This week in IP: UPC enters final prep phase, China unveils 20-day TM exam, and more

IP owners urge customs to embrace new tech

Other Managing IP stories published this week include:

• Top IP trends in LATAM's biggest economies revealed: counsel
• Opinion: Irish UPC saga one to watch in 2022
• From disruptive tech to IP access: top 2022 trends
• Exclusive: UKIPO asked to assess possible AFS breaches
• ‘Exasperation’ over European deadlock on grace period
• Breaking: UK sticks with exhaustion status quo ... for now
• What Indian startups want from IP counsel, and how to help them
• Vaccines and Vidal: what pharma in-house are watching in 2022
• USPTO must back up new TM sanctions with action: in-house
• Exclusive: IP5 joint meeting with TM5/ID5 scrapped
• Counterfeits study raises questions over social media influencers

SCOTUS rejects Apple and Mylan’s NHK-Fintiv challenges

The US Supreme Court rejected Apple and Mylan’s challenge to the USPTO’s NHK-Fintiv rule on Tuesday, January 18, keeping the rule in place that makes it more difficult to challenge the validity of patents at the Patent Trial and Appeal Board.

The rule, adopted by the USPTO in 2020, compels PTAB judges to discretionarily deny inter partes reviews if parallel district court proceedings are due to finish first.

Apple and Mylan both petitioned for a SCOTUS review of the rule after the Court of Appeals for the Federal Circuit refused to scrap it.

The two companies claimed the rule made it harder to challenge low-quality patents. Intel and Roku filed amicus briefs supporting their arguments.

The petitions for certiorari stemmed from Apple and Mylan’s efforts to have patents owned by Optis Cellular and Janssen Pharmaceuticals invalidated.

SCOTUS’s refusal to grant certiorari could lead NHK-Fintiv detractors to pin their hopes on Senator Patrick Leahy’s Restoring the America Invents Act bill, which would essentially kill Fintiv if passed.

The Unified Patent Court entered into its final preparatory phase on Tuesday, January 18, meaning that the court could open by the end of the year.

Austria confirmed on Tuesday that it had completed its ratification of the protocol to the UPC Agreement, allowing the court’s provisional application period (PAP) to begin.

The PAP protocol lets the UPC become a legal entity and allows organisers to complete their remaining work. Outstanding tasks include the hiring of staff and judges, as well as the completion of a new IT system.

The UPC Preparatory Committee estimates that this process will take at least eight months.

The UK’s withdrawal from the UPC threatened the success of the project at one point, as did a series of constitutional challenges in Germany. But the decision from Germany’s Federal Constitutional Court last year to dismiss two complaints cleared the way for the UPC to move forward.

Not all signatories to the UPC Agreement have finished ratifying it, meaning countries such as Ireland are now under pressure to complete this process by the time the court becomes operational.

On Tuesday, January 18, the CNIPA unveiled new measures to quickly examine certain trademark applications.

Trademark filings related to major national or provincial projects, scientific and technological infrastructure, events and exhibitions, and other public interest projects would qualify for fast-track examination under the change.

Only electronically filed applications for word marks could proceed under the expedited route, however.

Potential applicants would need to prove that their trademarks urgently needed to be protected and to obtain a recommendation from the relevant Chinese government unit.

The CNIPA said it would examine applications that met its criteria within 20 days of approving requests.

The measures entered into force on January 18.

The USPTO and the JPO released a joint statement on Friday, January 14, expressing their commitment to improving the Patent Prosecution Highway programmes of both countries.

Both intellectual property offices set target deadlines to fast-track the examination of PPH applications and make it easier for applicants to predict the timing of office actions.

The PPH programme speeds up examination by allowing filers to request fast-track examination of their corresponding applications at second IP offices if the claims under their initial applications are allowed by the first offices.

The two IP bureaus will now strive to issue the first office actions within three months from the formal approval of PPH requests. If they issue any subsequent office actions, they will try to do so within three months of applicants’ responses to the first ones.

The improvements to the PPH examination process took effect on January 1, 2022.

A press release from the USPTO revealed that almost 30% of all PPH applications were filed with the JPO and the USPTO in 2020.

That may not be surprising given that both the offices initiated the PPH scheme.

