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This week in IP: Pfizer allows COVID pill copies, USPTO publishes TMA rules, and more
Kanter confirmed to DoJ; John Lewis sued over dragon; INTA to go to Washington DC; Germany rules on AI inventorship; Moderna offers vaccine co-ownership; Miramax sues Tarantino; car alliance disputes dealership venue rules

‘Brexit has defined the organisation’ says UKIPO chief
UKIPO CEO Tim Moss spoke with Managing IP this week about his experience managing Brexit.
“We had this small task on December 31 last year of creating two million rights overnight,” says Moss.
“The fact that it went so smoothly, even to the point that it happened in the background and people almost didn’t notice it, it’s testament to the fantastic work the team has done.
“It’s defined the organisation, and probably been the biggest single issue in my time at the office.”
Click here to read the full article.
Other Managing IP stories published this week include:
- Three ways Leahy's retirement could shake up IP
- In-house: eco-conscious brands must be wary of ‘greenwashing’
- Renewables patents ‘maturing’ as profits decline: in-house
- INTA 2021: Cannabis, alcohol and gambling counsel share top trademark tips
- Rise in tech goods and services calls for Nice reboot: sources
- Judge Meade: why skeleton brevity can help ease complexity
- Blockchain a boon for IP enforcement in China, say sources
- O’Malley to pursue patent policy work after Federal Circuit
- Four factors driving forum shopping in US trademark litigation
- In-house: registered designs take chequered flag post-Ferrari
Pfizer allows generics to produce COVID pill
Pfizer has signed a deal with international
public health group Medicines Patent Pool that will allow generic drug
manufacturers to produce and supply an experimental COVID antiviral drug to poorer
countries, it emerged on Tuesday, November 16.
Pfizer also released a statement on Tuesday
confirming that the company would license the antiviral drug to the Medicines
Patent Pool.
The pharma leader has sought emergency use
authorisation for its pill from regulators in the US. Drug companies can prepare
to produce generic versions once they have secured licences, but must wait for
regulatory approval before launching them on the market.
Albert
Bourla, Pfizer’s chief executive, said Pfizer remained committed to bringing
forth scientific breakthroughs to help end the pandemic for everyone.
“We believe oral antiviral treatments can play
a vital role in reducing the severity of COVID-19 infections, decreasing the
strain on our healthcare systems and saving lives.”
According to Pfizer, late-stage trials showed
its COVID pill reduced the chance of hospitalisation and death for adults at
risk of severe disease by 89%. The trials analysed data collated from the US,
Europe, Africa, and Asia.
“This licence is so important because, if
authorised or approved, this oral drug is particularly well-suited for low and
middle-income countries and could play a critical role in saving lives,
contributing to global efforts to fight the current pandemic,” said Charles
Gore, executive director of the Medicines Patent Pool.
Miramax sues
Quentin Tarantino over Pulp Fiction NFTs
Production company Miramax sued Quentin
Tarantino over his planned sale of non-fungible tokens from the cult movie Pulp
Fiction in the US District Court for the Central District of California on
Tuesday, November 16.
The legendary director had recently announced
his plans to auction off seven exclusive scenes along with high-resolution
scans from his original handwritten screenplay from the 1994 motion picture as
NFTs.
The lawsuit – filed for copyright and trademark
infringement, breach of contract and unfair competition – alleged that Tarantino
infringed the IP rights relating to one of Miramax's most iconic and valuable
film properties by offering the NFTs for sale.
Tarantino had kept his NFT plans a secret from
them, the production house claimed.
Upon learning about the NFTs, Miramax sent a cease-and-desist
notice to Tarantino. But the director’s attorneys responded by saying Tarantino
was acting within his reserved rights.
The studio has claimed that except for
Tarantino’s limited rights, the copyright in the finished motion picture and all
its elements in all stages of development and production vests in Miramax, and it
also holds the rights to develop, market and sell NFTs related to its films.
“Left unchecked, Tarantino's conduct could
mislead others into believing Miramax is involved in his venture,” the suit
said.
