In November 2017 the UK government published its Industrial Strategy. As part of this, the UK IPO made a broad ‘call for views’ from users of the UK intellectual property system on “products, services or other activities the IPO could undertake in order to make the most of the UK’s IP system“, and canvassed opinion on some of the IPO’s specific proposals. The IPO received 53 responses and on 21 May 2018 released a summary of their contents:
Voluntary Register for IP Rights – The idea of a voluntary register for unregistered IP rights looks set to be shelved following “a lack of broad support“. Many respondents were critical and commented on the additional legal and administrative burdens that could arise.
Standard Essential Patents – the consultation summary document strikes a non-committal tone on standard essential patents, stating “the government fully supports standardisation and remains committed to an open and balanced standards environment that supports global, fair and equitable market competition” and the IPO will explore how various measures might improve the framework, including improved guidance. This is a step back from the IPO’s (ambitious) proposal to offer a “system for the determination of licensing disputes between organizations operating in a field involving standards-reliant technologies“, as outlined in the consultation document.
Brexit – Exiting the EU was in the minds of many of the survey’s respondents. The IPO pledges to get “the right outcome for UK inventors, creators and consumers“. Until more is known about the UK’s exit deal and future trade relationship with the EU it is inevitable the IPO is unable to comment on specifics, but it says it has forwarded Brexit-related responses to “the relevant officials”. There is notably no mention of the UPC Agreement or any related survey responses.
IP Finance – The IPO has pledged to work with the British Business Bank and HM Treasury to improve access to finance for high growth IP-rich businesses. A pilot ‘Innovation Enabler’ fund will work with local enterprises and universities in the West Midlands to provide support to local SMEs in implementing an IP strategy and exploring new routes to finance. The IPO’s IP Finance Toolkit, first introduced in 2015, will also be reviewed to ensure its value in helping SMEs prepare for external investment.
Royalty Free Patents – No mention is made in the responses document regarding the IPO’s proposal to allow marking of patents as ‘free to use’ on their face. We can only assume that there was either a lack of engagement or support.
For further detail please see the response document here and the original consultation document here (PDF links).
Reform of EU copyright is the core of the Commission’s Digital Single Market strategy. Various legislative initiatives have been proposed but the “heart” of the reform is without a doubt the proposal for a new copyright directive. While there appears to be a growing consensus on the wording of most articles, a few key provisions remain under debate. In this article we comment on the current 23 April and 17 May 2018 draft proposals published by the Council of the EU (Member State governments’ representatives).
Originally the hope had been to have this legislation finalised by now. However, many provisions have proved controversial. The final vote in the EU Parliament’s committee on legal affairs has recently been postponed to the end of June. The Council published a draft proposal on 23 April 2018. This summarises the main outstanding issues as being: (a) the scope of an additional, optional exception for text and data mining; (b) the scope and term of protection of the press publishers’ right and (c) the scope liability and monitoring obligations for certain service providers (labelled by some the “value gap” provisions). Following a meeting on 27 April, the Council published further draft on 17 May 2018.
Article 3a: Optional Exception for Text and Data Mining Continue Reading
On Tuesday May 8, 2018, the U.S. International Trade Commission (“ITC” or “The Commission”) published amended Rules (19 C.F.R. Parts 201 and 210) regarding practice and procedure in an effort to streamline and “improve the provisions of the Commission’s existing Rules of Practice and Procedure.” See 83 Fed. Reg. 21140-64 (May 8, 2018). The final regulations contain eleven (11) changes from the proposals in the Notice of Proposed Rulemaking (“NPRM”) published by the Commission in the Federal Register at 80 Fed. Reg. 57553-64 (Sept. 24, 2015).
These Rules will go into effect on June 7, 2018, and only apply to investigations instituted after this date.
We have summarized the following amendments in our alert which you can read in full here.
- Rule 201.16(a)(1), (4) and (f) — The Commission may effect service through electronic means and authorizes parties to serve documents by electronic means.
- Rule 210.10(b)(1) — The notice of investigation must specify in plain language the scope of the accused products or category of accused products that will be the subject of the investigation.
- Rule 210.10(b)(3) — The Commission has amended the Rule to note that an initial determination ruling on a potentially dispositive issue in a 100-day proceeding is due within 100 days of institution of an investigation.
- Rule 210.14(h) — The ALJ will have the authority to sever an investigation into two or more investigations at any time prior to or upon thirty (30) days from institution, based upon either a motion by any party or upon the ALJ’s own judgment that severance is necessary to allow efficient adjudication.
