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This week in IP: ANDA data revealed, US and UK top IP report, EPO continues VICO
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed

Data: Hatch-Waxman cases plummet
Litigation for abbreviated new drug applications dropped
significantly last year, according to new data revealed by Managing IP.
In 2020, 265 ANDA (also known as Hatch-Waxman) cases were
filed, compared to 324 in 2019, 369 in 2018 and 415 in 2017, continuing a fall
over the past three years. Last year saw the fewest ANDA matters filed in the
district courts since 2012, when 241 cases were filed.
Sources suspect this drop could be a result of the pandemic. “COVID
stopped generics’ ability to launch new products because it slowed down FDA
approval of products and everything else the FDA does,” says Kassie Helm,
partner at Dechert in New York.
Click here to read the full article.
Other stories published by Managing IP this week include:
Electric car patents race poses questions for litigation
First thoughts: UKIPO makes bold call on AI inventorship
Hamburg judge: UPC an ‘embarrassment’ for Germany
How businesses get US software patents
Cost and confidentiality challenge in-house in patent clearance
Attorneys should learn more about our companies, say in-house
UKIPO could allow AI tools to be listed as inventors
On Tuesday, March 23, the UKIPO announced it would consider
legislative change to address the question of whether artificial
intelligence could be listed as an inventor.
The announcement came as part of a three-month consultation on
the impact of AI on intellectual property.
“We recognise that AI systems have an increasing impact on
the innovation process. We want to ensure the intellectual property systems
support and incentivise AI-generated innovation,” said a UKIPO spokesperson.
“We also want to ensure transparency in the innovation
process and that inventorship criteria do not present a barrier to protecting
investment in AI-generated innovation.”
The question
of AI inventorship has divided the IP community in the past,
with some claiming that AI is merely a tool that facilitates innovation, and
others arguing that prohibiting AI inventorship could create a legal limbo for
inventions created by non-humans.
In an interview with Managing IP, AI patent applicant Stephen Thaler said
that refusing to name an AI tool on a patent application would lead to “orphaned
patents” that had no recognition under the law.
Thaler claimed that his AI tool, named Device for the
Autonomous Bootstrapping of Unified Sentience, was like a small child in that
it took in information from the outside world and turned it into new ideas and
plans of action.
“If I falsely listed myself, I would become a criminal – I
have to sign a declaration that I invented something, and that would not be the
case,” he said.
Legislative change would reverse a September 2020 ruling
from the England and Wales High Court that excluded AI from inventorship and found
that only “natural persons” could be classified as inventors.
EPO to continue VICO hearings, despite legality appeal
The EPO has said it will continue to hold hearings by
video-conference without parties’ permission, despite the fact that an appeal
questioning the legality of that approach is pending.
In a statement on Wednesday, March 24, an EPO spokesperson said
that after a “careful weighing up of the impact for legal certainty and access
to justice”, president António Campinos had decided oral proceedings would
continue under current practice.
At the moment, oral proceedings before examination and
opposition divisions, and at appeal level, can be held by VICO without both parties’ consent.
Earlier this month, an EPO Technical Board of Appeal made
a referral to the Enlarged Board of Appeal (EBoA) seeking to clarify whether
that approach was permissible under the European Patent Convention.
The referral to the EBoA concerns appeal proceedings, but
also extends to oral proceedings by VICO before examining and opposition
divisions.
According to the EPO, hosting oral proceedings by VICO in
examination and opposition was introduced to ensure the functioning of the office
during the COVID-19 pandemic.
Before this was introduced, the pandemic had a “significant
negative impact” on legal certainty for parties because almost none of the
scheduled oral proceedings could take place, an EPO spokesperson said.
The EPO said it would immediately implement the EBoA’s
findings once it rules on the matter.
US and UK rank first and second in annual GIPC report
The US and UK ranked first and second among 53 global
economies in the latest edition of the International Intellectual
Property Index, which was released on
Tuesday, March 23.
Germany came in third, France fourth and Japan fifth in the annual report, which evaluates the IP framework in each economy across 50 indicators that industry stakeholders believe represent economies with the most
effective IP systems.
The report, which was compiled by the Global Innovation
Policy Center (an affiliate of the US Chamber of Commerce), also found that the
global IP environment had strengthened over the past year despite the COVID
pandemic, with 32 out of 53 economies showing improvement in their scores.
It noted that trade agreements had substantially improved
national IP frameworks, including in China and Mexico, and that IP had enabled
the development of a pipeline of therapeutics solutions to combat COVID-19 in
2020.
But despite this improvement, the report continued, several
countries took steps to undermine IP-enabled innovation by supporting compulsory
licensing legislation and a proposed TRIPS waiver for COVID vaccines.
