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This week in IP: Nokia hits 4,000 5G SEP families, Moderna and NIH debate patent creds, and more
AC Milan loses stationery application bid; China dominates world patent filings; Sanya city offers patent subsidies; newspaper appeals Markle copyright case; US congressman tries to abolish PTAB; Federal Circuit clarifies venue rules in ANDA cases

Congress watchdog investigating director’s PTAB power
The office in charge of auditing the US federal government has launched an investigation into the decision-making processes at the Patent Trial and Appeal Board, it confirmed to Managing IP this week.
The Government Accountability Office (GAO), which provides auditing, evaluation and investigative services on behalf of Congress, started the inquiry in the summer shortly after congressmen Hank Johnson and Darrell Issa called on it to start a PTAB investigation.
In a press release on June 2, Johnson and Issa – respectively the chair and ranking member of the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet – announced that they had sent a letter to the GAO comptroller general and that they wanted to know whether there was sufficient transparency and accountability at the board.
Click here to read the full article.
Other Managing IP stories published this week include:
- Senators’ complaints about Albright polarise in-house
- Why IP owners must embrace the metaverse – now
- EPO must discourage speculative filings, say pharma counsel
- What advisers (and in-house) can learn from BASF v Carpmael
- Federal Circuit says Apple still lacks standing after IP settlement
- Publishers welcome Italy’s ‘creative’ Article 15 solution
- Pharma wary of counterfeiting becoming crime against humanity
- Opinion: CJEU be warned, copyright referrals may be on the way
- Len Stark will be ‘fair, diligent and wise’ judge at Federal Circuit
- Exclusive: DABUS team files appeal at UK Supreme Court
- Three trade secret trends that matter most to in-house counsel
Moderna and NIH face off over COVID patent creds
Moderna and the National Institutes of Health are locked in a dispute over whom should be credited on patent applications covering the pharmaceutical company’s COVID vaccine, it emerged on Tuesday, November 9.
The NIH, the US government’s biomedical research agency,
says three of its scientists worked with Moderna to design the genetic sequence
that prompts the vaccine to produce an immune response.
It has urged the USPTO to recognise that its inventors
should be named on the principal patent application.
Moderna thinks otherwise.
In a filing with the USPTO earlier this summer, the company
said it had reached a good-faith determination that the three NIH scientists
did not co-invent the vaccine. In the patent application, which has not yet
been granted, it names several of its own employees as inventors.
In statements to the New York Times, which broke the news on Tuesday, the NIH and Moderna confirmed the conflict, which had
been brewing for several months.
The vaccine was developed following a collaboration between
Moderna and the NIH.
If the three agency scientists – John Mascola, Barney Graham
and Kizzmekia Corbett — are named on the patent, that development might give
the US government more say over which companies could manufacture the vaccine.
AC Milan halted in stationery trademark bid
The EU General Court sided against football club AC Milan in
its dispute with a German stationery company on Wednesday, November 10.
The football club had planned to use the applied-for
trademark, which included the words ‘AC Milan’ underneath its crest, on
stationery products (class 16). It applied for the mark in February 2017.
Later that year, German stationery company InterES opposed
the application, citing its earlier word mark for ‘Milan’ covering class 16,
granted in 1988.
The court agreed with a 2018 decision by the EUIPO’s Opposition Division and a 2020 ruling by
the Second Board of Appeal, both of which found that consumers might confuse AC
Milan-branded stationery products for the ‘Milan’ range of goods already sold
by InterES.
The General Court concluded: “Since the word element ‘Milan’
is present in both the mark applied for and the earlier mark, the conflicting
signs must be regarded as similar conceptually to an average degree for the
part of the relevant public for whom that word has a meaning.”
It added: “Even assuming that, as the applicant claims, part
of the relevant public perceives the word element ‘AC Milan’ as a reference to
that football club in the city of Milan, the conflicting signs both refer to
the Italian city of Milan.”
Although the ruling can be appealed to the Court of Justice
of the EU (CJEU), such a request is unlikely to be granted.
As of May 2019, trademark decisions that had already been
considered on appeal twice (by the Boards of Appeal and the General Court) can
only be taken on by the CJEU if they raise an issue “significant to the
development of EU law”.
