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James Nurton

Partner, Lextel Partners; IP Writer/Consultant

James has worked as an editor and journalist for 21 years specializing in intellectual property law and practice. He was Editor of Managing Intellectual Property from 2000-2017 managing all editorial content for the magazine and online including the annual rankings of the world’s IP law firms. He launched the conference newspapers for INTA, AIPPI and AIPLA events and has originated and moderated conferences, webinars and awards dinners for Managing Intellectual Property and organizations including EPO, WIPO, EUIPO, INTA, ECTA, UCL-IBIL and Fordham IP Institute. He is a member of MARQUES Communication and Membership Team and was an INTA Committee member.

Recent Articles by James Nurton

Five Key Trademark, Design and Copyright Developments in Europe, 2022

Expect further developments in the passage of the designs package next year, as the details are debated in the European Parliament. Despite the extensive consultation already carried out, it is possible that changes will be made to the proposals before a final version is agreed. And the UK Supreme Court will hear the SkyKick case concerning bad faith. A judgment can be expected before the end of the year.

Five Patent Highlights from Europe in 2022

The long-awaited introduction of the Unitary Patent and UPC should provide much interest in 2023, with attention likely to focus on the early numbers of applications for unitary effect, as well as the number of European patents opted out and the volume and nature of cases brought before the Court. At the EPO, decisions are expected from the Enlarged Board of Appeal in Case G 2/21, which concerns plausibility and post-published evidence, and Cases G 1/22 and G 2/22, concerning entitlement to priority. Oral proceedings in G 2/21 were held on 24 November. And the UK Supreme Court should hear the DABUS case and deliver its judgment in 2023.

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.

CJEU Upholds 2019 EU Copyright Directive

The Court of Justice of the European Union (CJEU) has rejected a legal challenge to Article 17 of Directive 2019/790 on Copyright in the Digital Single Market. (Case C-401/19 Republic of Poland v. European Parliament and Council, ECLI:EU:C:2022:297.) The challenge was brought by the government of Poland. It argued that Article 17 of the Directive, which concerns the liability of online service providers for copyright-infringing content uploaded by users, infringed the rights to freedom of expression and information. The rights to freedom of expression and information are guaranteed in Article 11 of the Charter of Fundamental Rights of the EU.

German Decision Could Provide an Answer to AI Inventorship

Germany’s Federal Patent Court has set aside a decision by the country’s Patent and Trademark Office (DPMA) that refused a patent application naming an artificial intelligence (AI) as the inventor. The decision was first rendered in November 2021 following oral argument, but the fully written opinion was only delivered March 31, and was published in German on the court’s homepage on April 19, 2022. The application was filed on October 17, 2019, and is titled “Food Container”. It named the applicant as Stephen L. Thaler and the inventor as “DABUS – The invention was autonomously generated by an artificial intelligence.”

Expert Group Analyzes AI, Copyright and Designs

The European Intellectual Property Office (EUIPO) recently published a deep dive report, titled Study on the Impact of Artificial Intelligence on the Infringement and Enforcement of Copyright and Designs. The report is a product of the Impact of Technology Expert Group, which was established in early 2019. They followed an approach based on Lawrence Lessig’s ‘Code and Other Laws of Cyberspace’ also known as the Code Theory. This describes how human online activity is regulated by law, social norms, and the market, taking into consideration the internet’s technical infrastructure. This approach led to a double-edged sword metaphor, in which a particular technology can be used either to infringe IP rights or to protect/enforce them, presenting to some extent the same features in each case.

OECD/EUIPO Report: China and Hong Kong Account for 75% of Dangerous Counterfeits

A new study on trade in counterfeit goods that pose health, safety and environmental threats has found that China and Hong Kong account for some three-quarters of exports of dangerous counterfeits. It also found that online sales represent 60% of seizures of dangerous products destined for the EU. The 90-page study was published on March 17 and jointly conducted by the Organisation for Economic Co-operation and Development (OECD) and the European Union Intellectual Property Office (EUIPO). It is based on customs seizure data and other enforcement data from 2017 to 2019, as well as interviews with enforcement experts.

Green Light for Unitary Patent and Unified Patent Court

The countdown to the launch of the EU Unitary Patent has begun, with the new system expected to start before the end of this year. The final legal step took place on January 19, when Austria deposited its instrument of accession to the Protocol on Provisional Application of the Unified Patent Court (UPC) Agreement. It is the 13th country to take this step, meaning that the provisional application period has now entered into force. In practice, this means that UPC judges and other staff can now be recruited, IT systems set up and budget confirmed. The provisional period is expected to last at least eight months, i.e. until late September 2022, although it could be as long as 12 months.