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This week in IP: pharma slams waiver, Brazil cuts patent terms retroactively, Beverly Hills loses polo mark case

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

Generics and innovators say waiver ‘undermines vaccine confidence’

In response to the Biden administration’s backing of an intellectual property waiver for COVID vaccines, five in-house counsel at generic and innovator drug makers told Managing IP this week that such a waiver not only wouldn’t work but would undermine global vaccine confidence.

“If you open up the IP to the world, you’ll have organisations taking up production that aren’t ready to do it in a quality-focused manner,” said the chief IP counsel at a pharma company that produces generic and branded therapeutics, as well as ventilators.

“If that happens, people will start to lose confidence in the vaccines.”

They noted that the industry is already on track to make 10 billion to 12 billion vaccine doses by the end of the year, long before any supposed benefit of an IP waiver would be seen.

To find out more on the in-house perspective on this waiver, click here to read the full article.

Other Managing IP stories published this week that you may have missed include:

Four firms reveal how they meet in-house fee demands

Three IP attachés explain how they help companies abroad

Pitch perfect: investors reveal what they want in an IP portfolio

Opinion: Amazon talks the talk on fakes, but does it walk the walk?

Podcast masterclass: How to protect trade secrets

Opinion: What a week for patents – and not a good one

The stranger’s guide on when to file patent continuations

Flat fees v billable: how in-house conquer cost challenges

Trademark Modernization Act: how in-house are preparing

Breaking: Brazil SC rules patent extensions unconstitutional

Brazil Supreme Court makes landmark patent ruling retroactive

The Brazil Supreme Court decided on Wednesday, May 12, that its ruling removing 10-year guarantees for successful pharmaceutical and biotech patents would be applied retroactively, potentially shortening the terms of as many as 30,000 granted patents.

Managing IP broke the news last week that the high court had ruled nine to two in Direct Action 5,529 that the sole paragraph of Article 40 of Brazil's Industrial Property Law was unconstitutional.

The provision set out in the paragraph had guaranteed at least 10 years of patent term from grant date, to make up for long delays at Brazil's patent office.

The most recent decision applies last week’s ruling to all current pharmaceutical and medical device patents – regardless of technology area – whose terms were extended under the Article 40 provision. 

Last week’s decision already applied to pending applications and new filings.

The court’s choice largely follows the recommendation of the reporting justice for this case, Dias Toffoli.

He proposed that patents should not be affected by this decision, with two exceptions: patents in the pharmaceutical and medical fields, and patents whose validity terms are being challenged before courts based on arguments that Article 40 violates the constitution.

As a general rule, a Supreme Court decision invalidating a legal provision always has retroactive effect. Eight or more justices out of 11 would have needed to agree that the decision should not apply to past patents for that to have become the case.

Beverly Hills defeated in polo trademark claim, again

The owner of the Beverly Hills Polo Club fashion brand has lost a trademark dispute for the second time in five months after the England and Wales High Court rejected its claims against a US organisation.

In the judgment in Lifestyle Equities v Greenwich Polo Club, handed down on Monday, May 10, the High Court dismissed claims of passing off and trademark infringement lodged by BHPC against Connecticut-based Greenwich Polo Club, its brand licensing agency, and a director at the company.

According to the court, none of the defendants was liable for infringement.

Lifestyle Equities, the owner of BHPC, alleged infringement of five EU trademarks and one UK mark. In each case, the trademark depicted a man on horseback playing polo with the words ‘Beverley Hills Polo Club’ around the picture.

The goods and services covered by the marks included clothing, headgear, perfumes and sports bags.

According to BHPC, since 2015 the defendants have used or threatened to use signs that also contain “a representation of at least one polo player with a polo stick on a pony” in the UK and EU.

Mr Justice Marcus Smith said in his ruling that the original pleading clearly sought to “spread the web of liability extremely wide” and that the figurative elements of the marks were different.

“The fact is that the rider or riders on a polo horse or horses with polo mallet or mallets does not do anything more than evoke the sport of polo. This is not a case of a Nike ‘swoosh’ or some other purely figurative sign that links to or evokes a particular brand or producer,” he wrote.

This is the second time in five months that Lifestyle Equities has failed in an infringement claim.

In January, Mr Justice Michael Green of the England and Wales High Court found in favour of Amazon in a dispute over the sale and visibility of goods in the UK and EU.

In Lifestyle Equities & Anor v Amazon UK, the court found in favour of Amazon, concluding that the Amazon.com website did not “target” the UK.

Becerra says pharma would have say over COVID-19 waiver

Health and human services secretary Xavier Becerra announced on Wednesday, May 12, that the Biden administration would allow input from the pharma industry before approving an intellectual property waiver for COVID-19 vaccines.

Becerra’s comments follow outcry from drug makers over Biden’s support last week for an IP waiver that was initially proposed by India and South Africa at the World Trade Organization (WTO).

