Posts in International

INTA: ‘COVIDIOT’ Trademark Should Prevail Under Narrower Test for Principles of Morality

The International Trademark Association (INTA) on Friday filed an amicus brief with the European Union Intellectual Property Office’s (EUIPO’s) Grand Board of Appeal, arguing that “the terms ‘public policy’ and ‘principles of morality’ are inherently vague and therefore carry with them a risk of an inconsistent application and a danger of each examiner being tempted to follow personal preferences rather than clear legal guidance” with respect to a trademark on the term “COVIDIOT” not being “fully in line with public standards.” The case is Matthias Zirnsack vs. EUIPO, Case R-260/2021-G.

Protecting Color Trademarks in Asia

With their creative minds, marketing and advertising folks never disappoint in coming up with brilliant ways to distinguish their goods and services from the competition – for example, Tiffany’s robin’s egg blue and Hermes’ orange. This type of marketing genius allows one to immediately recognize a brand without even seeing the word “Hermes” or knowing how to pronounce it. On the flip side, these ideas are prime targets for copycats. After all, by simply changing the jewelry box color to the exact pantone shade of Tiffany’s turquoise blue, a seller could immediately quadruple his/her revenue by profiting from consumer confusion without having to increase the inventory quality or spend a dime on marketing. The question then is: is it possible to protect a color (or color combination) in all jurisdictions by registering it as a trademark?

‘I Shall Be Released’: A Favorite Song Among SEP Implementers

As we have previously explained, many implementers wish to require patent owners to establish (1) the need for licenses, and (2) that any terms offered are in fact fair, reasonable and non-discriminatory (FRAND), but without having to make any commitment to accepting FRAND licenses, and without ever losing entitlement to the same. With respect to the latter, recall, for example, Apple’s position it its case with PanOptis, namely that PanOptis had “no legal right under U.S. law to impose on Apple an obligation to negotiate a license to Plaintiffs’ portfolios of declared-essential patents or forfeit any defenses for failing to do so” (Apple Inc.’s Motion to Dismiss Count VIII for Lack of Subject Matter Jurisdiction, Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, Unwired Planet, LLC, Unwired Planet International Limited, and PanOptis Patent Management, LLC v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas, June 22, 2020)) [hereinafter Optis v. Apple]. Basically, such implementers want the option of capping their exposure at FRAND rates if ever found to infringe. We refer to this as an implementer wanting to have its FRAND cake and eat it too.

SEP Licensing is Not a Promise, It’s a Two-Way Street

“For 200 years, the world was getting along just fine without a policy statement on SEPs [standard essential patents],” said Andrei Iancu earlier this week at Patent Litigation Masters™ 2022, discussing Biden Administration attempts to revisit the 2019 SEP policy agreement among the U.S. Patent and Trademark Office (USPTO), National Institute of Standards and Technology (NIST) and Department of Justice (DOJ). “Standard essential patents are patents too… the regular rule of law should apply.” Iancu, former USPTO Director, and current partner at Irell & Manella, went on to say that the real goal of those constantly chipping away at patent rights is simple: “Weaken patents so that the big entities can have freer reign to get bigger, to infringe patents in a less encumbered way.”

USTR Needs to Step Up Trade Enforcement

As a former Chairman of the House Judiciary Committee and co-author of major patent legislation, I have a special interest in supporting and protecting U.S. intellectual property rights. So, I took note last month when the Office of the U.S. Trade Representative (USTR) released its latest Special 301 Report on Intellectual Property Protection and Enforcement.

Policy Shift Against SEP Rights Poses Risks for U.S. Innovation and Undermines Mandate of the ITC

resident Biden took an important step toward safeguarding the U.S. economy with last year’s Executive Order No. 14,036, “Promoting Competition in the American Economy,” aimed at promoting competition at home in the face of unfair competitive pressure from state-owned or sponsored firms overseas, particularly in China. That Executive Order includes regulatory and policy reviews across the spectrum of American commerce, noting “a fair, open, and competitive marketplace has long been a cornerstone of the American economy. It also emphasized the importance of achieving this goal through promoting competition and innovation by firms small and large at home and worldwide.” Yet, the proposal directed to one facet of the order — for patents covering inventions that are essential to a technology standard such as Wi-Fi or 5G wireless communication — risks not only undermining American innovation and competitiveness but also upending the notion of fairness and the very policy the Executive Order seeks to advance.

Mossoff-Barnett Comment on EU Commission’s Call for SEP Evidence Spotlights Misconceptions About FRAND Obligations

On May 9, a comment signed by a coalition of 25 law professors, economists and former U.S. government officials, and co-written by Adam Mossoff, Law Professor at George Mason University’s Antonin Scalia Law School, and Jonathan Barnett, the Torrey H. Webb Professor of Law at the University of Southern California’s Gould School of Law, was submitted to the European Commission as a response to the EU governing body’s call for evidence on standard-essential patents. Like another recent response to the EU Commission by a group of scholars with the International Center for Law & Economics (ICLE), the Mossoff-Barnett comment attempts to dispel several misconceptions about the impact that SEPs have on the commercialization of new technologies, especially major communications technologies like 4G/LTE and WiFi that have been widely commercialized to the benefit of the vast majority of global consumers, thanks in large part to the patent rights that help to structure commercialization efforts.