Click here to read the full report.
US firm expands diversity scholarship awards
US intellectual property firm Merchant & Gould has expanded a scholarship
programme aimed at sponsoring law students from diverse backgrounds who want to
pursue a career in IP, it announced on Tuesday, March 23.
A cash gift of $5,000 will be awarded each year to selected
students from nine law schools.
The scholarship programme was previously run in conjunction
with the University of Minnesota Law School as well as the University of
Tennessee College of Law. However, it has now been expanded to seven other
institutions located close to the law firm's offices.
Andrew Jagenow, partner and diversity committee chair at
Merchant & Gould, said: “As the legal industry continues to grow, Merchant
& Gould is thrilled to enable these law schools to recruit and support more
students typically underrepresented in IP law.
“Through the scholarships, we are pleased to give resources
to students and, by extension, help make our legal communities more diverse,
inclusive, and innovative.”
The seven new participants in the scheme are: John Marshall
Law School, Georgia State University College of Law, Mitchell Hamline School of
Law, University of Colorado Law School, George Washington University Law
School, Benjamin N Cardozo School of Law, and University of New Hampshire
Franklin Pierce School of Law.
Jagenow added: “We felt it was the right time to expand our
existing scholarship programmes to support more students, more schools, and more
communities.”
Managing IP recently spoke to several other law firms that were developing and expanding
diversity and inclusion initiatives, including Fish & Richardson, Finnegan,
Haynes and Boone, and Morrison & Foerster.
USPTO requests comment on patent bar changes
The USPTO published a request for public comment on Tuesday,
March 23, on whether it should rework requirements to sit the patent bar exam.
The office asked whether it should add master's and doctoral
programmes to its category A list of automatically qualifying degrees. Under
the current system, only bachelor's degrees automatically qualify.
It also asked for comment on a proposal to add several new
degrees to the list of automatically qualifying majors.
These new qualifications included aerospace
engineering, bioengineering, biological science, electronics engineering, genetics,
marine engineering, materials science, neuroscience, ocean engineering and
textile engineering.
The USPTO also wanted input on a proposal to amend its category
B list (for those that did not meet category A’s list of acceptable degrees).
One of the current options for this category involves completing
eight semester hours in chemistry or physics in two
sequential courses, each with a lab.
The office said it was contemplating changing this
requirement to eight semester hours in a combination of chemistry, physics,
and/or biology, with at least one course that included a lab.
The possibility of amending these requirements received
attention last December when Senators Mazie Hirono, Thom Tillis and Christopher
Coons sent a letter to then-USPTO director Andrei Iancu arguing that the
patent office should expand the list of necessary qualifications.
In interviews
with Managing IP in January, in-house and private practice lawyers agreed that
the office should revisit requirements to sit the bar. But they also emphasised
that the USPTO should not lower its standards.
Comments can be sent until May 24.
Health Canada warns against counterfeit 3M masks
Health Canada, the department responsible for Canada’s health policy, issued a warning on Friday, March 19, on counterfeit 3M N95 respirators.
The department said it had seized around 330,000 fake respirators
from Canadian distributors and detained nearly 365,000 at the border.
It recommended that people call 3M’s anti-fraud
hotline, report suspected fakes to Health Canada or look at 3M’s website for
tips to avoid counterfeit products.
Counterfeiters that produce fraudulent masks have been a
significant problem for 3M since the start of the pandemic.
In a January interview with Managing IP, Colette Durst, chief trademark counsel at 3M, revealed that the company had joined forces with brand protection company
Incopro to enforce its trademark against these fake respirators and masks.
As of January, 3M had taken down more than 16,000 false or deceptive social
media posts, nearly 15,000 fraudulent e-commerce offerings and around 300
deceptive internet addresses since the start of the
pandemic.
In a panel at Incopro’s Insync Virtual Summit on January 28,
Durst also recommended using customs to block goods from entering a country and
using the shipment data to track down the offenders.
"That has been incredibly helpful,” she said.
YouTube to help users avoid copyright infringement
Last week, YouTube announced a new tool
called Checks that will alert users if the material they upload is
protected by copyright and complies with advertising guidelines.
The tool relies on Google’s Content ID system, which
automatically alerts copyright owners to infringement.
YouTube said the new feature should help users avoid
uploading content with the yellow dollar-sign icons, which signal that advertisement
revenue is being withheld because of copyright infringement.
If the new tool finds protected material, it sends a notice
to help YouTubers find a way to remove infringing parts of the video. The alert
tells the user what content is claimed by copyright, and includes a time code
for the parts of the video that need to be removed.
YouTube said that Checks should take three minutes to scan
the content for copyright violations, and another couple of minutes to check
for monetisation.
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