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This week in IP: UKIPO calls for feedback, Pearson sues Chegg in textbook case, and more
FDA urges drug patent rules re-look; DesignEuropa Awards finalists announced; report recommends dual EPO-UKIPO filing for software; Square joins OIN; USPTO extends MTA pilot

Judge Koh could sway SEP law and cut backlogs at Ninth Circuit
Judge Lucy Koh has a great reputation among intellectual property counsel, who don’t always agree with her – particularly on standard essential patent matters – but respect her and her judgments.
The problem with being held in such good standing, however, is that a lot will be expected of Koh should her nomination to the Court of Appeals for the Ninth Circuit be approved by the Senate.
President Joe Biden nominated Koh, who has been at the District Court for the Northern District of California for 11 years, to the appellate venue last Wednesday, September 8.
Seven lawyers from u-blox, Reed Smith, and five other firms say Koh could be instrumental in clearing the backlog at the court, would act as a tempering voice in the SEP debates and would be well-prepared to learn the details of any case she worked on.
Click here to read the full article.
Other Managing IP stories published this week include:
WIPO Proof to end in 2022 after poor demand
IP and tech driving M&A as Asia ramps up digitisation
Introducing the IP Ones to Watch 2021
Buyers' desires: what patent sellers need to know to seal deals
Ericsson Fifth Circuit win further fortifies SEP owner stance in US
Report suggests UKIPO-EPO dual filings for software patents
Software patent applicants face different outcomes depending
on whether they go to the UKIPO or EPO, according to a report published on
Wednesday, September 15.
The report by patent and trademark attorney firm Mewburn
Ellis, which is based on applications filed at the UKIPO and EPO over a decade,
recommended that applicants file in both offices.
According to Mewburn’s report, eligibility issues were less
likely to be raised by the EPO – yet in some scenarios, more favourable
outcomes could be obtained at the UKIPO.
The disparity was due, at least in part, to the different
approaches taken by the two offices when examining software invention eligibility
for patent protection.
The report noted that the EPO used the Comvik approach,
which coupled patent eligibility with the assessment of inventive step. This
approach was clarified
by the EPO’s Enlarged Board of Appeal in the G1/19 case in March, which centred
on computer-implemented simulations.
The UKIPO used the Aerotel-Macrossan test, which originated
from a 2006 England and Wales Court of Appeal decision in Aerotel v Telco
and Macrossan's Application.
The report suggested that the two approaches should produce
the same result but weren’t, and that applicants should consider a dual filing
strategy in certain circumstances.
Following such a strategy could be preferable, Mewburn
noted, in situations where the inventions were of a high value, where UK
protection was particularly important, and where inventive step arguments over
known prior art were marginal.
James Leach, partner at Mewburn Ellis, said: “It is
difficult to predict with any certainty whether a given software invention will
fare better at the UKIPO or EPO.
“We have already seen anecdotal evidence that some large US
tech companies are pursuing a dual filing strategy.”
UKIPO issues rallying call in transformation scheme
The UKIPO called on IP professionals to take part in
research and testing yesterday, September 16, to help it become a world-leading
IP office.
In its call to action sent on its own channels, the office said
it was important to get feedback from the broader IP community to help it shape
its new services and build something that worked for all its users.
A UKIPO spokesperson told Managing IP: “To ensure our new
services are fit for the future, we need help with our user research and
testing. We are now starting our latest round of research and we need people to
take part.”
In April, Managing IP reported that the UKIPO had launched
One IPO, a five-year programme that aimed to transform the way services were
delivered by implementing modern technology.
Last week, as part of that scheme, the UKIPO revealed that it
had awarded a £23.8 million ($32.8 million) contract to professional services
firm Deloitte in an effort to transform its patent, trademark and copyright
filing system.
According to the award notice, Deloitte would serve as a “strategic supplier
to deliver digital services” under the terms of the contract.
In July, the IPO also announced the launch of a new digital renewals service as part of its One IPO project, which aimed to slash bulk
renewal time for IP rights from five days to five minutes.
Interested parties can answer the UKIPO’s latest call for feedback
by emailing usertesting@ipo.gov.uk.
A textbook case: Pearson sues Chegg for copyright infringement
Pearson Education, a UK-based publishing company, sued the California-based technology firm Chegg for copyright infringement in
the District Court for the District of New Jersey on Monday, September 13.
Pearson alleged that Chegg had infringed its copyright by
publishing answers to textbook questions.
“By using and copying Pearson’s original creative content to
make answer sets based on that content, Chegg infringes Pearson’s exclusive
rights as a copyright holder, including the rights of reproduction, preparation
of derivative works, and distribution,” the plaintiff said in its complaint.
Pearson added that the infringement could lead educators to
reconsider using its textbooks in their classes.