NIH Makes Deal with WHO to Share Key COVID Technologies

The United States National Institutes of Health (NIH) signed a deal today with the World Health Organization’s COVID-19 Technology Access Pool (C-TAP) and the Medicines Patent Pool (MPP) that allows manufacturers greater access to key COVID-19 technologies owned by NIH. The licensing agreement offers 11 technologies under transparent, global and non-exclusive licenses. They include “the stabilized spike protein used in currently available COVID-19 vaccines, research tools for vaccine, therapeutic and diagnostic development as well as early-stage vaccine candidates and diagnostics.”

Scholars Warn EU Commission Not to Upend Delicate SEP Balance

Four scholars with the International Center for Law & Economics (ICLE) have sent comments to the European Commission urging against any changes to the EU’s legal framework for licensing of standard-essential patents (SEPs) that would limit SEP holders’ ability to seek injunctions against alleged infringers. The ICLE scholars write: “It is simply not helpful for a regulatory body to impose a particular vision of licensing negotiations if the goal is more innovation and greater ultimate returns to consumers.” The comments come in response to the Commission’s February 2022 Call for evidence, which explained that “some users have found that the system for licensing SEPs is not transparent, predictable or efficient. This initiative seeks to create a fair and balanced licensing framework and may combine legislative and non-legislative action.” The feedback period ended May 9 and asked stakeholders to submit their views on: “(i) transparency; (ii) the concept of licensing on FRAND terms and conditions, including the level of licensing; and (iii) effective enforcement.”

Senators Call for Transparency as Global Leaders Call for Action on COVID Vaccine Waiver Talks

Senate Finance Committee Chair Ron Wyden (D-OR), Ranking Member Mike Crapo (R-ID) and Senators Bob Menendez (D-N.J.), Charles Grassley (R-IA), Catherine Cortez Masto (D-NV) and Ben Sasse (R-NE) sent a letter today to U.S. Trade Representative (USTR) Katherine Tai asking that she “dramatically improve” transparency in the negotiations surrounding waiver of intellectual property rights under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The letter noted that details of the draft text of a waiver agreement were announced in March, before Congress had been briefed or shown the text. Most recently, a new draft was shared with all World Trade Organization (WTO) Member States that has caused controversy on all sides of the issue.

Doing Business in Russia After the Ukraine Invasion—Justifications and Risks

As horrifying images continue to flow from Ukraine, politicians in the United States and Europe find themselves increasingly pressured to expand economic sanctions against Russia. On April 6, 2022, the White House announced a prohibition on new investment in Russia by any U.S. person. This move has undoubtedly been a factor in the stunning exodus of U.S. companies from the region, as it leaves management teams in legal limbo as to whether maintaining current facilities—or even repairing equipment—could be considered a prohibited “investment.”

WIPO Director General Daren Tang on Expanding IP Access to Women, Youth and Emerging Economies

On April 26—World Intellectual Property Day—I had the opportunity to sit down one-on-one for an extended interview with Daren Tang, the Director General of the World Intellectual Property Organization (WIPO). Tang, who was in Washington, D.C., for the International Trademark Association’s (INTA’s) annual conference, spoke with me on the record for approximately one hour. His energy is palpable, his spirit is focused, and his motivations seem genuine. Tang comes across as confident in his mission and extremely affable, and quick with a joke, describing his relationship with intellectual property as “an arranged marriage,” and noting that it was not “love at first sight” in a nod to his first love—international trade law.

Tax, Metaverse, and Sustainability in Focus at INTA Annual Meeting—Plus Speeches by Tang and Vidal

An understanding of tax issues is increasingly important for trademark practitioners—and a new report by the International Trademark Association (INTA) focusing on the European Union, Switzerland and the United Kingdom aims to help them achieve that. The “Report on the Taxation of Trademarks and Complementary Rights in Europe” was unveiled at the 144th INTA Annual Meeting Live+, which was held in Washington, D.C. and online from April 30 to May 3. There were more than 6,700 registrants from 130 countries.

Importers Beware! Burden Shifting in Patent Infringement Cases

A large portion of the technology that we rely on daily—cell phones, computers, and the sensors and infrastructure that connect them, as well as an increasing percentage of drugs—is manufactured outside the United States, and in particular China. Indeed, over the past 25+ years the value of goods imported from China has increased ten-fold. Most companies are aware of the potential patent infringement liability for sales made in the United States but may not know that liability for infringing a U.S. patent can also extend to the processes used to make their product—even when manufacturing is done entirely outside the United States by a contract manufacturer.

Foreign Filing Requirements Part III: Managing Compliance

In Part II of this series, we reviewed three of the most popular jurisdictions for global patenting and their foreign filing restrictions for cross-border inventions. Our final article in this series will discuss how an applicant’s failure to comply with foreign filing restrictions may result in various penalties, ranging from invalidation of the patent to criminal consequences accompanied by fines, and even imprisonment. Before strategically planning the global patent filing of a new invention, the first step for a practitioner is to gather the relevant information. Because the foreign filing requirements vary greatly among countries, information beyond simply name and address of each inventor (or applicant if different from the inventor) needs to be collected. Given that some countries’ foreign filing license requirements are based on residency as well as nationality, it is necessary to know the citizenship and/or residency status of each inventor.


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