Other Barks & Bites for Friday, May 29: USPTO Extends Filing Deadlines, PTAB Proposes New Rules Under SAS Institute and China IP Cases Up 5,660% in Two Decades

This week in Other Barks & Bites: China’s top prosecution agency reports that cases involving IP rights violations have increased by 5,660% over the last 20 years; the USPTO extends additional patent- and trademark-related relief during the coronavirus pandemic; the Federal Circuit affirms dismissal of APA claims against the USPTO; UKIPO reports 8% decrease in patent applications during 2019; top executives from global pharmaceutical firms express concerns over voluntary COVID-19 patent pool launched by WHO; the TTAB finds that a registered geographic certification mark for Michigan apples precludes a hard cider trademark; and General Electric sells off its lighting division to Savant Systems.

Bites 

CRB Proposes Rule on Use of Proxy Data for Royalty Distribution – On Friday, May 29, the Copyright Royalty Board published a proposed rule in the Federal Register which would allow entities using sound recordings under statutory licenses to use proxy data collected from other licensees for distributing royalties under those licenses.

Copyright Office Issues Publishing Rule on Group Newsletter Registrations – On Thursday, May 28, the U.S. Copyright Office published a final rule in the Federal Register which eliminates the requirement that newsletters must be published twice per week in order to qualify for group registration, allowing for the registration of newsletters published only twice per month.

USPTO Grants Additional Trademark- and Patent-Related Relief – On Wednesday, May 27, the U.S. Patent and Trademark Office announced that it was exercising its authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend patent filing deadlines for small and micro entities to July 1. The agency also announced similar trademark-related relief, including increased availability of petitions to revive applications for missed deadlines or responses to Office actions.

China Reports 5,660% Increase in IP Infringement Cases Over Two Decades – On Wednesday, May 27, South China Morning Post reported statistics published by China’s top investigation and prosecution agency indicating that the number of cases that involve IP rights violations prosecuted in China has increased by 5,660% over the past two decades.

USPTO Proposes PTAB Rule Changes Under SAS Institute – On Wednesday, May 27, the USPTO published a notice of proposed rulemaking in the Federal Register which would amend rules regarding the institution of various validity trials conducted by the Patent Trial and Appeal Board (PTAB) regarding instituting on all challenged claims or denying petitions under the standard set by the U.S. Supreme Court in SAS Institute v. Iancu.

2019 UKIPO Stats Show Increase in Trademark Filing, Decrease in Patent Filing – On Wednesday, May 27, the UK Intellectual Property Office (UKIPO) published agency filing statistics for 2019 showing that, while trademark applications increased by 12.9% over 2018’s levels, patent applications decreased by 8% during that same period of time.

TTAB Rules Certification Marks Creates Likelihood of Confusion – On Wednesday, May 27, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision which denied registration to the standard character mark “REAL MICHIGAN” for wine and hard cider because of its resemblance to registered geographic certification marks for Michigan apples.

CAFC Affirms Dismissal of APA Claims Against the USPTO – On Friday, May 22, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Odyssey Logistics and Technology Corp. v. Iancu in which the appellate court affirmed the Eastern District of Virginia’s dismissal of claims filed against the USPTO under the Administrative Procedures Act (APA). Eastern Virginia had ruled that Odyssey’s claims were either barred by the six-year statute of limitations or for lack of subject matter jurisdiction for claims concerning non-final agency actions.

Barks 

Judge Walter Tosses Copyright Suit Against Shyamalan’s “Servant” TV Series – On Thursday, May 28, U.S. District Judge John Walter of the Central District of California granted a motion to dismiss a copyright suit filed against Apple and other defendants producing the M. Night Shyamalan AppleTV+ series “Servant” after Judge Walter found that there was no substantial similarity between “Servant” and Francesca Gregorini’s 2013 film “The Truth About Emanuel.”

Ninth Circuit Affirms Trademark Win for Jim Beam Over Vodka Logo – On Wednesday, May 27, the U.S. Court of Appeals for the Ninth Circuit issued an unpublished opinion affirming a ruling by the District of Nevada dismissing trademark claims against Jim Beam Brands, finding that the district court did not clearly err in determining that there was no likelihood of consumer confusion between vodka brands which both use a pair of lips as part of their logos. 

Judge Ramos Finds Fair Use for Children’s Song in Burlesque Film – On Wednesday, May 27, U.S. District Judge Edgardo Ramos of the Southern District of New York granted a motion to dismiss copyright claims against Netflix and Apple filed by the creators of a children’s song, “Fish Sticks n’ Tater Tots,” alleging infringement caused by the unauthorized use of that song in a 2017 film about burlesque dancers.

Rovi Loses Interactive TV Guide Patent Claims After Sixth Comcast Challenge – On Wednesday, May 27, the PTAB issued a final written decision in an inter partes review (IPR) proceeding filed by Comcast which invalidated all challenged claims covering an interactive TV guide technology owned by Rovi. The PTAB had previously denied institution to five other IPR petitions filed by Comcast challenging the same patent claims. 

WIPO Unveils Digital Fingerprinting Service to Create Evidence of Intellectual Assets – On Wednesday, May 27, the World Intellectual Property Organization (WIPO) announced the launch of a digital service called WIPO PROOF which is designed to create tamper-proof evidence of the creation of a digital file involving an intellectual asset at specific points in time to aid IP registration and reduce the risk of legal disputes.

Copyright Office Extends Electronic Submission Capabilities During COVID-19 Pandemic – On Wednesday, May 27, the Copyright Office announced that it was expanding its capabilities to receive electronic submissions for agency services including requests for special handling, or expedited processing of notices of termination and other document recordation submissions.

Songwriter Accuses Universal, Sony of Copying Song Published on Facebook – On Wednesday, May 27, songwriter Jesse Harris filed a lawsuit in the Southern District of Florida against Sony, Universal Music Group and Lionsgate Entertainment alleging that original music posted to a Facebook page owned by Harris was copied by the producers of the recently released album “My Baby” by rapper Lil Baby.

USPTO Seeks Additional Public Comments on TTAB Action Information Collection – On Tuesday, May 26, the USPTO published a request for comments in the Federal Register indicating that the agency was seeking comments regarding an extension to an existing information collection focused on actions of the agency’s TTAB.

This Week on Wall Street

Pharma Executives Bristle at WHO COVID-19 Voluntary Patent Pool – On Thursday, May 28, top executives from many of the world’s major pharmaceutical companies gave public remarks during an International Federation of Pharmaceutical Manufacturers & Associations (IFPMA) forum which reflected deep concerns about the voluntary COVID-19 patent pool being launched by the World Health Organization (WHO).

General Electric Sells Off Lighting Division to Savant Systems – On Wednesday, May 27, General Electric announced that it had agreed to sell of the company’s lighting division, once the flagship of the company’s predecessors going back 130 years, to Savant Systems, which will continue to sell lighting products under the GE brand.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2018 are announcing quarterly earnings next week (2018 rank in parentheses):

• Monday: None
• Tuesday: None
• Wednesday: None
• Thursday: None
• Friday: Toshiba Corp. (30th)