Week’s news headlines – May 5th 2017


Fixed-time patent-buying programme IP3 back again for 2017; but this time it’s different
AST is launching a new version of the Industry Patent Purchase Program (IP3) as it looks to once again give patent owners a quick and efficient way to sell their assets.

InterTrust CEO sees Patent Shield hook-up with Google as means to get edge in its VC operation
There have been several attempts in recent years to use patents to help start-ups protect themselves from possible infringement lawsuits. In 2015, for example, Google launched its Patent Starter Program which offered two patent families to 50 early stage companies as well as free membership of the License on Transfer Network.

Patent Pro Bono Volunteer Attorneys Assisting Inventors Across the Country
The USPTO has worked closely with intellectual property law associations to establish a network of independently operated regional Patent Pro Bono programs to provide under-resourced inventors and small businesses who lack the financial resources to file a patent application with legal assistance to secure protection for their inventions. Through these programs, those independent inventors and small businesses can connect with volunteer registered patent practitioners across the entire United States who can assist them with navigating the process for obtaining a patent.

More evidence that Asia is taking the sheen off the US patent system as Japanese business method grants soar
Japan has gone from being one of the most difficult major jurisdictions in which to patent business methods over the past two decades to one of the easiest, according to recent data from the Japan Patent Office (JPO). This is the latest indication that Asia is increasingly staking a claim to the ‘most patentee-friendly’ mantle that was once the preserve of the United States.

Fundamental incongruities of PTAB operations affect the integrity of the patent system
Article I, Section 8 of the U.S. Constitution states a patent is an “exclusive Right”, the very essence of a property right. In 1882, the United States Supreme Court said in James v. Campbell that “[a patent] confers upon the patentee an exclusive property in the patented invention”. The same quote was cited by the Supreme Court as recently as 2015 in Horne v. Department of Agriculture. Eight sitting Justices on the Supreme Court have stated that a patent is a property right. And black letter law (35 U.S. Code § 261) states “patents shall have the attributes of personal property.”

Lex Machina reports that Q1 2017 saw fewest patent infringement cases since Q3 2011
On April 12th, legal data analytics firm Lex Machina released a litigation update report for the first quarter of 2017 which highlights trends in intellectual property suits being filed in U.S. district courts. One of the key findings is that only 938 patent infringement actions were filed in district courts during the recent quarter, a total which is the lowest for a single quarter since the third quarter of 2011 when only 921 such cases were filed.

Defining the Full Glory of Your Invention in a Patent Application
You have entered the innovation market taking your first steps. You had an idea, which has now matured to become definite enough to be characterized as an invention. Now what do you do?

A silver lining
With the release of Azure IP Advantage, Microsoft has agreed to use its patent portfolio to protect customers from litigation. WIPR assesses how the programme will work and how beneficial it might be.

CRISPR: patent battles from the US to Europe
Patent bodies in the US and Europe have issued important decisions in patent battles over the gene-editing technology CRISPR, as Catherine Coombes of HGF reports.

ASML hits back at Nikon in patent clash
Last week, WIPR reported that Nikon had sued ASML and its optical component supplier Carl Zeiss (a company) in the Netherlands, Germany and Japan, accusing the companies of using Nikon’s patented technology in ASML’s lithography systems.

Nintendo in patent win at Federal Circuit over Mii characters
The patent, US number 8,005,303, is called “Method and apparatus for encoding/decoding image data” and is owned by Texas-based RecogniCorp.

In precedential decision, Federal Circuit rules patent directed to encoding and decoding image data is not patent-eligible
On April 28, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in RecogniCorp, LLC v. Nintendo Co., Ltd. (2016-1499) that certain claims in RecogniCorp’s patent were not patent-eligible because they recited an abstract idea.

Indian smartphone upstart says its patent prowess will put it way ahead of domestic rivals
A Hyderabad-based company called Smartron launched its second smartphone yesterday, in a bid to compete with the Chinese manufacturers that have nearly pushed domestic handsets off the map. In a marked contrast to other Indian mobile startups, Smartron and its CEO have been vocal about the importance of patents, and say the company’s approach to licensing will give it a big edge against its domestic rivals.

International report – Keeping up in the patent race for connected cars
As well as driver assistance, software can integrate a smartphone with a car’s infotainment system, such as Apple’s CarPlay, Google’s Android Auto or the Car Connectivity Consortium’s MirrorLink.  The next generation of driver assistance will include so-called ‘connected cars’, which could remove a driver from direct involvement in driving their car. These systems will require the communication of large amounts of data between cars, and between cars and other infrastructure

International report – Federal Circuit unambiguously endorses references to patent drawings as ‘exemplary embodiments’
On April 24 2017 the Federal Circuit in Skedco v Strategic Operations stated that a patent’s use of the phrase ‘exemplary embodiments’ accentuates that the claimed invention is not limited to representations that are identical to those depicted in a patent’s drawings

Patent troll narrative returns to Capitol Hill as relentless push for patent reform continues
“The patent troll narrative has distracted Congress and the courts from seeing how it protects incumbency for our nation’s most dominant big caps by diluting investability in new technology that might one day unseat them.”

