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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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