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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.

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Other Managing IP stories published this week include:

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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