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This week in IP: UPC enters final prep phase, China unveils 20-day TM exam, and more
SCOTUS rejects Fintiv challenges; USPTO and JPO pledge to improve PPH; UK publishers welcome exhaustion clarity; German Adblocking copyright test fails; US court unseals Gilead anti-counterfeiting papers; Ericsson sues Apple after licence expiration

IP owners urge customs to embrace new tech
Counsel in the drinks, fashion, technology, and home appliances sectors say if they are to make the most of new initiatives such as the EUIPO’s online filing system for applications for action, then customs authorities themselves must modernise in turn.
Click here to read the full article.
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.
Final UPC preparations begin after Austria decision
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.
China announces 20-day examination of select TM
applications
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.
USPTO and JPO join hands to improve patent prosecution
highway
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.
Publishers welcome exhaustion clarity
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.
German Adblocking copyright test fails
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.
US court unseals Gilead anti-counterfeiting papers
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 sues Apple after licence expiration
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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