Miramax has sought a jury trial for all the
issues listed in the complaint.
USPTO announces final Trademark Modernization Act rules
The USPTO announced on Wednesday, November 17 that it had
finalised the rules for the implementation of the Trademark Modernization Act,
which will go into effect on December 18.
The rules specify what petitioners have to do to file ex-parte
expungement and ex-parte re-examination proceedings at the USPTO, which make it
easier for third parties to cancel marks that are not in use.
The office said petitioners didn’t always have to include
the name of the party on whose behalf the petition would be filed. Third
parties don’t need to have standing to initiate the proceedings.
This is important because brands can ask their firms to
initiate proceedings for them without identifying their brands.
But the rules said the director could require this
information to be disclosed in particular cases.
The USPTO added that petitioners had to provide certain
information such as the basis for the petition, the name, domicile address, and
email address of the petitioner and a clear and legible copy of all documentary
evidence supporting a prima facie case of non-use of the mark.
The rules also explained what registrants would have to do
if petitioners had provided enough evidence to institute one of these
proceedings.
Registrants would have to provide evidence of use,
information, exhibits, affidavits, or declarations that were reasonably
necessary to rebut the prima facie case of non-use.
Senate confirms Kanter as DOJ antitrust head
The US Senate confirmed Jonathan Kanter as the new antitrust
head of the Department of Justice by a vote of 68 to 29 on Tuesday, November
16.
Dick Durbin, chair of the Senate Judiciary Committee, said
Kanter was a distinguished antitrust lawyer with decades of experience in the
public and private sectors.
“With his extensive experience, deep knowledge of the law,
and masterful understanding of the challenges facing antitrust law enforcers,
Mr Kanter will be an outstanding addition to the justice department.”
Stakeholders could soon find out how Kanter intends approach
antitrust law pertaining to standard essential patents (SEPs) and
pharmaceutical patents.
Counsel told Managing IP shortly after Kanter was nominated
that the White House had likely already established its SEP policy, and had picked
Kanter to follow it. They expected that he would support policies more
favourable to accused infringers.
Attorneys said, however, that Kanter was a less radical
choice than some of Biden’s nominees for other key positions.
Thom Tillis (ranking member of the Senate IP subcommittee)
asked Kanter at his nomination hearing in October whether he would withdraw the
joint policy statement on SEPs from the USPTO, DoJ and National Institute of
Standards and Technology.
Kanter said this subject was something he looked forward to
examining if he were confirmed.
The new antitrust head at the DoJ was a partner and the antitrust
co-chair at Paul Weiss before he set up his own firm called The Kanter Law
Group in 2020.
John Lewis targeted over dragon Christmas ad
The author of a children’s book about a fire-breathing
dragon that causes havoc with his fiery sneezes has accused UK-based retailer
John Lewis of infringement over its 2019 Christmas advertisement, it emerged
this week.
Author Fay Evans claims a “striking similarity” between her
book ‘Fred the fire-sneezing dragon’, published in 2017, and the 2019 advert called
Excitable Edgar. The author filed a copyright infringement claim at the
Intellectual Property Enterprise Court (IPEC) on November 5.
John Lewis has denied the allegations, and said the concept
was first presented to it in early 2016.
Evans’s book is a rhyming story about a small green dragon
whose causes chaos but eventually wins humans over by cooking their food with
his flames.
In the John Lewis ad, the dragon annoys the people in the
town he lives in by melting a snowman and burning down their Christmas tree,
but then lights their Christmas pudding.
John Lewis’s Christmas advert has been a staple in the
run-up to Christmas in the UK for several years.
In recent years it has faced other copying claims.
In 2017, author Chris Riddel suggested the retailer borrowed
from his picture book ‘Mr Underbed’ in its 2017 advert that depicted a monster
living under a boy’s bed.
This year, husband and wife duo the Portraits have alleged
that the retailer lifted their arrangement to Philip Oakey and Georgio Moroder’s
song ‘Together in Electric Dreams’ – the soundtrack to its latest advert.