UK authors this week welcomed a UK government decision not to change the current regime concerning exhaustion of intellectual property rights.

The Publishers Association, which was among the biggest campaigners in support of retaining a favourable exhaustion regime, said it was delighted there would be no change.

At the time of the government’s consultation into exhaustion, the association launched the Save Our Books campaign. The campaign argued that an international exhaustion system – one of the options considered – could spark a 25% decline in UK publishing industry revenue.

Fortunately for the association, the government opted to stick with the status quo on Tuesday, January 18, by keeping the European Economic Area’s regional exhaustion regime that it had participated in since January 2021.

Reacting to the news, Stephen Lotinga, chief executive of the Publishers Association, said: “The evidence is clear, any weakening of our IP laws would be devastating to UK creators, and we will continue to make this case to government in any future discussions of the matter.”

The UKIPO has said it remains committed to exploring opportunities that might come from any regime change, but that further development of the policy framework needed to happen before reconsidering the evidence and making a decision on the future exhaustion system.

Ad-filtering business Eyeo defeated a speculative copyright claim on Tuesday, January 18, on the question of whether HTML could be the subject to copyright infringement proceedings.

Eyeo was sued by publisher Axel Springer in 2021. The publisher claimed the ad-filtering firm violated its copyright by altering its websites with a browser extension called AdBlock Plus.

Eyeo offers an ad-blocking extension and simultaneously runs a program that displays approved adverts to consenting users.

Axel Springer has tried and failed to secure a judgment against Eyeo before. In 2018, the publisher's claim that Eyeo's business violated competition law was thrown out by Germany's Supreme Court.

However, the latest case at the Hamburg Regional Court marks the first time the publisher has used copyright law to try and add weight to its claim.

Axel Springer claimed that the HTML used to render web pages was protected and thus couldn’t be altered without the approval of the copyright owner. If accepted, the argument would have made it illegal for any technology or any consumer to alter a website page appearance.

But the court disagreed. It found that there was a limit to copyright after which the website author could no longer assert any right of retention.

Had the copyright claim been accepted, any ordinary computer user who used, knowingly or unknowingly, browser extensions or features that modified HTMLs would have been automatically deemed as infringing on copyright law, the court added.

The US District Court for the Eastern District of New York unsealed documents on Tuesday, January 18 related to an anti-counterfeiting lawsuit filed by Gilead Sciences.

The suit was filed against pharmaceutical suppliers and distributors for allegedly selling fake versions of Gilead’s HIV medications.

One of the documents – Gilead’s second amended complaint that was filed in October 2021 – set out that the company wanted the court to prevent the defendants from ever selling genuine or counterfeit Gilead medication.

It also said all infringing material should be turned over, seized, impounded or destroyed.

The plaintiff added that it should receive punitive damages of no less than $25 million, as well as statutory, actual or threefold damages, and attorneys’ fees.

The complaint noted that the court had already issued ex parte seizure orders in July and August 2021.

Gilead also filed a memorandum of law in October supporting its request for another ex-parte seizure order, as well as a temporary restraining order and an asset freeze order. It said it sought the ex-parte seizure in nine locations, including residences of several of the defendants.

The plaintiff added that it and others were being irreparably harmed by these fake medicines.

It said seizing the counterfeit items and documents related to the sale of false goods was a necessary first step to prevent the defendants from selling the products and to warn customers.

“Until that happens, Gilead and the public are and will remain irreparably injured,” the document said.

Geoffrey Potter, partner at Patterson Belknap Webb & Tyler in New York, represented Gilead.

Ericsson filed two lawsuits against Apple in the District Court for the Western District of Texas on Monday, January 17, claiming that the iPhone company had continued to use its 5G patents after the licence expired.

The plaintiff asserted four patents in one lawsuit, and eight additional patents in the other.

The two companies have been at odds in recent months over standard essential patent (SEP) licensing.

Ericsson sued Apple in October 2021 in the District Court for the Eastern District of Texas, seeking a declaration that it had complied with its commitment to license SEPs on fair, reasonable, and non-discriminatory terms.

Apple then sued Ericsson in the same district in December of that year, claiming that the latter’s actions violated its agreement with the iPhone company and its FRAND commitments.

The companies entered into the licence agreement in 2015.

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