Week’s news headlines – June 16, 2017

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WIPO: Patent Cooperation Treaty Yearly Review – 2017
Comprehensive facts, figures and analysis of the international patent system.

PTAB denies review of Gillette patent
Dorco filed the petition in December last year, challenging US patent number 6,684,513, as a response to Gillette suing it for patent infringement. Gillette filed a preliminary response in April, stating that Dorco did “not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims

IPR Settlements: A pyrrhic victory for patent practitioners, a loss for patent owners
Quite understandably, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) causes strong emotional responses among many stakeholders in the U.S. patent systems. Among patent owners, a trip to PTAB often involves them relinquishing claims from a Constitutionally-protected property right, an unfortunate fate that befalls more than 90 percent of patents challenged at PTAB.

House IP subcommittee looks for further ways to curb patent trolls after TC Heartland decision
On the morning of Tuesday, June 13th, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet held a hearing titled Examining the Supreme Court’s TC Heartland Decision

Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
There are essentially five patentability requirements

 SIPO amends its Patent Examination Guidelines
SIPO issued on March 1, a decision to amend its Patent Examination Guidelines, which will take effect on April 1, 2017. The amendments involve provisions about business method, software-related inventions, post-filing data, invalidation procedure, accessibility of patent documents and suspension procedure.

From Brexit to pro bono: a busy year for UK patent attorneys
The Chartered Institute of Patent Attorneys has been busy preparing for Brexit and launching a range of initiatives, including a pro bono scheme, as Rebecca Gulbul reports

Federal Circuit partly affirms Volkswagen patent win
The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision that a number of claims of a patent challenged by Volkswagen were unpatentable as obvious

Germany delay probably not the end of the UPC, say lawyers
Germany’s delay of the ratification of the Unified Patent Court (UPC) Agreement is unlikely to signal the end of the project, although it may have knock-on effects

 Adidas fails to block sale of Skechers trainers
In July last year, Adidas filed its lawsuit at the US District Court for the District of Oregon, claiming that Skechers wilfully infringed two design patents related to Springblade, a three-year-old design which helps to propel runners forward

Sovereign Immunity of Patents: While a Strong Benefit to Patent Owners, These Patents Remain Subject to Traditional Challenges
The United States Patent Trial and Appeal Board (“PTAB”) recently dismissed another inter partes review (“IPR”) based on an assertion of 11th Amendment sovereign immunity

Assessing the patent landscape
With PatBase, an online patent database created by Minesoft, users can generate patent landscape reports to enhance their searches. Rob Poolman and Tim Campbell of Minesoft explain more

Canon awarded $4.5m in toner patent case
The verdict was handed down on Monday, June 19, at the US District Court for the Northern District of Georgia, Atlanta Division

Apple steps up battle with Qualcomm by demanding patents be invalidated
In an amended complaint, filed at the US District Court for the Southern District of California on Tuesday, June 20, Apple said the Qualcomm patents should be “rendered obvious” by other patents

Academic Patent Licensing Helps Drive the U.S. Economy
Despite attempts to undermine our technology transfer system, its impact keeps growing and growing

US senators introduce new patent reform bill
The bill, called the STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act, is an “improvement” on the STRONG Patents Act, which Senator Christopher Coons introduced during the last Congress

Merck released from patent suit on barcode technology
Symbology filed a notice of dismissal with prejudice yesterday at the US District Court for the District of New Jersey

Senators Coons and Cotton introduce STRONGER Patents Act of 2017
The Innovation Alliance commends Senators Coons and Cotton for introducing the bipartisan STRONGER Patents Act of 2017. This comprehensive legislation is exactly what is needed to strengthen our patent system, which will promote American innovation, competitiveness and job creation


Bio International Convention 2017

Shooting for the Moon: Creating the Next Generation of Cancer Killers
Aided by the latest genomic and computational technology, innovators in oncology research are developing novel therapies to transcend the limitations of available cancer treatments

BIO Releases Bioscience Economic Development Guide
At the 2017 BIO International Convention, cabinet-level appointees representing Texas, Massachusetts, Rhode Island, and Puerto Rico participated in the report’s release by discussing bioscience industry economic development and state policies that have proven successful in assisting industry growth

BIO 2017: David Cameron talks Brexit, Trump and genomes
“I will think about this every day until the day I die … whether there was something more we could have done to have won the [Brexit] referendum,” said former UK Prime Minister David Cameron


“POWERPOINT”, in spite of its extensive use and high reputation, is not a Generic Name and may be registered as a trademark
“POWERPOINT”, as a trademark on presentation files software is well known by the relevant public, but this does not sever the relationship between the products and the trademark owner MICROSOFT Corporation. Instead, this reputation has strengthened the connection. The word functions as a source identifier of services, and is registrable as a trademark.