Since that rule came into force, no decisions have been
successfully appealed.
WIPO report says China dominates patent filings worldwide
On Monday, November 8, WIPO reported overall growth in
worldwide patent activity in 2020, showing that the CNIPA had topped the charts
for filings.
The CNIPA received 1.5 million patent applications in 2020,
which was two and a half times more than the number filed at the second leading
IP office, the USPTO. The patent and trademark office received 597,172
applications.
Only three IP offices among the top 10 countries reported
growth in patent filings last year – China’s numbers rose by 6.9%, India’s by
5.9% and South Korea’s by 3.6%. Others saw steep declines, including Germany,
whose applications fell by 7.9%, and Japan, by 6.3%.
The IP offices of Russia (34,984 applications), Canada
(34,565 applications) and Australia (29,294 applications) also made the top 10
list.
China also saw the fastest growth in patents in force in
2020 ( an increase of 14.5%), followed by Germany (8.1%), the US (6.9%) and
South Korea (4.6%).
WIPO’s report said the number of patents in force (active
patents) worldwide grew by 5.9% in 2020 to reach approximately 15.9 million.
The US currently holds the highest number of patents in force (3.3 million).
China is a close second, with 3.1 million active patents.
IP offices in Asia received two-thirds (66.6%) of all
worldwide patent filings in 2020, marking a substantial increase from 51.5% in
2010.WIPO attributed the increase to
long-term growth in China as well as increased IP activity in other Asian
countries.
The international organisation also reported a 13.7% growth
in worldwide trademark filings and 2% increase in worldwide industrial designs
filings in 2020.
Sanya city offers new patent subsidies, despite CNIPA
push
China’s city of Sanya in the Hainan province published the
Sanya City Intellectual Property Funding Management Measures on Monday,
November 8, offering subsidies of up to RMB 300,000 ($47,000) for trademarks
and up to RMB 500,000 ($78,000) for patents.
The measures were released despite the CNIPA’s push to end
IP subsidies across the country to combat junk filings. In January, the CNIPA
announced that it would cancel all patent application funding by June 2021.
Local governments can still offer subsidies for authorised
invention patents but must phase them out by 2025.
Eligible applicants could receive subsidies covering 50% of
the official fee for securing IP registrations under Sanya’s new regime. The
new measures will enter into force on December 1.
Up to RMB 5000 ($782) will be available for authorised
invention patent applications filed in mainland China, Hong Kong, Macau and
Taiwan.
In China, invention patents, which have a 20-year term and are
substantively examined are distinguished from utility model patents, which have
a 10-year term and are not substantively examined.
The city is also offering up to RMB 50,000 ($7,820) for
filing patent applications in Europe, the US and Japan, and up to RMB 30,000
($4,700) per patent filing in other jurisdictions, not exceeding five
countries.
Sanya city will also give up to RMB 500,000 ($78,240) to
patentees that have won the national Chinese patent gold award. Smaller grants
are also available for winners of the silver award, excellence award and
municipal-level awards.
For brand owners, the city will grant up to RMB 10,000
($1,564) for each international trademark application registered through the
Madrid system and RMB 300,000 ($46,943) for trademarks that have secured
well-known status.
UK newspaper publisher appeals Markle’s copyright win
The publisher of the Mail on Sunday and Mail Online this
week asked the England and Wales Court of Appeal to overturn Meghan Markle’s
copyright victory from earlier in the year.
The England and Wales High Court ruled in February that the
newspapers had breached Markle’s copyright and violated UK privacy law in
publishing a letter she wrote to her estranged father.
Associated Newspapers filed an appeal, which saw a three-day
hearing at the Court of Appeal conclude yesterday, November 11.
The publisher’s case largely hinged on new evidence that
Markle may have known the letter would be made public, undermining her
violation of privacy claim.
Associated Newspapers claimed Markle suspected her father
Thomas might leak the letter to the media, citing a statement from the
Duchess’s former communications secretary Jason Knauf.
Andrew Caldecott QC, arguing for Associated Newspapers, said
the High Court had implicitly accepted the letter was intended as a private
communication from Markle to her father.
