This week in IP: EU watch list raises eyebrows, UK clones all EU marks, US slams COVID scammers

Brand owners question EU counterfeit watch list credibility

On Tuesday, January 5, in-house counsel criticised the EU’s decision not to include major e-commerce platforms in its list of sites that reportedly facilitate intellectual property infringement.

According to the European Commission, which published the Counterfeit and Piracy Watch List in December 2020 with the support of the EUIPO, Amazon, Alibaba and eBay were not included because of their continued engagement with rights owners.

Counsel at Philips, a fashion company and drinks brand Jägermeister pointed out to Managing IP that these platforms were the most frequently reported for IP infringement, and said this omission went against the aim of the watch list to warn and protect businesses and IP owners.

“In order to reproduce complete and unbiased results, these platforms must be included,” said Laila Gutt, manager for IP legal and compliance at Jägermeister in Germany.

She added that a special emphasis on the continuing engagement was fine, but that this alone should not be enough to exclude them completely.

Click here to read the full story.

Other Managing IP stories published this week and just before the holiday break include:

• What counsel want from the new USPTO director
• New UPC complaints filed in Germany
• DSA a ‘missed opportunity’ for counterfeit proactivity rules

UK clones two million EU trademarks

The UKIPO confirmed this week that it had successfully recreated all EU trademarks and registered Community designs recorded before 11pm on December 31 2020 as UK rights with the same priority and filing dates.

UKIPO CEO Tim Moss said: “I am really pleased to confirm that we have successfully added two million ‘comparable’ registered rights to the UK registers and our systems are working well. Many thanks to our teams and our partners for working so hard over the last four years in preparation for this moment.”

EU trademarks and design rights are no longer protected in the UK, but anyone who owned one of these IP rights at the end of the transition period will now also own a UK equivalent.

Owners of international trademarks and designs that designated the EU at the end of the transition period also had equivalent rights created on the UK register.

EU applications still pending at the end of the transition period were not automatically converted into a corresponding UK application.

However, parties can still apply to register the same trademark or design at national level within nine months by paying a separate UK application fee, while maintaining the earlier filing date of the EU application.

US government condemns ‘opportunistic’ COVID scammers

The Trump administration issued its last annual intellectual property report to Congress on Monday, January 4, outlining the steps it has taken to fight off “opportunistic criminals taking advantage of the coronavirus health crisis”.

The report, which was released by Vishal Amin, who leads the White House's Office of the Intellectual Property Enforcement Coordinator, set out that there had been a surge in counterfeit personal protection equipment and medicines, including from China.

It noted that the US would remain vigilant in detecting, investigating, and prosecuting wrongdoing related to the crisis.

The 177-page document highlighted the establishment of the USPTO’s COVID-19 Response Resource Center and the Department of Homeland Security’s efforts to tackle counterfeit and sub-standard COVID-19 supplies as two of its biggest achievements in fighting the criminals.

“From day one, the administration has had a singular focus on strengthening and growing our nation’s innovative economy,” said Amin. “The actions that we have taken to protect American intellectual property have helped set the United States on a path to remain not only an economic leader, but a powerhouse of innovation, invention, and creativity for decades to come.”

The report also delved into IP matters such as the Music Modernization Act and plant variety rights.

American Axle asks SCOTUS to decide critical Section 101 case

American Axle filed a petition for writ of certiorari with the US Supreme Court last Monday, December 28, asking the high court to review a split decision from the Court of Appeals for the Federal Circuit on its closely watched patent eligibility case.

The Detroit-based automotive company argued in its petition that the Federal Circuit had inappropriately expanded the reach of the three patent-ineligible concepts and confused Section 101 with the enabling-disclosure requirement of Section 112.

American Axle argued that issues in this case were distinct from those addressed by the court in previous Section 101 matters, such as Alice, Bilski and Mayo, whereas many of the recently denied patent eligibility petitions were not.

The appeal comes after the Federal Circuit narrowly dismissed American Axle’s petition for a full panel rehearing in July 2020. A panel of three circuit judges originally ruled on the case in October 2019, when it decided in a two-to-one vote to invalidate American Axle’s patent, which is directed to making drive shafts, because it merely described a desired result.

The court ruled that the patent claims invoked Hooke’s Law – a natural law that is barred from patentability under Section 101 – “and nothing more”.

SCOTUS has yet to decide whether it will accept the petition.

Generics petition SCOTUS to save PTAB

In other SCOTUS-related news, the Association for Accessible Medicines filed an amicus brief at the high court in Arthrex v Smith & Nephew this week, setting out that preserving post grant reviews at the Patent Trial and Appeal Board was critical.

The generics lobbying group, which has companies such as Accord, Fresenius Kabi and Sandoz as members, argued that the inter partes review (IPR) is a critical tool for quickly and efficiently eliminating invalid patents.

“Perhaps no segment of the public benefits more from IPR than the patients who depend upon generic and biosimilar medications,” it stated. “AAM’s members rely on IPRs to efficiently root out invalid drug patents.”

The brief urged SCOTUS to reverse the Federal Circuit’s ruling in Arthrex that administrative patent judges are principal officers who hold their position in violation of the Appointments Clause and so preserve the PTAB.

This case started in 2015 when UK multinational medical equipment firm Smith & Nephew filed several IPRs against the Germany-based medical device company Arthrex. The PTAB found Arthrex’s patent (number 9,179,907) to be invalid.

Arthrex appealed that decision to the Federal Circuit on the basis that the appointment of the board’s APJs by the secretary of commerce violated the appointments clause of the US Constitution.

The Federal Circuit ruled in October 2019, in an opinion written by Judge Kimberly Ann Moore, that APJs were indeed principal officers, not inferior officers, and severed a tenure provision protecting these judges at the PTAB to remedy the problem.

In March 2020, the Federal Circuit denied an en banc rehearing of the case.

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