This content is from: Patents
This week in IP: EPO rejects DABUS appeal, M&S sues Aldi again, and more
J&J must face whistleblower patent case; Malaysia introduces 20-year jail term for piracy; InterDigital loses injunction bid against Lenovo in UK

Watch out for EU review, manufacturing waiver and Article 3c next year, say SPC stakeholders
Not much happened in the supplementary protection certificate space in Europe in 2021, at least compared to past years – but plenty is set to take place next year, according to in-house and law firm counsel.
Last month, the European Parliament said SPCs should only be allowed in "exceptional and justified cases”, among other things – a concerning proposal for many lawyers.
Then there’s the SPC manufacturing waiver, which will come into play in July, and a referral on Article 3c of the SPC Regulation from Finland to the Court of Justice of the EU.
Click here to read the full article.
Other Managing IP stories published this week include:
- Misbeliefs must not derail Hong Kong SAR copyright reform
- Huawei issues seminal Wi-Fi 6 patent licence to Buffalo
- Brands changing TMs to aid vaccination can limit risk if careful
- Why NFT IP violations are rampant and what to do about them
- UK review offers first test of SEP policy after Brexit
EPO rejects DABUS appeal
The EPO Board of Appeal confirmed
on Tuesday, December 21, that European patents must name human inventors, in a
defeat for the legal team behind the Artificial Inventor Project.
The decision emerged from an
appeal seeking to have the AI tool DABUS recognised as an inventor.
The board has yet to issue a
written decision but explained that under the European Patent Convention (EPC),
an inventor had to be a person with legal capacity.
Where no such natural person
exists, there can be no patent, the board contended.
Ryan Abbott, the lead for DABUS’s
legal team, commented in a social media post: “The board recognised this means
that there is no way to patent AI-generated inventions under the EPC despite
widespread support, including from EPO, for protecting such inventions.”
Speaking to Managing IP earlier
this month, Marcus Rieck, one of the lawyers representing the DABUS team at the
EPO, expressed hope that the office might find a solution to this problem.
His comments came after Germany’s
Federal Patent Court ruled that applicants must name human inventors but could
specify if AI tools were also involved in the inventive process.
The edict demonstrated that intellectual
property offices were keen to find a solution to the problem of how to protect
AI-generated inventions, Rieck said.
The EPO appeal was the DABUS team’s
final shot in what has been something of a breakthrough year for the AI tool.
A judge at Australia’s Federal
Court ruled in favour of recognising DABUS as an inventor in July, leading to
an appeal from the country’s IP office.
The team has also filed an appeal
at the UK Supreme Court against the refusal to grant a UK patent naming DABUS
as the inventor.
The England and Wales Court of
Appeal ruled in a two-to-one decision in September that a successful patent
application required a human inventor.
Notably, Lord Justice Colin Birss
dissented, although his opinion turned mostly on points of procedure.
Aldi hit with second M&S
trademark suit
UK retailer Marks & Spencer
has again sued German supermarket chain Aldi for trademark infringement, it
emerged this week, this time over a brand of Christmas gin.
In April, M&S sued Aldi over
an alleged knock-off of its Colin the Caterpillar cake.
The latest complaint focuses on
M&S’s festive gin brand, which comes in a light-up bottle shaped like a
snow globe.
M&S secured registered design
rights for the bottle of its festive gin brand in April and now claims Aldi copied the design for a cheaper
product.
Aldi’s own ‘The Infusionist’
clementine gin brand, released in November, comes in a bottle with illuminated
gold flakes.
In response to the first suit,
Aldi temporarily pulled its own Cuthbert the Caterpillar cake from the shelves.
But he soon returned, with Aldi pledging to donate money made from sales of the
cake to charity.
Aldi has since made repeated
light-hearted references to the dispute in public. Its annual Christmas advert
depicted Cuthbert being taken away in handcuffs.
And yesterday, on the day the gin
complaint was filed, Aldi published a Facebook post offering to “kiss and
make-up” with M&S under the mistletoe.
Despite this so-called “peace
offering”, however, relations between the two companies appear to be as
strained as ever.
EPO seeks views on no-grace-period policy
The EPO will consult users on its
no-grace-period policy when assessing the novelty of patent applications, the
office confirmed on Monday, December 20.
The EPO operates a strict novelty
requirement for patent applications, meaning it insists that inventions can’t
have been disclosed before the earliest filing date.
Unlike some other jurisdictions,
such as the US, the EPO doesn’t offer a so-called “grace period” in which applicants
can disclose the invention before the filing date.
The EPO said its survey would
explore the impact of its policy on the filing and business practices of
European patent applicants.
