opinion

US music changes hailed but adjustments could be hard

Why Europe struggles with IP diversity

FTC asks Ninth Circuit for en banc rehearing

The US Federal Trade Commission filed a petition with the Court of Appeals for the Ninth Circuit on Friday, September 25, requesting an en banc rehearing of its antitrust case against telecoms company Qualcomm.

In its August decision in FTC v Qualcomm, the Ninth Circuit held that Qualcomm’s standard essential patent licensing model, including its “no licence, no chips” policy and insistence on licensing only to end-product manufacturers, was competitive.

The FTC said in its petition that the Ninth Circuit panel erred in this decision, arguing that it did not overturn any of Judge Lucy Koh’s first-instance findings and yet held that these determinations did not establish a cogent theory of anti-competitive harm.

“This case has widely been recognised as enormously important to the future of antitrust law,” the FTC wrote. “The practical stakes are just as high: the panel’s decision blesses the continued stifling of competition in multi-billion-dollar markets for cellular communications on which much of the digital economy depends.”

This petition is the latest development in a lawsuit that dates back to 2017, when the FTC charged Qualcomm with using anti-competitive tactics to maintain monopolies in cellular communications markets.

In 2019, Koh of the District Court for the Northern District of California ruled in favour of the FTC, finding that the company violated antitrust law. That decision was reversed by a three-judge panel of the Ninth Circuit last August.

The appellate court has yet to announce whether it will accept the FTC’s petition for en banc re-hearing.

New WIPO chief promises ‘vibrant and forward-looking IP ecosystem’

Daren Tang assumed his new responsibilities as WIPO director general yesterday, October 1, and promised to work towards a vibrant and forward-looking global IP ecosystem that would help the world broaden its perspective of IP beyond its legal and technical aspects.

In his acceptance speech, which marked the start of his six-year term as head of the United Nations’ IP arm, Tang said he wanted to prioritise working towards building an inclusive global IP ecosystem that serves the interests of all countries and their stakeholders.

He also emphasised balance and that all institutions, companies and policy makers should participate and benefit from IP.

Tang, who is 48 and a graduate of the National University of Singapore, took over the position from Francis Gurry, whom Managing IP interviewed earlier this year.

Prior to his appointment as WIPO director general, Tang served as chief executive of the Intellectual Property Office of Singapore, and previously chaired WIPO's Standing Committee on Copyright and Related Rights.

Linklaters partner made High Court deputy judge in UK

Ian Karet, an IP partner at London magic-circle firm Linklaters, has been appointed to the England and Wales High Court as a deputy judge.

Karet, who has been a partner at Linklaters since 1997, was appointed on the recommendation of the Judicial Appointments Commission for a six-year period.

He will sit part time in the Chancery Division for up to 30 days per year and will continue to practise IP and technology law at Linklaters.

Responding to the appointment, Linklaters senior partner Charlie Jacobs said: “We are delighted for Ian, who is widely recognised as a leading IP disputes specialist. It’s good to see a solicitor appointed as a deputy, and we congratulate him on this significant achievement.”

Karet is also a legal board member of the Charity Commission and a member of the Civil Justice Council, an advisory public body with responsibility for co-ordinating the modernisation of the civil litigation system in the UK.

Managing IP has interviewed several High Court judges in the past, including Richard Arnold and Colin Birss, before they were elevated to the Court of Appeal, and the late Henry Carr.

Western District of Texas rocket-docket judge to hold first jury trial next week

The judge at the District Court for the Western District of Texas, who is responsible for his jurisdiction’s meteoric rise in patent litigation filings over the past two years, will hold his first patent jury trial next week.

Alan Albright, who joined the court in Waco in September 2018 as a district judge, is scheduled to hold the first day of testimony in MV3 Partners v Roku on Monday, October 5.

Since Albright came to the court, patent case filings at the Western District of Texas have risen by 629% – from 90 cases in 2018, to 288 in 2019 and 656 as of October 1 2020 – making that jurisdiction the busiest patent docket in the US.

The judge had yet to bring any of these cases to a jury trial, but will do so next week.

Managing IP predicted in March that the Western District of Texas could become the most popular court for US patent litigators. It has overtaken Delaware, which has been the country’s busiest patent docket since the US Supreme Court's 2017 decision TC Heartland v Kraft Foods, by more than 100 cases.

China launches intellectual property antitrust guidelines

China has published new guidelines on antitrust issues related to patent pooling and the licensing of standard essential patents.

The guidelines, which were released by China’s State Administration for Market Regulation (SAMR), are dated January 4 2019 but were only officially released on September 18 2020.

The document provides a framework for how business operators should establish an antitrust compliance system and manage such risks in China. The guidelines are not compulsory, according to SAMR, but do indicate how the administration expects businesses to comply with antitrust rules.

Among other things, the guidelines set out that senior management should fully commit to antitrust compliance, that firms should establish an antitrust compliance department or appoint a compliance officer, and that businesses should conduct an internal self-assessment to identify antitrust law risk and consider appropriate mitigating measures.

The Antitrust Compliance Guidelines do not, however, replace the regional antitrust compliance guidelines released by local branches of SAMR.

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