The plaintiff also claimed that Chegg occasionally copied
and repeated its questions and other copyright-protected content verbatim, and
that even when the California firm didn’t repeat questions exactly, the answers
provided were derived from protected expressions in textbooks.
The complaint noted that Chegg charged users $14.95 a month
to access a searchable database with answers to end-of-chapter textbook
questions.
Fox Rothschild and Oppenheim + Zebrak are representing the
plaintiff.
Senators and FDA urge USPTO to reconsider drug patent rules
Senators and the Food and Drug Administration appealed to the USPTO
last week to examine how it might restrict the ability of pharmaceutical
companies to unfairly extend drug monopolies.
In a letter to acting USPTO director Drew Hirshfeld sent last
Friday, September 10, FDA acting commissioner Janet Woodcock said the two
agencies should work together to better enable fair competition from generics
and biosimilars.
Among her IP-related concerns, Woodcock listed the reported use of
continuation applications to create patent thickets, evergreening and product
hopping.
Senators Patrick Leahy and Thom Tillis, who respectively serve as chair and
ranking member of the Senate’s IP subcommittee, also urged the USPTO acting
director to reduce applicants’ conflicting statements.
In a separate
letter sent last Thursday, September 9, the senators said applicants had made
statements in submissions to other federal agencies, such as the FDA, that conflicted
with declarations made at the USPTO.
They noted that
these conflicting statements were often submitted confidentially, and on
several occasions went unnoticed until after a patent was issued.
“There is a
clear need for the PTO to take action to require applicants to disclose
relevant statements they have made to other agencies relating to inventions
discussed in their patent applications or about prior art that is being applied
in the patent examination process,” the senators wrote.
They
acknowledged that patent examiners are already time constrained and there could
be some costs involved in implementing these measures.
These pleas came
after a patent for a drug formulation was struck down by the Court of Appeals
for the Federal Circuit earlier this month in Belcher v Hospira because
of contradictory positions taken before the FDA and USPTO.
Fintech firm Square joins Open Invention Network
Fintech company Square joined the Open
Invention Network on Tuesday, September 14, an organisation that acquires
patents and cross-licenses them to its members to enable innovation and
collaboration on software inventions, including those related to blockchain and
Linux.
The move is important, but not surprising. Square
holds several valuable blockchain patents and is a co-founder of the
Cryptocurrency Open Patent Alliance (COPA), in which members pledge to never
use their crypto-technology patents against anyone except for defensive reasons.
Keith Bergelt, CEO of OIN, said: “As a global leader in the effort to
democratise financial services, we are pleased that Square is committed to
patent non-aggression in core Linux and adjacent open-source technologies.”
COPA and OIN share similar goals to
ensure that core technologies are shared openly and that patents don’t serve as
barriers to growth and innovation.
DesignEuropa Awards finalists and one winner announced
The EUIPO published a new list of finalists and
winners for the third edition of its DesignEuropa Awards on Tuesday, September
14.
Iconic designer André Ricard, who is best known
for designing the 1992 Barcelona Olympics torch, won the lifetime achievement
award this year.
Eight finalists were shortlisted for the small
and emerging companies and industry category.
These nominees came from Germany, Italy, the
Netherlands, Poland, Spain, Sweden and the US, and worked for major brands including
Philips and John Deere, as well as lesser-known brands such as StethoMe, MiniFinder,
Relio and Knister.
The EUIPO will announce the winners on October 19
at an awards ceremony in Eindhoven, in the Netherlands.
The awards are organised by the EUIPO every two
years. There are two categories for nominations - small and emerging companies
and industry, and lifetime achievement.
The lifetime achievement category is reserved
for designers with a significant body of work.
USPTO extends PTAB’s motion to amend pilot
US patent owners will continue to enjoy an
expanded set of options when filing motions to amend (MTAs) during inter partes
reviews at the Patent Trial and Appeal Board, it emerged this week.
The USPTO published a Federal Register notice yesterday,
September 16, confirming that the MTA Pilot Program would be extended until at
least September 2022.
The programme allows patent owners to request
preliminary guidance from the PTAB on MTAs, and then to revise those MTAs
accordingly.
The USPTO announced the creation of the pilot
in March 2019 after a public consultation revealed concerns over the rate at
which the PTAB granted claim amendments.
Throughout the pilot, the USPTO has collated
data on MTAs filed during PTAB cases.
Drew Hirshfeld, the USPTO’s acting director,
said the office had decided to extend the pilot based on the most recent data,
adding that it may be extended again after September 2022.
Since the pilot began, 83% of eligible MTAs have
included a request for preliminary guidance, and most patent owners (58%) have
chosen to revise their MTA filing after receiving feedback from the PTAB.
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