UPC rejections drive counsel to restart European patent plans
In-house counsel told Managing IP this week that they were seriously considering their next steps to get ready for the Unified Patent Court, after Germany’s Federal Constitutional Court dismissed two complaints filed against the country’s ratification of the harmonised patent project.
Sources say they are not only beginning to look at which patents they would like to opt in to the court, but are also reconsidering where they hire external counsel.
The head of IP for a chemical company in the Netherlands said that although his company already had a plan for how to use the UPC, he was starting to think seriously about the court and how he would use it in the future because of the constitutional court’s announcement.
“There is going to be some delay before this comes into force, but now we need to decide which of our existing patents we are going to opt out of the UPC and which are we going to use,” he said.
Other Managing IP stories published this week that you may have missed include:
Munich Regional Court will set up new patent chamber
The Munich Regional Court will set up a new patent litigation chamber this summer to help manage increasing patent litigation in Germany, it was announced on Wednesday, July 14.
The new chamber, which will be established on August 16, will be chaired by presiding judge Georg Werner. Werner is a lecturer at the University of Bayreuth, a former intellectual property lawyer and past research assistant for the patent senate of the Federal Court of Justice.
With this addition, there will be eight patent litigation chambers between Düsseldorf, Munich and Mannheim, the main courts for patent infringement proceedings in Germany.
"The expansion at the Munich district court clearly shows how attractive German courts are for innovative, globally active companies," says Gottfried Schüll, patent attorney and partner at Cohausz & Florack.
Further announcements on staffing at the new patent chamber are expected at a later date.
Considering that Germany is by far and away the most popular jurisdiction for patent litigation in Europe, it’s perhaps not surprising that the Munich court decided to add a patent chamber.
According to data on European patent litigation revealed by Managing IP, the regional courts in Düsseldorf, Munich, Mannheim and Hamburg are the first, third, fourth and ninth busiest forums for patent infringement proceedings on the continent.
Between 2015 and 2019, 3,692 patent lawsuits were filed in Germany. By comparison, 673 were filed in Italy (the runner up), 503 in France, 492 in the Netherlands and 430 in the UK.
UKIPO launches digital IP renewal service
A new digital renewals service that slashes bulk renewal time for IP rights from five days to five minutes is now available to all UKIPO users, the office announced on Wednesday, July 14.
According to the UKIPO, the new provision is the first example of its proposed One IPO Transformation programme, which aims to provide a single, integrated renewal service across all registered IP rights.
The wider launch follows a trial period in which the new service scored a 96% satisfaction rating.
IP owners who need to renew a registered design can do so online, and can renew up to 1,500 IP rights – including combinations of patents, trademarks and designs – in a single digital transaction.
In April, Managing IP reported that the UKIPO was embarking on its One IPO mission, a five-year programme. According to the office, the programme will transform the way services are delivered by implementing modern technology.
Eventually, the IPO wants to introduce a common IP system which will allow users to seamlessly apply for, manage, and research all of their IP rights in one place.
David Holdsworth, deputy chief executive and director of operational delivery at the UKIPO, said: “At the IPO, our ambition is to be the best IP office in the world, and our One IPO Transformation programme is central to this.
“Over the next five years, we want to completely transform what we do to deliver better services for our customers and increase the value we contribute to the UK economy.”
EU eyes new SEP laws
The European Commission has indicated that it plans to overhaul the licensing framework for standard essential patents, a move it says may combine legislative and non-legislative action.
In a list of published initiatives, updated this week, the commission has included an update called New framework for standard essential patents (SEPs).
According to the EU, the system for licensing SEPs is “not transparent, predictable and efficient”.
It added: “This initiative will create a fair and balanced licensing framework and may combine legislative and non-legislative action.”
A public consultation is expected to be launched in the third quarter of this year and a new framework ready for the end of 2022.
It is not yet clear whether the framework will take the form of a regulation, which would be binding across all EU member states, or a directive, which would set out goals but allow countries to devise their own laws on how to reach them.
This news may not come as a total surprise.
In November, the commission published a proposed overhaul of the IP system in the form of an IP Action Plan. Among the action points were pledges to improve transparency and predictability in the licensing of SEPs.
Sacha Baron Cohen sues cannabis company over billboard
Sacha Baron Cohen sued cannabis company Solar Therapeutics on Monday, July 12, for copyright infringement, false advertising and misappropriation of his right of publicity over a billboard that used the likeness of his famous character Borat.
The billboard portrayed Borat with two thumbs up, saying “it’s nice” – one of the character’s catchphrases.
According to the complaint, the plaintiff seeks market value compensation, statutory treble damages and punitive damages, estimated to be at least $9 million.
The complaint explained that Baron Cohen did not believe the use of cannabis was a healthy choice, and that he had spent a lot of his career mocking stoner culture.
It added that the plaintiff was born into an Orthodox Jewish family and did not wish to be involved in a controversy within his community over whether cannabis could be used under Jewish traditions and rules.
“By use of the billboard, the defendants falsely have conveyed to the public that Mr Baron Cohen has endorsed their products and is affiliated with their business,” the complaint read.
“To the contrary, Mr Baron Cohen never has used cannabis in his life. He never would participate in an advertising campaign for cannabis, for any amount of money.”
Baron Cohen is not the only famous IP owner to go head to head with a cannabis company in recent months. In May 2021, Wrigley filed lawsuits against cannabis product sellers that allegedly infringed its Skittles, Starburst and Life Savers brands.
Huawei and Verizon settle patent dispute
Huawei and Verizon have ended their two patent disputes with a confidential settlement, the companies announced on Monday, July 12.
The parties reached the deal in the middle of their trial at the District Court for the Eastern District of Texas, where Huawei had sued Verizon. It had also taken action in the Western District of Texas.
Verizon spokesperson Rich Young said in a statement that the business was happy with the settlement.
“While the terms of the settlement are not being disclosed, our team did an outstanding job bringing this protracted matter to a close.
“Our company continues to focus on what truly matters: providing millions of consumers and businesses with outstanding technology built on America's most reliable networks.”
Huawei said in a statement to other media outlets that it was “pleased that Verizon and Huawei reached an agreement that ends the companies’ patent litigation”.
The Chinese company sued Verizon in February 2020, claiming that it had contacted Verizon in February 2019 to discuss the need for a licence to its patents.
Huawei said its asserted patents were required to implement the G.709 standard – which relates to optical transport networks.
WHO wants gene-editing patent rules
A World Health Organization panel comprising ethicists, policy makers and lawyers released a report on Monday, July 12, recommending that human genome-editing technologies to treat or prevent diseases should be made more accessible to benefit countries with limited resources.
The report included a series of recommendations for developing global standards to govern human genome editing in nine discreet areas, including IP. It comes over two years after a Chinese researcher disclosed that he had altered the gene of twin babies to prevent them from contracting HIV.
The panel said it believed IP-based measures, when used together with other tools, could strengthen the governance and oversight of human genome editing.
“It will be important to avoid using patents in ways that potentially prevent others from delivering similar capabilities at a cheaper cost,” the 18-member committee said in its report.
The panel proposed establishing or running patent pools to explore the possibility of adopting appropriate ethical licensing requirements.
The WHO allotted its Science Division up to three years to initiate the review of recommendations, with the review process expected to take around 18 months.
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