German court looks to joint inventorship on DABUS
The German Federal Patent Court has ruled that a listed
inventor must be a natural person but can be named in conjunction with an
artificial intelligence, in the latest development in the DABUS saga.
It was the opinion of the court, revealed this week, that
the listed inventor must be a natural person, even if the AI had identified
both the problem and the solution. But it said an AI system could be
additionally named.
It is the latest ruling in a string of cases surrounding the
DABUS patent applications – which have been filed by inventor Stephen Thaler.
In September, the England and Wales Court of Appeal rejected
the notion that an AI could be an inventor in its own right as it was not a
legal person. An appeal has been filed at the UK Supreme Court.
A DABUS-invented patent was granted in South Africa (albeit
without formal examination) in July and the Federal Court of Australia ruled in
that same month that an AI could be an inventor under the country’s patent
laws.
The DABUS applications cover an emergency warning light and
a food container that improves grip and heat transfer. DABUS stands for ‘Device
for the autonomous bootstrapping of unified sentience’.
INTA to hold 2022 annual meeting in Washington DC
INTA will hold its first in-person annual meeting since 2019
in Washington DC next April, it was confirmed on Monday, November 16.
INTA CEO Etienne Sanz de Acedo made the announcement at this
year’s virtual meeting, which is set to conclude today, November 19.
Next year’s meeting is scheduled for April 30 to May 4 at
the Walter E Washington Convention Center in the US capital.
INTA also promised to deliver a robust virtual component to
the meeting for those unable to attend in person.
The organisation had planned for this year’s event to take
place with a hybrid format, combining in-person and virtual elements.
In the end, it has been mostly online, with one-day
mini-conferences held in New York, Berlin, and Los Angeles.
It was the second annual meeting to be disrupted by the
COVID-19 pandemic, following the cancellation of the April 2020 event in
Singapore.
The last meeting to be held in-person was in May 2019 in
Boston.
“The 2022 annual meeting marks a return to our legacy as the
world’s largest in-person gathering of brand professionals and affirms our
strategic decision to combine the best of both worlds – in-person plus virtual
– into our events moving forward,” said Sanz de Acedo.
“While the current meeting is a fully-fledged virtual event
and inching back into in person with limited-capacity mini-conferences, next
year, we’re in effect reversing the formula, ” the INTA CEO added.
Moderna offers to co-own vaccine patents with US gov
Moderna has offered to share IP rights for its breakthrough
COVID-19 vaccine with the US government, it confirmed in a statement last
Thursday, November 11.
The drug maker is involved in a dispute with the National
Institutes of Health (NIH) over whether government-employed scientists should
be listed as inventors on the patents for the vaccine.
NIH director Francis Collins told Reuters that Moderna had
made a “serious mistake here in not providing the kind of co-inventorship
credit to people who played a major role in the development of the vaccine that
they're now making a fair amount of money off of”.
The government had argued that scientists working for the
National Institute of Allergy and Infectious Disease (NIAID), one of the bodies
of the NIH, co-invented the mRNA sequence used in the Moderna vaccine.
In a statement issued on November 11, Moderna hit back at
the NIH’s account, but said it was willing to share patent rights.
“The mRNA sequence was selected exclusively by Moderna
scientists using Moderna’s technology and without input of NIAID scientists,
who were not even aware of the mRNA sequence until after the patent application
had already been filed,” the drug maker said.
“Therefore, only our scientists can be listed as the
inventors on these claims,”
It added: “For those who would seek to twist Moderna’s good
faith application of US patent law into something else, nothing could be
further from the truth. Moderna remains the only company to have pledged not to
enforce its COVID-19 intellectual property during the pandemic.
“Moreover, on September 29th, Moderna offered to resolve its
dispute with NIAID by making the government co-owners of those patent
applications that only listed Moderna scientists as inventors, including the
right as co-owners to license the patents as they see fit.”
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