“The fundamental point turns out to be false on the new
evidence. The letter was crafted specifically with the potential of public
consumption in mind because the claimant appreciated Mr Markle might disclose
it to the media,” Caldecott said.
Lawyers for Markle have objected to the introduction of the
new evidence from Knauf and say if it is admitted, Markle too will wish to file
new evidence.
Nokia declares 4,000 5G SEP families
Nokia has declared 4,000 patent families as essential to 5G
standards, the company announced yesterday, November 11.
The Finnish telecoms company is among the world’s leading
owners of standard-essential patents (SEPs) in 5G, as well as earlier
generations of cellular technologies.
Jenni Lukander, president of Nokia Technologies, said:
“We’re proud to have reached the milestone of 4,000 high quality patent
families declared as essential to 5G but the work does not stop there.
“Our focus is on innovating for the future, driving the
development of the next generation of cellular standards, and enabling entire
industries to build upon our inventions.”
Licensing of cellular SEPs continues to be an important
revenue driver for the Finnish company.
Nokia Technologies, the business division responsible for
licensing, posted an operating profit of €285 million for the third quarter of
this year, an 8% increase over 2020.
This year has seen Nokia conclude major licensing deals in the
auto industry, including with German carmaker Daimler and another, unnamed auto
manufacturer in May.
Nokia remains one of Europe's top performers in cellular
R&D and licensing, in a field where European and North American leadership
has come under threat from Chinese rivals such as Huawei.
US congressman introduces bill to abolish the PTAB
US Republican party representative Thomas Massie introduced
a bill on Friday, November 5, that would abolish the Patent Trial and Appeal
Board and award patents on a first-to-invent basis if enacted.
The bill titled Restoring America's Leadership in Innovation
Act (RALIA) would also repeal administrative post-grant reviews and end
the automatic publication of patent applications, holding off publication until
grant.
Massie said the Leahy-Smith America Invents Act had worked
with several Supreme Court decisions to erode the patent system’s strength and
value.
“The RALIA legislation restores to Americans a patent system
as the constitution of the United States originally envisioned it," said
Massie.
Republican representatives Louie Gohmert, Paul Gosar and Tom
McClintock cosponsored the bill.
The introduction of the bill comes more than a month after
Democratic senator Patrick Leahy introduced the Restoring the America Invents
Act, which would eliminate discretionary denials under the NHK-Fintiv rule at
the PTAB, among other things.
The NHK-Fintiv rule sets out that administrative patent
judges can deny institutions on the basis that parallel proceedings in the
district courts will finish first.
According to Massie’s press release, several organisations
including the American Business Defense Council, Small Business Technology
Council and US Inventor supported the bill.
A ruling from the US Court of Appeals for the Federal
Circuit helped clarify where patent owners could sue generic pharma companies
in abbreviated new drug application disputes.
Federal Circuit clarifies venue restrictions in ANDA
cases
The Federal Circuit ruled on Friday, November 5, in Celgene
v Mylan that the District Court for the District of New Jersey was an
improper venue for Celgene to sue Mylan.
The court rejected Celgene’s argument that because Mylan sent
a notice letter from West Virginia to Celgene’s headquarters in New Jersey,
acts of infringement occurred in New Jersey.
This ruling helped clarify the court’s 2020 decision in Valeant
v Mylan, in which it said acts of infringement only occurred in districts
where actions related to the submission of an abbreviated new drug application
(ANDA) occurred.
This was important because a plaintiff must either show that
a defendant resides in a particular district or that it has committed acts of
infringement and has a regular and established place of business there to
establish venue under TC Heartland rules.
The Supreme Court ruled in TC Heartland v Kraft Foods
on May 22 2017 that the patent venue statute (Section 1400 under Title 28 of the
US Code) was the exclusive venue law for patent infringement matters and
largely stopped forum shopping practices across different states.
A source close to the matter said Friday’s decision helped clarify
that the notice letter was something the defendant was required to send by the
statute and was not part of the act of infringement.
The decision also helped clarify what constituted a regular
and established place of business. The court rejected Celgene’s arguments that because
Mylan had 17 employees who lived in New Jersey, the defendant had a regular and
established place of business there.
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