The waiver has been hotly debated between supporters who claim it is necessary to increase access to vaccines, and dissenters, including German chancellor Angela Merkel and many in the pharma industry, who argue that a waiver will do more harm than good.

“We are willing to sit down and negotiate to see if there’s a way to deal with this. Everything is still the same until we’ve negotiated,” Becerra said during a House Energy and Commerce Committee hearing.

The secretary said the Biden administration has been in conversations with the pharma industry “since the very beginning”, and that this dialogue is ongoing.

“No action has been taken without having consultation with all those who are stakeholders and certainly the industry that has helped create these vaccines,” he added.

Director General of the WTO, Ngozi Okonjo-Iweala, has requested a rewording of the waiver, which will be debated in the coming weeks.

USPTO issues 11 millionth patent

The USPTO issued its 11 millionth patent on Tuesday, May 11, to co-inventors Saravana Kumar and Jason Diedering of 4C Medical Technologies.

The utility patent covers a new method for delivering, positioning, and repositioning a collapsible and expandable stent frame within a patient’s heart chamber.

Kumar said in a statement that he and Diedering were incredibly excited and honoured to be granted the 11 millionth patent. “The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality.”

US Secretary of Commerce Gina Raimondo said the benchmark was a reminder of the remarkable and enduring tradition of American innovation. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognise patent 11 million, its inventors, and its promise.”

The issuance of this patent also hit another milestone at the USPTO – one million patents issued in a little under three years. The office issued its 10 millionth patent on June 19 2018; it had granted its nine millionth in April 2015 and its eight millionth in August 2011.

Before the Patent Act of 1836, US patents were not numbered and were only identifiable by the date on which they were issued. After the law came into effect, Senator John Ruggles obtained patent number one on July 11 1836 for a traction wheel for steam locomotives.

Samuel Hopkins had obtained the first US patent in 1790 for improvements in the making of pot ash and pearl ash.

Federal Circuit upholds PacBio loss

The US Court of Appeals for the Federal Circuit ruled on Tuesday, May 11, that two DNA-sequencing patents belonging to California-based Pacific Biosciences were invalid and that the company was not entitled to a new trial.

The ruling in Oxford Nanopore Technologies’ favour upheld a March 2020 decision from the District Court for the District of Delaware. PacBio requested a new trial in its appeal on the basis that Oxford made references to COVID during its opening remarks, where it also argued that PacBio was trying to exclude it from the market.

Before the district court trial, Chief Judge Leonard Stark granted PacBio a motion in limine (to request that certain testimony be excluded) that was meant to prevent Oxford from presenting evidence about the consequences of the litigation, such as higher prices or slower medical research.

The day after Oxford made its opening remarks, PacBio requested motions for two curative instructions (instructions curing an error). The court granted this request. But in its appeal PacBio said the remarks had caused prejudice that could not be remedied by the curative instructions.

The jury found the patents invalid because of a lack of enablement (or a failure to disclose how to make and use the invention). PacBio claimed that the jury’s verdict on enablement was unsupported by the evidence. The Federal Circuit disagreed.

Aussie Ugg seller loses US trademark battle

Sheepskin boot company Australian Leather lost a five-year battle to Deckers Outdoors over the use of the trademark ‘Ugg’ on Friday, May 7.

The US Court of Appeals for the Federal Circuit upheld a lower court’s decision, which ruled that although the word ‘ugg’ was a generic term in Australia, it had no such meaning in the US.

In Australia, ‘ugg’ is used as a catch-all term for sheepskin boots, which have been made since the 1930s. They were popularised by surfers in the 1960s. An Australian entrepreneur first registered ‘Ugg’ as a brand in 1980 and then sold the trademark to Deckers in 1995.

In 2016, Deckers sued the owner of Australian Leather, Eddie Oygur, for trademark infringement after he sold 13 pairs of the boots in the US. The owner is now facing a $450,000 fine for trademark infringement.

After the ruling on Friday, Oygur vowed to fight for Australia and take the case all the way up to the Supreme Court.

“This is not just about me – it is about Australia taking back ‘ugg’,” Oygur said. “The trademark should never have been given in the first place.”

Ugg shoes are more than just ugly (if that's your view) – they are also profitable. A Deckers 2020 report revealed the company earned $2 billion in revenue that year, with three quarters of it coming from Uggs.  

China officially opens up patent profession to foreigners

China has announced that foreign residents can take the country’s patent bar exam, allowing them to act as patent agents.

According to an announcement in the Beijing Municipal Human Resources and Social Security Bureau at the end of last month, and reported by news website China IP Today on Friday, May 7, a patent agent is one of 35 professions to be opened for foreigners.

If they pass the bar exam, non-Chinese people can work, and become partners, at China-based patent agencies.

Plans to allow foreigners to take the exam were initially announced in August last year.

At the time, Aaron Wininger, director of the China IP practice at US law firm Schwegman, Lundberg & Woessner, pointed out a number of caveats including that test takers must be permanent residents, a status that can be very hard to secure.

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