- Rule 210.15(a)(2) — The Commission has amended its Rules to indicate that filing motions before the Commission preinstitution is prohibited, with the exception of a Motion for Temporary Relief.
- Rule 210.25(a)(1) and (2) — The Commission has amended its Rules to require that any party may file a motion for sanctions for abuse of process, abuse of discovery, failure to make or cooperate in discovery or violation of a protective order.
- Rule 210.27(e)(5) — The Commission has amended its Rules to be consistent with the Federal Rules of Civil Procedure 26 concerning the preservation of privilege between counsel and expert witnesses.
- Rule 210.28(h)(3)(v) and (vi) — The Commission has amended its Rules to provide for the admissibility of party and witness depositions.
- Rule 210.32(d) and (f) — The Commission has amended its Rules regarding subpoena practice to closer conform with the Federal Rules of Civil Procedure with regard to objections, motions to quash and payment of fees and mileage for appearance in response to a subpoena.
If you would like to sign up for the Hogan Lovells ITC Section 337 Quarterly Highlights newsletter, please click here
With pharmaceutical competition in Europe continuing to evolve, established companies and new market entrants alike need to understand how key patent litigation tools are shaping the competitive landscape.
Increasing competition within Europe’s pharmaceutical space makes knowing the market and understanding available patent protections more critical than ever for both well established and new market players. Andreas von Falck and Miriam Gundt, partners in our Dusseldorf office, say that companies should consider five key factors influencing patent law across the European market.
Watch the 5min video-log here and note the following 5 summary points:
1. Europe: a hotspot for patent litigation Continue Reading
Not long ago, an automotive “innovation” meant a new way of engineering a powertrain or emissions system, which would then be patented by the original equipment manufacturer (OEM) or supplier. A “gentlemen’s agreement” allowed competitors to maintain similar portfolios, routinely infringe on patents, and sustain relationships that were mostly devoid of litigation.
But autonomous and connected vehicles have changed all that. Advanced technology has introduced new competitors into the market that are not bound by old rules.
In this podcast, IP partners Celine Crowson and Dr. Martin Fähndrich discuss the unprecedented disruptions under way in the automotive industry, and why OEMs want policymakers to let autonomous vehicle technologies influence future regulations — not the other way around.
Listen here and visit our Automotive and Mobility sector site for more insights.
We are delighted to be sponsoring and speaking at the 140th INTA Annual Meeting, taking place on May 19-23 in Seattle, Washington. The event brings together 10,600 brand owners and IP professionals from over 150 countries to address new issues in trademark law and practice.
Six of our trademark lawyers will represent the practice on the following panels at the event.
- Katie Feng, Partner, speaking at session CSU50 “Copyright and Trademark: What They Can Learn From Each Other on the Internet Frontier of Trademark Protection.” Sunday, May 20, at 3:00 PM.
- Andreas Renck, Partner, speaking at session CM21 “The Fate of Color Per Se Marks in Europe.” Monday, May 21, at 11:45 AM.
- Imogen Fowler, Partner, hosting topic TSU73 “Tackling Look-Alikes in the Food and Beverage Industry in Europe: Strategies for Filing and Enforcing Brand Get-Up.” Sunday, May 20, at 12:00 PM.
- Charlie Winckworth, Partner, hosting topic TT67 “The Law on ISP Liability and Online infringement: Are we There Yet?” Tuesday, May 22, at 1:15 PM.
- David Taylor, Partner, hosting topic TT76 “New gTLDs: The Rise of the dotBrand and What Brand Owners Need to Know.” Tuesday, May 22, at 1:15 PM.
- Julie Schmitt, Senior Associate, hosting topic TW72 “EU Reform Part II : The Provisions Entering into Force on October 1st, 2017” Wednesday, May 23, at 1:15 PM.
We are delighted to announce that in the Legalcommunity IP&TMT Awards in Milan this week, we were awarded IP Law Firm of the Year.
“…market excellence in reputation, experience and professional knowledge. Particularly active in Fashion and Luxury”
This award swiftly follows our Italian IP and TMT colleagues’ TopLegal Industry Awards just last week and is further recognition of our outstanding Italian IP practice led by Luigi Mansani and Giovanni Ghirardi.
The prominent state of patent litigation in the United States and Germany is explained not only by the size of its markets, but also by a recent increase of hearings before the U.S. International Trade Commission and the Patent Trial and Appeal Board. With an aim at providing coverage for these critical jurisdictions, we are happy to introduce the first update on notable patent law developments, focusing on the U.S. and Germany. This newsletter will summarize a handful of the more notable U.S. and German patent law developments over the past two months.