It will also seek views on the
effect that “different grace period scenarios” might have.
The consultation is being carried
out this winter by international research agency Berent on behalf of the EPO,
with findings set to be published in spring 2022.
It will seek feedback from a
randomly selected group of applicants for European patents and representative
user associations in EPO member states.
A 2015 study commissioned by the
UKIPO found that academics were most likely to make use of grace periods.
In general, IP offices and
multinational businesses tended to oppose grace periods on the grounds that they
introduce uncertainty, the UKIPO report found.
J&J must face whistleblower patent fraud suit
Johnson & Johnson and its Janssen
subsidiaries must face claims that they fraudulently secured a patent to extend
their monopoly on the prostate cancer drug Zytiga, the US District Court for the
District of New Jersey held on Friday, December 17.
The concerned lawsuit filed in 2019 is just one of several brought
by whistleblower and patent attorney Zachary Silbersher under the False Claims
Act (FCA).
Silbersher alleged that Janssen
fraudulently obtained a patent in 2014 for the use of Zytiga along with prednisone
at specific dosages to treat prostate cancer by misrepresenting its commercial
success before the USPTO to prove non-obviousness.
According to the allegations,
Johnson & Johnson withheld information from the USPTO, prevented generic
competition, and ultimately charged an inflated price for Zytiga to government programmes
such as Medicare and Medicaid.
District judge Kevin McNulty denied
Johnson & Johnson’s motion to dismiss the lawsuit, rejecting the company’s
argument that Silbersher’s whistleblowing was based on information that was
already publicly disclosed.
Johnson and Johnson’s plea to
dismiss Silbersher’s FCA claim on the basis that it failed to plead the
elements of falsity and materiality was also rejected.
McNulty ruled that Silbersher has
plausibly alleged that Janssen’s representations to the USPTO to obtain the
patent were false or misleading, which was sufficient to reject Janssen’s
dismissal motion.
Malaysia introduces 20 years prison term for piracy
Malaysia’s House of Representatives approved amendments
to the country’s Copyright Act, introducing harsher punishments for piracy, it
was revealed this week.
Pirates offering illegal
streaming services and devices that prejudicially hurt copyright owners can now
face fines up to 200,000 Malaysian ringgit ($47,500) or a prison term of up to
20 years, or both, depending on the severity of the offence.
In case a corporate body
infringes the rights of a copyright owner, its officers, directors or those
involved in the management of its business will be liable under the amended law.
The only available defence for
them is that the offence was committed without their consent or involvement,
and that they exercised all due diligence to prevent its occurrence.
Before the amendment, Malaysia’s
copyright law did not have any piracy-specific provision that covered illegal
streaming.
That lack of piracy regulation had
been a challenge for rights owners, who couldn’t prevent the sale of streaming
devices until May, when the Intellectual Property High Court in Kuala Lumpur declared
that selling, offering for sale, distributing and supplying of illicit
streaming devices fell under copyright infringement.
InterDigital fails in injunction bid against Lenovo in UK
The England and Wales High Court has dismissed an attempt from
InterDigital to secure an injunction against computer giant Lenovo for
infringing its 4G standard-essential patent, it emerged this week.
On December 16, His Honour Judge Richard Hacon suggested
that the case law remained unsettled on whether Lenovo could escape a ban with
its “vague” commitment to accept-court mandated licensing terms.
“The commitment offered by Lenovo is qualified and the
qualifications are vague,” wrote Hacon. “Nonetheless, in my view it is not
possible to say that under French law unarguably Lenovo's qualified and vague
commitment disqualifies them from the benefit of the stipulation de contrat
pour autrui created by InterDigital's undertaking to ETSI and clause 6.1 of
ETSI's IPR Policy.”
On that basis and “at this stage”, Hacon dismissed the
injunction application.
This injunction rejection comes after Hacon ruled in July that
InterDigital’s SEPs were valid and infringed by Lenovo.
InterDigital first announced in August 2019 that it had
launched litigation against the Chinese tech company in the England and Wales
High Court to get a declaration that its worldwide licence terms met its FRAND
commitments, or a determination of FRAND terms for a licence to its 3G and 4G
SEPs.
The company, which noted that it also started this
infringement action in Delaware, said at the time that it was seeking an
injunction similar to that awarded by the UK courts in Unwired Planet v
Huawei.
The material on this site is for law firms, companies and other IP specialists. It is for information only. Please read our Terms and Conditions and Privacy Notice before using the site. All material subject to strictly enforced copyright laws.
© 2021 Euromoney Institutional Investor PLC. For help please see our FAQs.