Posts in International

Today, the International Trademark Association (INTA) published an amicus brief filed with the Court of Justice of the European Union (CJEU) in a case that should have major implications for the effects of Brexit on EU trademark law. INTA’s brief asks the CJEU to reverse a lower court’s decision and rule that the EU Intellectual Property Office (EUIPO) was correct in determining that UK trademark law can no longer provide a legal interest to sustain an opposition to an EU trademark application filed before Brexit.

On July 29, 2022, a Japanese Internet service company published a press release that  surprised IP practitioners in Japan. DWANGO INC., the appellant and the plaintiff, lost patent infringement litigation against FC2, Inc., a U.S. based content provider, and another party, (FC2), at the Tokyo district court in September, 2018. The press release announced that DWANGO won over FC2 in the appeal at the Intellectual Property High Court (IPHC), which is similar to the U.S. Court of Appeals for the Federal Circuit in the United States. The IPHC determined that, while respective programs at issue in the present case were transmitted from servers outside Japan, it would be substantially unjust if liability for patent infringement could be easily avoided by locating a piece of equipment, such as a server, outside of Japan in today’s digital society.

The House of Representatives’ Subcommittee on Courts, Intellectual Property, and the Internet today held a hearing titled “IP and Strategic Competition with China: Part II – Prioritizing U.S. Innovation Over Assisting Foreign Adversaries,” which focused on the World Trade Organization’s (WTO’s) agreement on a waiver of IP rights for COVID-19 vaccine technologies under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) last June. All of the panelists agreed that COVID-19 is no longer a public health emergency and that an extension of the waiver to diagnostics and therapeutics is likely unnecessary.

The Unified Patent Court (UPC) is now a reality. The Court opens its doors tomorrow, June 1, 2023. In the past four articles, we have aimed to dispel myths about some of the key aspects of the UPC. Part 1 focused on the designated UPC judges, Part 2 on the timelines, Part 3 on the remedies that are available at the UPC and finally Part 4 on the financial aspects of the UPC. These articles illustrated that the UPC will become a success story, since there are simply no good reasons not to engage with the Court. This final installment to the series will provide five predictions about how the UPC will operate. We’ll review in 12 months where our peek into the crystal ball got it right, and where it missed the mark.

The European Commission (EC) is at it again, threatening to regulate standard essential patent (SEP) licensing relationships, despite a lack of evidence that such regulation is appropriate. The economically harmful nature of this regulatory framework (and its prior draft) has been highlighted by many expert commentators, including contributors to IPWatchdog (see here, here, and here) and Truth on the Market (see here and here). Fortunately, the EC’s proposed regulatory framework is still open for public comments. Mindful of that opportunity, on May 23, Mercatus Center scholars Christine McDaniel, Satya Marar, and I filed a public interest submission with the European Commission, focusing on three sets of problems posed by the framework. I summarize our submission below.

On  April 3, 2023, the UK Intellectual Property Office (UKIPO) issued much needed guidance on how digital goods and services – namely non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse – should be classified for trademark purposes. NFTs The UKIPO defines an NFT as “a unique unit of data (the only one existing of its type) that…

Previously, we wrote about how alleged concerns of “hold-up” and a lack of “transparency”, two non-legal terms without accepted definitions, are being used to advocate for special rules applicable to patents subject to declarations regarding Fair, Reasonable and Non-Discriminatory (FRAND) licensing. These vague concepts are specifically chosen to obfuscate the real issues impacting FRAND licensing and used in an effort to shift traditional burdens of proof, regulate behavior previously found not to violate antitrust / competition law, and rewrite the express language of the commitment made by patent owners to the European Telecommunications Standards Institute (ETSI). The European Commission (EC) is the latest bull to enter the FRAND licensing China shop.

Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially resolving a long-standing circuit split where six different tests presently co-exist. It will mark the first time since the Court’s 1952 ruling in Steele v. Bulova Watch Co. that it has spoken on extraterritoriality as it relates to the Lanham Act. Steele found that the Lanham Act does apply to a U.S. citizen using a registered U.S. trademark on spurious Bulova watches, many of which were bought by U.S. citizens in Mexico and brought back to the United States. Steele did not address whether the defendant’s U.S. citizenship, or his sourcing of parts from U.S. suppliers, were necessary conditions to subject matter jurisdiction. Enter Hetronic.

The Unified Patent Court (UPC) is only a fortnight away; it will go live on June 1, 2023. No doubt, the UPC will become a game changer requiring diligent planning and preparation. In order to faciliate such preparation, we have been providing a series of articles that will deal with the most important aspects of the UPC. Whereas Part 1 focused on the designated UPC judges, Part 2 on the timelines and Part 3 on the remedies that are available at the UPC, this Part 4 will address the financial aspects of UPC infringement proceedings.

It is not news that cannabis-based medicines have been used for millennia around the world in the treatment of conditions and diseases such as chronic pain; epilepsy; neuropsychiatric disorders; nausea and vomiting related to chemotherapy; symptoms associated with autistic spectrum disorder; amyotrophic lateral sclerosis; rheumatoid arthritis, among others. However, this topic has been the subject of recent discussions due to the progressive dissemination of scientific data proving the efficacy and safety of their uses. New scientific research and clinical studies are expected, not to mention the revision/alteration of legislation in some countries so that the cultivation, production, commercialization and use of cannabis-based medicines becomes more viable and comprehensive.

On Tuesday, the European Patent Office (EPO) announced the 12 inventors and inventor teams that have been selected as finalists for the 2023 European Inventor Award. The EPO placed three finalists each into four groups: Industry, Research, SMEs, and Non-EPO Countries. Members of the public can vote for the winner on the EPO’s website. The finalists hail from 12 countries, Australia, Austria, Belgium, China, Finland, France, Germany, Iceland, India, Ireland, Italy, and the United States. An independent jury of former European Inventor Award finalists used their expertise to select this year’s finalists.

The Unified Patent Court (UPC) will go live in less than a month, on June 1, 2023. Thus, it’s time to prepare for the biggest change in the global IP landscape in more than a decade. To facilitate such preparation, we will be providing a series of five articles that will deal with the most important aspects of the UPC. Whereas Part 1 focused on the designated UPC judges, and Part 2 on the timelines that govern the proceedings before the UPC, Part III will illustrate the remedies (and the potential enforcement of such remedies) that are available at the UPC in a main action.

On April 27, a pair of legal measures were advanced within the European Union that promise to greatly impact the state of technological commercialization within Europe for both standardized and artificial intelligence (AI) technologies. While political leaders in the EU maintain that either proposal addresses consumer safety and competition concerns, multiple commentators have pointed out issues that could slow the rate of technological commercialization to the detriment of Europeans across the continent.

The United States Trade Representative (USTR) released its annual Special 301 Report on April 26, adding two countries to the “Watch List”: Bulgaria and Belarus. In total, there are now 29 countries on either the Priority Watch List or Watch List, up from 27 last year. Belarus was added because it passed a law that “legalized unlicensed use of certain copyrighted works if the right holder is from a foreign state ‘committing unfriendly actions.’” This includes the U.S. sanctions imposed on Belarus for its support of Russia’s invasion of Ukraine. “

In honor of World IP Day 2023, IPWatchdog yesterday hosted a webinar titled after this year’s theme, “Women and Intellectual Property: Accelerating Innovation and Creativity.” The webinar was sponsored by IP.com and focused on the many ways that advocates for the U.S. intellectual property system can actively create an environment for young professionals to begin thinking about how they can approach careers in the field of IP law. Leading the charge was Renee Quinn, Chief Operating Officer of IPWatchdog, who has handled the business side of IPWatchdog, Inc. for the past 16 years. She was joined by Alison Erickson, Assistant General Counsel, Hallmark; Susanne Hollinger, Chief Intellectual Property Counsel, Newell Brands; and Marlene Valderrama, Senior IP Assets Manager and Lead Technology Scout, Halliburton.