Posts in Guest Contributors

The Supreme Court is currently considering whether to review Amgen Inc. v. Sandoz Inc., the Federal Circuit’s first decision regarding the Biologics Price Competition and Innovation Act (BPCIA). Although the Federal Circuit does not technically have any input into the Supreme Court’s grant or denial of certiorari, it nonetheless took the opportunity last week to bolster one of the challenged holdings: that a biosimilar applicant cannot provide its biologic competitor with 180 days’ notice of intent to commercially market a biosimilar product until that product is licensed. Specifically, in the course of ruling in Amgen Inc. v. Apotex Inc. that a biosimilar applicant must provide such notice even if it participated in the BPCIA’s so-called “patent dance,” the Federal Circuit addressed a primary criticism of its earlier decision, namely, that permitting only post-licensure notice effectively extends by 180 days the twelve-year exclusivity term of the biologic product. The solution suggested by the panel, however, is far from a legal certainty.

Protection of the official names of States and prevention of their registration and use as trademarks have been the focus of attention of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications at the World Intellectual Property Organization (the “SCT”) for over six years (since June 2009). Each of the WIPO Member States has both its own national procedures with their peculiarities and some coinciding positions on the subject. Generally speaking, when performing the examination, the competent national authority examines the sign applied for registration as a trademark and consisting of or containing the name of a State in light of formal and substantive legal requirements, like any other sign.

The patent landscape for self-driving vehicles is also quickly expanding. As of 2013, patent applications related to this technology hit 2,500 per year. That rate is expected to increase. A lot of attention has been paid to the entry of major tech firms, including Google, thanks in part to eyebrow-raising technologies like their patent for an adhesive material for a car’s hood that is designed to “catch” a pedestrian who is inadvertently struck by an autonomous vehicle. But tech companies should expect plenty of competition. Despite reports that Silicon Valley tech giants are entering the autonomous vehicle race and risk upsetting the traditional market, a study from Thomson Reuters Intellectual Property and Science indicates that long-time automakers have taken the lead in autonomous vehicle development in terms of patents and patent applications.

There are a few things that we notice when we look at the patent portfolios originated from the universities. There is no rule that applies to every single university but there are definitely trends that one can spot quickly. For example, universities tend not to file many continuation applications, and instead let patent applications issue out. When the only patent application in the family issues, the prosecution is closed, and there is no ability to file continuation applications. We also don’t see enough attention to portfolio pruning as a way of containing cost. Universities engage in very early stage research, which is speculative by its nature, and therefore many patent applications are filed on technologies that do not turn out to have significant economic value later on. This is a very good recipe for accumulating patents with little or no value.

Is weather modification, or control, a real possibility? If you search for patents dealing with weather controlling technologies, it seems like it’s more of a reality than at first thought. This study is known as Geo Engineering, a deliberate intervention in the Earth’s natural system to counteract climate change.

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. The 2015 report dissects the macro trends associated with filing activity and registrations for 2014 in the following intellectual property areas: patents, trademarks, industrial designs, and plant varieties… The twenty-year era of growth in industrial design patent applications came to an abrupt end in 2014… The decline in global applications stems primarily from the pronounced decrease in resident filings at the State Intellectual Property Office of the People’s Republic of China (SIPO), which fell 14.9% over the past year.

In late 2014, Nike Converse Inc. launched an aggressive attack in the U.S. District Court in Brooklyn against companies including Walmart, Under Armour and Ralph Lauren for infringing upon Converse’s signature Chuck Taylor shoe. Nike Converse sued a total of 31 companies for copying the rubber “bumper” running around the front, a “toe cap” on the top of the shoe above the bumper, and lines or stripes running around the sides of the classic kick. Many of us have either owned or seen the Chuck Taylor and can identify these unique traits.