University of Tennessee sues Amazon and IBM for patent infringement
The UoT filed its suits at the US District Court for the Eastern District of Tennessee on Tuesday, May 2 and Wednesday, May 3

Pantech patents may be on the move two years after the Korean company’s rescue from bankruptcy
Back in July 2015, IAM reported on a deal which saw Korean smartphone maker Pantech bought out of bankruptcy by a local consortium. As we noted at the time, the company’s supposedly high-value trove of patents played a big role in securing the rescue package – and it now appears that those patents may be changing hands in anticipation of some kind of value creation programme.

After Nikon launches global infringement litigation campaign, defendants fight back with former IV patents
Over the last week a high-profile multi jurisdictional patent dispute has erupted between Nikon and ASML and Carl Zeiss.


Intellectual Property

Foreign companies stand to benefit from Singapore’s new $1 billion IP-focused fund
The Singaporean government has reinforced its strong IP credentials with the establishment of a S$1 billion (US$718 million) public-private investment fund that will target “high-growth companies with strong IP and proven business models”.

Senate judiciary committee holds hearing on intellectual property as a driver of innovation
On the morning of Tuesday, April 25th, the full Senate Judiciary Committee convened a hearing entitled Intellectual Property – Driver of Innovation: Making Our Lives Healthier, Safer, and more Productive. Taking place one day prior to World Intellectual Property Day, the day’s meeting focused on how intellectual property enables innovators to make meaningful impacts in the lives of consumers and the challenges of enforcing intellectual property rights. Echoes of the patent troll debate were also sounded to the likely consternation of U.S. patent owners across the globe.

The case for IP arbitration
For many years there has been an arbitration system in Chile to regulate the granting of internet domains that are in dispute between two or more parties.

New rules for word marks
The Mexican Institute of Industrial Property (IMPI) has adopted a new rule of requesting the applicant of a word mark to detail on the application form the letters either all in upper case or all in lower case, or the first letter in upper case and the rest in lower case (as in a typical sentence).

Great Repeal Bill: when Brexit becomes real
The UK government’s Great Repeal Bill could have major implications for IP owners, both before and after March 29, 2019, when Britain will leave the EU. WIPR reports.

IP enforcement ‘lacking’ in most watch list countries, says 301 Report
Released on Friday, April 28, the report is the result of an annual review of the state of IP protection and enforcement for US trading partners around the world.

Brexit focus: Let the games begin
There are several IP headaches potentially linked to Brexit, particularly the UK’s involvement—if any—in the Unified Patent Court. WIPR considers how IP owners can approach such uncertainties now that article 50 has been triggered.

UKIPO confirms UPC ratification will have to wait
In January, the UPC preparatory committee announced that the UPC could become operational in December.

IP unjustified threats bill receives Royal Assent
The law being replaced puts restrictions on what can be said out of court in order to settle a dispute, according to the Chartered Institute of Patent Attorneys (CIPA).



Trademark hijackers are hurting online advertisers; here’s how to stop them
Avery Labels worked hard to establish its brand among consumers as the premier retailer of label products, as well as providing software solutions through their design-and-print-online tool and one-stop premium printing service, “WePrint.”

News analysis: Three stripes and you’re out
Adidas’s enforcement of its three-stripe trademark has raised controversy in recent times, as WIPR recaps.

HMRC recovers two domain names using its trademark
HM Revenue and Customs, the UK’s tax collecting authority, has recovered two domain names from a UK-based citizen.

Cartier preempts legal action over Drive watches
Cartier filed its lawsuit against watch manufacturer Driva at the US District Court for the Eastern District of Virginia, Alexandria Division on Monday, May 1.

George Lucas foundation hits out in TM claim
Filed on Thursday, April 27, at the US District Court for the Northern District of California, the claim alleged that Educopia had infringed the mark ‘Edutopia’, which is owned by The George Lucas Educational Foundation.

Eagles sue Hotel California over TM infringement
In a trademark claim filed at the US District Court for the Central District of California on Monday, May 1, Eagles alleged that a hotel in Todos Santos, Mexico, infringed the mark ‘Hotel California’.

Amateur American football governing body sues rival in trademark suit
USA Football filed the claim on Tuesday, May 2, at the US District Court for the Southern District of Indianapolis

Hashtag trademarking jumps 64% in one year, says CompuMark
CompuMark released its findings yesterday, May 3, reporting that 2,200 trademark applications for hashtags were made in 2016

Jay-Z hit with baseball cap TM claims
Brand management company Iconix Brand Group filed its suit at the US District Court for the Southern District of New York on April 27

Christmas jumper designers clash in trademark case
Tipsy Elves has taken on rival Ugly Christmas Sweater (UCS) over a Google advert sponsored by UCS which allegedly featured the ‘Tipsy Elves’ trademark.



Court hears Eminem copyright claim against New Zealand governing party
The US rapper’s representatives, Detroit-based Eight Mile Style, claimed the National Party used Eminem’s hit song “Lose Yourself” as part of a campaign advert in 2014.

‘Kung Fu Panda’ copyright suit ends with two-year prison term
Gordon was found guilty of seven counts of wire fraud and perjury at the US District Court for the District of Massachusetts in November last year (pdf).

Street artist takes on British Airways in mural copyright dispute
Claudia Walde, also known as MadC, has claimed her “Chance Street Mural” was used without her permission in the billboard.



Michael Kors sues 100 online counterfeiters
The lawsuit, which requested injunctive relief, was filed at the US District Court for the Southern District of California on Monday, May 1.

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