Week’s news headlines – oct. 24th 2014

Pitt revises handling of intellectual property rights deal

The University of Pittsburgh is revising its approach to a controversial intellectual property rights agreement it told employees they must sign and plans to offer more options about the timing of when those rights are assigned.

Pitt spokesman Ken Service said specifics won’t be available until Monday about proposed changes to the agreement. Some faculty had criticized the language of the agreement as a violation of their academic freedom.

Saiba mais em: http://www.post-gazette.com/local/city/2014/10/24/Pitt-revises



Wulian Fights Back, Says it Owns ‘ZigBee’ Trademark in China

Wulian (Nanjing IoT), a self-proclaimed giant in the OEM market for home automation products, says the ZigBee Alliance is wasting its time protecting trademarks and other nonsense. The OEM/ODM was called out by the Alliance for misrepresenting itself as the Chinese headquarters for ZigBee and for claiming falsely that its products are ZigBee-certified. They’re not.

Saiba mais em: http://www.cepro.com/article/wulian_fights_back_says_it_owns_zigbee



Eli Lilly’s Sales Hit Again by Patent Expirations

Eli Lilly & Co. said its sales and profit fell in the most recent period, reflecting patent expirations and generic competition.

Saiba mais em: http://online.wsj.com/articles/eli-lillys-sales-hit-again-by-patent



Changes in Law Help Bring Down ‘Patent Trolls’

For two decades, companies that buy software patents to sue technology giants have been the scourge of Silicon Valley. Reviled as patent trolls, they have attacked everything from Google’s online ads to Apple’s iPhone features, sometimes winning hundreds of millions of dollars.

Saiba mais em: http://www.claimsjournal.com/news/national/2014/10/24/256775.htm



Federal suit alleges patent infringement by seismic venture

Wireless Seismic is facing lawsuits alleging that part of its system for linking seismic sensors without cables infringes on a rival firm’s patents.

Saiba mais em: http://www.houstonchronicle.com/business/energy/article/Federal



Apple Cries ‘Troll,’ Marvin Gaye: Intellectual Property

Apple Inc. (AAPL), barred from calling its opponent a “patent troll” during a trial, did exactly that less than an hour after jurors found in favor of the iPhone-maker and rejected claims for $93.7 million in damages.

GPNE Corp. claimed as many as nine Apple products, including the iPhone5, the iPad3 and iPad Mini, infringed its patents covering wireless data communications in pagers. The federal jury in San Jose, California, arrived at its decisions Sept. 22, in its second day of deliberations.

Saiba mais em: http://www.bloomberg.com/news/2014-10-24/apple-cries-troll



Curb “patent privateers” to protect intellectual property

Effective intellectual property protections are imperative to maintaining a robust economy and promoting innovation—and patents are an important facet of this regime. Unfortunately, bad actors are exploiting loopholes for personal gain and threatening the health of the current system—one that is generally working well.

Saiba mais em: http://www.cityam.com/1414157800/curb-patent-privateers-protect



Crocodiles in New Zealand: defending trade marks against revocation for non-use

In a recent High Court decision in the long-running Court battle between Lacoste and Crocodile International Pte Ltd (“CIPL”) in New Zealand, Collins J allowed Lacoste’s appeal from an Intellectual Property Office of New Zealand decision to revoke the registration of a “Crocodile” and Crocodile Device Trade Mark on the grounds of non-use.

Saiba mais em: http://www.lexology.com/library/detail.aspx?g=c31e607c-c2db



Lucasfilm Objects to ‘Strikes Bock’ Beer Trademark

The prospect of Lucasfilm suing a small New York-based brewpub over potential marketplace confusion sounds like a joke, but it’s not: The Disney subsidiary has filed a notice of opposition against Syracuse’s Empire Brewing Co. over its attempts to trademark the name of one of its beers.

Saiba mais em: http://www.hollywoodreporter.com/heat-vision/lucasfilm-objects



Apple wins lawsuit over expired pager patents, dubs opponent ‘patent troll’ in email

GPNE Corp, a Honolulu company that licenses technology patents, took Apple to court recently over a few patents the company claimed were violated in several of Apple’s iOS products. The technology in question was originally patented for pagers (remember those? yeah, me neither) and the patents have since expired.

Saiba mais em: http://9to5mac.com/2014/10/22/apple-wins-lawsuit-over-expired



U.S. court upholds patents on Pfizer’s cancer drug

A U.S. district court ruled in favor of Pfizer Inc in a patent lawsuit it filed against Mylan Inc alleging patent infringement on its cancer drug, Sutent, Pfizer said.

Saiba mais em: http://www.reuters.com/article/2014/10/23/us-pfizer-mylan-canc



Lilly’s profits suffer as patents expire

US drugmaker Eli Lilly hasn’t been involved in the wave of M&A sweeping through the pharmaceutical industry this year, but its latest earnings help explain why it’s happening.