This issue’s Spotlight article addresses two highly-anticipated decisions by the Supreme Court: Oil States Energy Services v. Greene’s Energy Group and SaS Institute v. Iancu. Both decisions involved inter partes reviews, with the former upholding the constitutionality of these proceedings and the latter requiring the U.S. Patent and Trademark Office to decide patentability of all such claims challenged.
Following the Spotlight article, this issue provides seven short summaries of important case law and legal developments from the U.S. and Germany.
Feel free to contact us by email with any comments or recommendations you might have. Enjoy the first issue of the new U.S. + Germany Patent Update here. This newsletter can also be read in Korean and Japanese.
(Case analysis: Lucasfilm Ltd. LLC v. Ren Ventures Ltd., N.D. Cal., No. 17-7249, 4/24/18)
To assert a successful infringement claim relative to a mark that has arguably never been used as a source identifier for “real world” products, and which has not been actively promoted for nearly 40 years, is a challenge most trademark lawyers would back away from. For one, establishing trademark rights in a fictional product is itself a challenge, much less demonstrating continued consumer recognition of that mark despite a lapse of so many years since its “introduction.” But Lucasfilm is not a stranger to such challenges.
In a recent preliminary decision getting a lot of attention from film buffs and trademark attorneys alike, a federal court in the state of California recognized that trademark rights could arise from the use of a mark to identify a fictional board game in a popular literary genre, even where the mark has never be used in connection with corresponding goods in the real world marketplace and has not been in continuous use since its introduction in the literary space. It is a case that offers an interesting juxtaposition of the protections available under copyright law (for aspects of literary works such as characters and places that are memorable and resonate for the reader) and trademark law.
Lucasfilm, the production company known for culture changing hits such as the Star Wars and Indiana Jones franchises, sued Ren Ventures Ltd., over its use of the name “Sabacc” to identify a new app that enables players to participate in a game that makes numerous references to events, places, and well-known places from the Star Wars franchise (Ref. 1). As part of that suit, Lucasfilm has moved to cancel Ren Ventures trademark registration for the mark “Sabacc” for cinematographic and photographic devices, as well as entertainment on likelihood of confusion grounds.
At the core of its infringement suit is Lucasfilm’s claim that Ren Ventures took the name for their app from a fictional board game that played an important role in theme and character development in the ever-expanding well-loved fictional Star Wars world. The name “Sabacc” first appeared in a draft of the screenplay for “Star Wars: The Empire Strikes Back” in 1980. While the name of the game was not expressly mentioned in the film, it did feature in the subsequent novelization of the film and in a trilogy of novels following the travails of the character Lando Calrissian (who appears in the film) in 1983. It was in those novelizations that the actual rules of the game of “Sabacc” were explained together with an explanation of the important role the game played in the fundamental back story of the franchise. In Star Wars culture, “Sabacc” is the name of the card game that the central character Han Solo skillfully played in order to win the Millennium Falcon from Calrissian. Continue Reading
The Portability Regulation (EU) 2017/1128 came into force on 1 April 2018. Part of the EU Commission’s aim to establish a Digital Single Market, the Regulation facilitates cross-border portability of online content. It allows for subscribed content services to “travel” with the subscriber throughout the entire European Union. Be it movies, sport events, music, e-books, online games, they all need to remain accessible when temporarily abroad in another Member State. Service providers need to make sure this travel option is provided to their customers. Providers of free-of-charge online content services may opt-in but if they do the Regulation applies to the full extent. Importantly, the Regulation applies to both new and existing subscriber contracts.
By 2 June 2018, providers of paid-for services must verify the Member State of Residence of each of their existing customers. To this end the Regulation contains a total of eleven test criteria, out of which the provider can select and use up to two in order to verify. Those include, for instance, payment information. Providers who make content available for free must review existing contracts within the first two months in which they enable cross-border portability. We recommend that service providers affected by the Regulation use the remaining time until 2 June to make sure that verification has been carried out properly and in time. In doing so, service providers should note that applicable privacy laws, including the GDPR 2016/679, must also be adhered to.
In most Member States, including the UK, France and Germany, subscribers are given a cause of action for breach of duty where a breach of the relevant Regulation provision, by the provider, causes damage to the subscriber. This applies to the obligation to verify the subscriber’s Member State of residence.
More information about the new Portability Regulation and its practical impact on the digital economy can be found in our latest blog post on this topic.