This decision will continue to have a significant effect on the IP/IT market which has been governed by so many EU Regulations and Directives in the past (albeit not exclusively) that intricately bound the UK to the EU. The UK will in due course enter a negotiation period during which laws will be amended and enacted and international agreements will be negotiated. Due to the required notice period, the actual exit date will not be before 2018. The exact fate of the UK is also still up for debate with many options including retaining membership of the EEA only, or joining EFTA, or having a customs-only arrangement with the EU. The implications of this Brexit are currently very uncertain and will, to a large extent, be determined by the model that would be adopted and the terms of any international agreements negotiated.

On Tuesday, June 28, Apple was granted a new patent, U.S. Patent No. 9,380,225, entitled “Systems and methods for receiving infrared data with a camera designed to detect images based on visible light.” The patent essentially discloses a method for a smartphone’s camera to receive data over infrared waves—data that could alter functionality of the phone. Since the grant of the patent there has been a viral outpouring of articles on using this technology to disable photography and video capture, particularly at live concerts and theater events. While this apparently invasive tech may be something to keep an eye on, it’s important to consider if this can be implemented tomorrow, in a future iPhone, or in an Apple device further down the road. How soon should we start to worry?

As is being widely reported in the general press, the UK has voted to exit the European Union. There are many questions about what this decision means to the global economy, but for the intellectual property systems at least, we see no significant changes in the short term.

The DTSA’s provision for civil seizures provides victims of trade secret theft with a powerful remedy to prevent further dissemination of the trade secret and limit further harm. However, Congress balanced this powerful tool with severe consequences for those movants who misuse it. When seeking to use this remedy, victims of trade secret theft must be careful to comply with all the detailed requirements or they may be far worse off than before. It is a powerful weapon, but like most powerful weapons, it must be handled with great care lest it cause serious self-inflicted injury.

As the UK indeed voted for Brexit, the Unitary Patent system will now have to be re-negotiated altogether. The Unitary Patent Regulation states that the Unitary Patent cannot start before the UPC Agreement has been ratified by 13 participating Member States, including the three Member States in which the highest number of European Patents had effect in 2011, i.e. France, Germany and the UK. That alone means that the Unitary Patent must be put on hold now the Brexit referendum has been approved. Indeed, as a non-member of the EU, the UK will not be able to further participate in the Unitary Patent. Without the UK, with its market size and its reputation for patent litigation, the Unitary Patent will lose substantial value.

The premise is simple. Turn on the radio this weekend and many, if not most, radio stations will be counting down the top songs of all time in their particular genre…. When Gene interviewed me in November 2015 we did talk about music and he tells me I’ve given him a hard time about his own top 25 songs since, which he published during the 4th of July weekend 2015. I don’t remember giving him a hard time, and if I did, well, I apologize. Although looking at his list I probably should have! In any event, I’m pleased to participate in what I understand will become a yearly endeavor with different IP professionals asked to provide their own top 25 each 4th of July weekend.

Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016) (Before Dyk, Wallach, and Newman, J.) (Opinion for the court, Wallach, J.). The test for obviousness is not whether the devices disclosed in various references are physically combinable, but whether a person of ordinary skill, in possession of teachings of the references, could arrive at the claimed invention. Further, the modification of Caterpillar would be minimal, as it would simply require replicating the mechanism for moving the first jaw to move the second jaw.

The “troll” narrative of Nakajima and Snow will have us believe that any patent lawsuit to resolve a dispute constitutes abusive litigation. Economic folklore devoid of scale and proportion should not mislead this blog’s readers. First, even if one takes at face value Nakajima’s “six to seven figure” cost for settling per suit, those costs amounted to about $100 million in 2014. This is less than 0.01% of the $1.1 trillion in U.S. automobile sales in 2014, hardly a “serious drain on the automobile industry.” The growth in number of suits may simply be a result of the automotive industry shifting from traditional incremental improvement into adoption of new technologies developed outside that industry such as radar, sensors, navigation, video imaging, smart displays, batteries, electric propulsion, and computer-controlled systems. Second, we have shown that allegations that the Selden patent litigation “stifled the infant automobile industry” are false. We do so in-depth elsewhere by marshalling historical empirical evidence from primary sources in our article The “Overly-broad” Selden patent, Henry Ford and Development in the Early US Automobile Industry.