Saiba mais em: http://www.ft.com/fastft/225372/post-225372



Amgen seeks injunction to protect patents

The US biopharmaceutical company Amgen has filed a patent infringement lawsuit against Sanofi and Regeneron in the US District Court of Delaware. The suit claims the companies are infringing Amgen’s patents on monoclonal antibodies (mAbs) to proprotein convertase subtilisin/kexin type 9 (PCSK9).

Saiba mais em: http://www.rsc.org/chemistryworld/2014/10/amgen-seeks-injunction



$19.5M Judgment That Citrix GoTo Products Infringed Patents Upheld by Federal Circuit

SSL Services LLC generally walked away the winner after an Oct. 14 Federal Circuit decision that added to the court’s standards on a number of patent law issues and left in place a multimillion dollar judgment against Citrix Systems Inc.

Saiba mais em: http://www.bna.com/195m-judgment-citrix-n17179907032/



Apple Defeats Patent Suit Challenging Its Mobile Technology

Apple defeated a civil suit brought by a Honolulu company that was seeking $94 million in damages for allegedly infringing on its patents for pager technology.

Saiba mais em: http://recode.net/2014/10/22/apple-defeats-patent-suit-challenging



The Patent Prosecution Highway continues to be a phenomenal success in Canada

The Patent Prosecution Highway (“PPH”) program continues to be a phenomenal success in Canada. It has positioned the country as a highly cost-effective jurisdiction in which to procure patent protection with exceptional speed and efficacy. According to statistics maintained by the Canadian Intellectual Property Office (“CIPO”), applications examined under the PPH have far shorter wait times for examination, receive fewer office actions and are granted at a higher rate. Accordingly, the fast tracking of patent examination under the PPH can generate significant cost savings for applicants without sacrificing patent quality.

Saiba mais em: http://www.smart-biggar.ca/en/articles_detail.cfm



Alice Ruling Not Enough to Stop Patent Trolls 

Imagine this scenario: You’re an app developer, trying to create a small business in your free time. You push your app to the Apple iTunes store and the Android Marketplace and you start seeing some modest success. Then comes the patent troll threat: a dense 100-plus-page document, full of legalese and nearly impossible to understand, threatening a lawsuit for “patent infringement” in federal court if you don’t pay up, either in cash right away or by promising away a percentage of your future profits.

Saiba mais em: http://www.rollcall.com/news/alice_ruling_not_enough_to_stop_patent_trolls



ICC BASCAP calls for stronger intellectual property rights enforcement in ASEAN

The International Chamber of Commerce (ICC) Business Action to Stop Counterfeiting and Piracy (BASCAP) group called today on the Association of Southeast Asian Nations (ASEAN) and its 10 member states to do more to promote the value of intellectual property (IP) as a key driver for the region’s growth and economic development, and to step up intellectual property right (IPR) enforcement actions to stop counterfeiting and piracy and other IPR infringements that are hurting the region’s economies.

Saiba mais em: http://www.iccwbo.org/News/Articles/2014/ICC-BASCAP



Achtung! Patents Ahead

Wikileaks’ revelations of the TPP’s intellectual property chapter highlight a particularly insidious attempt by the United States to undermine India’s patent regime, thus undermining its efforts to keep medicines affordable

Saiba mais em: http://www.outlookindia.com/article/Achtung-Patents-Ahead/292311



Weak Trademark? You May Still Make The Practice Squad

The strength of a football player can be categorized in three groups. The strongest players make it on a NFL team’s roster as starters or backups. Weaker players are relegated to a team’s practice squad. The weakest players do not play in the NFL and pursue careers that require no athletic ability, like trademark law.

Saiba mais em: http://www.mondaq.com/unitedstates/x/348588/Trademark/Weak+Trademark



Copyright: Europe explores its boundaries – new UK infringement exceptions – the ones that came back again 

n June of this year, we sent out an alert about the anticipated new UK copyright infringement exceptions. These exceptions were to be introduced based on the recommendations of the Hargreaves Review. Surprisingly, some of the exceptions had been dramatically pulled from the legislative slate at the last minute.

Saiba mais em: http://www.lexology.com/library/detail.aspx?g=d301844f-330e-4e76



YouTube Has Paid $1 Billion to Copyright Holders Since 2007

YouTube has paid out a cool $1 billion to copyright holders since 2007, the company confirmed to NBC News. It’s all part of YouTube’s Content ID program, which, according to a Google spokesperson, scans 400 years’ worth of content every single day for potential copyright issues. What is Content ID? Back in the old days before Google purchased YouTube, major TV networks and record companies complained that the service was chock full of copyrighted programs.

Saiba mais em: http://www.nbcnews.com/tech/internet/youtube-has-paid-1-billion



Parody copyright laws set to come into effect

Changes to UK legislation are to come into force later this week allowing the parody of copyright works.

Under current rules, there has been a risk of being sued for breach of copyright if clips of films, TV shows or songs were used without consent.

Saiba mais em: http://www.bbc.com/news/entertainment-arts-29408121

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Eletronic certificate of registration

Resolution No. 136/2014, which refers to electronic certificate of registration was approved by the BPTO on September 15, 2014, and became effective in last September 30.