Invalidation Action against a Copycat of French GI
The Trademark Review and Adjudication Board and the Beijing Intellectual Property Court invalidated a copycat of an unregistered French GI in China by invoking the Article 10.2 (foreign geographical name known to the public is prohibiting from being registered as a trademark) and Article 10.1.8 (unhealthy influence) of the 2001 Trademark Law.

Royal Salute 3D Trademarks Granted Judicial Protection for the First Time in China
In China, it is difficult for a 3D trademark to get protection, especially judicial protection

Maintaining your reputation
Owners of reputed brands that have low inherent distinctiveness should monitor developing EU case law in order to maintain their status, writes Marina Perraki of Tsibanoulis & Partners Law Firm

 Cheerleading company sues UK woman over “Cheerobics”
The case was filed at the US District Court for the Western District of Texas, Austin division on Thursday, June 15

Geox wins patent case against Outdry
The decision, which was handed down on Friday, June 16, was in a dispute between Outdry Technologies and Geox

Mattel takes aim in Barbie tanning TM opposition
Texas-based company Bronzed Barbie filed an application for the mark in November last year to cover international class 44 (airbrush skin tanning services for humans for cosmetic purposes)

Washington Redskins also winners in SCOTUS Tam ruling: lawyers
Yesterday, June 19, the Supreme Court handed down its decision in Lee v Tam (now Matal v Tam), deeming the government’s ban on disparaging trademarks unconstitutional and overturning more than 70 years of legal practice

Admiral Nelson rum infringes Captain Morgan trademarks, says Canadian court
Diageo sued Heaven Hill, a spirits producer, in 2014 for infringement

International report – Trademark owners be warned: certain services may require a brick-and-mortar location in Canada
The cautionary lesson emerging from a rash of Trademarks Opposition Board decisions over the past several years is that owners of registrations for services (eg, hotel services) without brick-and-mortar (ie, physical) establishments in Canada should ensure that their registrations also cover ‘reservation services’ or other services that are rendered in Canada

Piracy and counterfeiting 

Encrypted messaging and technology continues to assist IP crimes, says report
“Transactions are now often exclusively finalised via the internet, without the necessity of travelling to the source country to negotiate and conclude the trade deal.” – says report

How to deal with online stores selling both genuine and counterfeit products
Some online infringers sell counterfeits mixed with genuine ones as a cover, which is not only an annoying problem but even becomes a real trouble to the brand owners. This creates a possibility for the infringers to harass the right owners by making use of the genuine products they sell

BBC and Netflix unite with 28 companies to fight piracy
On Tuesday, June 13, the companies announced a new global coalition “dedicated to protecting the dynamic legal market for creative content and reducing online piracy”

Intellectual Property

How Artificial Intelligence is set to disrupt our legal framework for Intellectual Property rights
It’s safe to say that most sectors will undergo significant disruption as a result of artificial intelligence (AI) technology.  AI will not only disrupt our business models but it will also disrupt our legal framework for the creation and exploitation of intellectual property (IP) rights, giving rise to new IP challenges for those seeking to develop and deploy new AI systems.

Imposing Greater Pressure upon IP Infringers through Multiple Legal Actions
After initiating a criminal action against an individual trademark counterfeiter, STIHL filed a follow-up civil lawsuit against the trademark counterfeiter and his company, on the ground of both trademark counterfeiting and trade dress infringement. By this civil lawsuit, STIHL solved the trade dress infringement problem and imposed greater pressure upon the counterfeiter.

IP Rights strategies for preventing and handling infringements in China
Securing IP rights in China has been a priority for companies selling or manufacturing in China due to the country’s singular attitude to intellectual property, which has been much abused. Today 84.5% of counterfeits originate in either China or Hong Kong, and as the world becomes progressively more connected alongside the rise of e-commerce and cross-border exportation capabilities, increasingly there is a need for IP protection strategies of all companies to be adapted to Chinese policies.


The Impact of Drake’s Fair Use Copyright Victory on Music Copyright Infringement
Drake’s recent copyright victory is noteworthy because rulings of fair use are rare in songwriting

WWE drops claim against BitTorrent users
WWE sued the pair in March of this year, claiming they worked together to upload the “Eliminators” film, using BitTorrent to share the movie with thousands of users

Exam board sues study help site for copyright infringement
The complaint was filed against Chegg at the US District Court for the Northern District of California on Monday, June 19 

SCOTUS refuses to hear ‘Dancing baby’ copyright dispute
The US Supreme Court has refused to hear the ‘Dancing baby’ copyright dispute, a case centring on a video of a child dancing to Prince’s “Let’s Go Crazy” that was uploaded to YouTube

ISP ‘victim, not perpetrator’ in Sony copyright infringement case
As reported by TBO in April, labels including Sony Music and Capitol Records sued Grande for failing to disconnect users who downloaded music illegally

Domain Name

Philip Morris on a high as marijuana domain names recovered
The respondent, named Ky Le, registered and in October 2016, but the addresses did not resolve to any active websites and instead a message stated “Website coming soon! Please check back soon to see if the site is available”


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