This week in IP: EPO rejects DABUS appeal, M&S sues Aldi again, and more

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.

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