Pursuant this new resolution, all certificates of registration will be issued, exclusively, in digital format, upon electronic signature of the Certification Authority.


This new rule is also valid for pending certificates of registrations, duplicates and renewal certificates.


Therefore, as of September 30, 2014 on, all Certificate of registrations issued in digital format will be available on the BPTO’s website, through protected password and under its control and monitoring.


For  more details please feel free to contact us:


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Tackling the patent backlog in Brazil



Gabriel di Blasi

It’s been a long time coming, but perhaps the Brazilian patent office is finally going to deal with the logjam of patent applications, says Gabriel di Blasi.

The Brazilian Patent Office (INPI) has been facing a huge backlog of patent applications, which has led to an average waiting time for examination of about 10 years, an extremely long period compared with other countries. The delays apply for both patent and utility model (UM) applications, with the examination of UM applications being slightly less, around eight years.

According to the INPI, the number of patent applications pending examination, mainly in the biotech, pharmaceutical, electronic and telecommunication industries, has been increasing every year, and is estimated to reach nearly 200,000 by 2015.

The initial cause for the backlog was a change from the Brazilian Industrial Code (CPI) to the Brazilian Industrial Property Law (LPI), finally recognising patent rights for pharma, agriculture and biotech. This allowance caused an overwhelming surge in patent applications in Brazil. For example, in 1995 the number of patent applications filed was about 16,000 per year. In 2013, this number reached approximately 34,000 patent applications.

Several other factors have contributed to the backlog. The INPI did not have sufficient infrastructure, especially examiners, to support such an increased demand, and its workers were frequently on strike with demands for wage increases, better working conditions, and the hiring of new examiners.

Additional delay for the examination of applications in biotech and pharma is caused by the double patent examination performed by the Brazilian Health Surveillance Agency (ANVISA). In 2001, in order to promote and develop generic drugs in Brazil, the Brazilian government established a special provision for patent examination in these technical areas.


Originally, the government provision regarding ANVISA’s review of pharma patent applications applied only to ‘pipeline’ cases, which allowed for applications by owners of existing patent applications in these areas between May 15, 1996 and May 15, 1997.

It was later expanded to include all new, regular pharma applications as well as biotech applications. This causes several problems for granting patent rights in both sectors and creates legal uncertainty for overseas pharmaceutical companies.

The effects caused by the backlog have been tremendous. Aside from the legal uncertainty, because there is no guarantee as to when the patent rights will be granted, such delays in protection can have a spiralling effect on manufacturing costs, as the owners do not have the patent rights to prevent third parties from using their technologies, incurring a higher cost for bringing their products to market. These effects weaken the Brazilian IP system as a whole.

LPI provisions

Although Brazil has been plagued with this backlog, the LPI has some provisions to expedite the examination of patent applications, as well as to reduce the backlog. A resolution allows for expedited examination:

When the applicant is older than 60 years;
If the object of the patent application is being counterfeited by third parties; or
If the grant of the patent is a condition to the achievement of financing from development agencies or a Brazilian official credit institution for exploration of the product or process object of the patent application.

In addition, third parties can petition to expedite applications when they are being accused by the applicant of using their product or process without authorisation.

The Green Patent Program aims to reduce the examination of patent applications on ‘green’ technologies to less than two years. The INPI has established certain guidelines and has limited the programme to certain technologies, such as alternative energy, transportation, energy conservation, waste management and agriculture.

The INPI has also implemented an electronic filing system for patent applications, known as the E-Patent system. This system started in the spring of 2013 and will provide access to all information regarding patent issues, including the technical opinions of patents and their respective charters, all procedures of patent applications and patent lawsuits among others. The INPI expects this system to be fully functional by 2015.

In addition, the INPI has reorganised the channels for application examination, creating examination lines for each type of application, and entered into cooperation with the National Council of Technological and Scientific Development to increase the number of examined patent applications.

However, these actions and measures are not enough to reduce the patent examination time, nor are they enough to substantially reduce the backlog in Brazil. The INPI needs to move forward with hiring and training new examiners, especially in pharmaceutical and biotech areas, and review the guidelines for examination in order to simplify the procedures of the examiners for examination.

According to the INPI, decisions related to rejections and allowances of patent applications and granted patents decreased between 2009 and 2012. However, if the INPI hires and trains new examiners for 2014 the prediction will be to reach 49,000 and 35,000, respectively, by 2015. Based on this scenario, the INPI expects to reduce the time frame for examination to as little as four years.

The INPI needs to move swiftly to enact the changes it has set to address the massive backlog and reduce the examination time for patent applications in Brazil. These measures have the potential to bring the Brazilian patent system more in line with the rest of the developed world and will provide more legal security for foreign investments. In the meantime, being aware of measures to expedite applications can help both foreign and domestic patent seekers better protect their interests.

Gabriel Di Blasi is a partner at Di Blasi, Parente & Associados. He can be contacted at: gabriel.diblasi@diblasi.com.br

INPI, patent backlog, CPI, utility models


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