Week’s news headlines – Apr. 20th 2017

If patent owner intends a special meaning, clear disavowal of ordinary meaning required
In an April 4, 2017 decision, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) findings of anticipation or obviousness in two inter partes review (IPR) proceedings. The Court also affirmed in part and reversed in part the Board’s findings of patentability for certain claims.

Mylan’s proposed ANDA drug does not infringe MedCo patents
The Medicines Company (“MedCo”) sued Mylan, Inc. (“Mylan”) alleging infringement of two patents (the ’727 patent and the ’343 patent) after Mylan submitted an Abbreviated New Drug Application (“ANDA”).  Mylan counterclaimed, seeking a declaration that the patents were invalid. The patents are directed to pharmaceutical formulations, or “batches,” of the drug bivalirudin, which is used to prevent blood clotting in patients undergoing cardiac catheterization. The goal of both patents is to achieve “batch consistency,” or a consistently low level of impurities in each batch of bivalirudin. The issue at the district court and on appeal is whether the claims of the ’727 and ’343 patent require batch consistency to be accomplished through an “efficient mixing” process.

Myopia in the C-Suite is Wrecking America’s Patent System
While there are notable exceptions to the general rule (e.g., IBM, Qualcomm, Apple, Microsoft), innovation primarily comes from truly small entities [1], such as start-ups, small businesses, individuals and entrepreneurs. This is true because innovation, by its very nature, requires three ingredients: (1) risk-taking; (2) challenges to the status quo; and (3) a significant investment of time, money and resources.

2016 Patent Market Report: Patent Brokers and Patent Packages
2016 saw a significant rise in both the number of patent brokers and patent packages, with the latter mostly due to IAM Market packages. Though the frequency of package sizes is similar to 2015, there is a remarkable increase in single-asset packages in 2016. While the growth of single-asset packages is again attributed to IAM Market, we continue to see a trend of the market favoring smaller packages due to their marketability.

Huawei earns first victory against Samsung in China over smartphone patents
On Thursday, April 6th, multiple news outlets were reporting that Chinese telecom company Huawei Technologies, Ltd. had prevailed in a patent infringement case which it filed against South Korean consumer tech giant Samsung Electronics (KRX:005930). The decision requires Samsung’s Chinese subsidiaries to hand over 80 million yuan ($11.6 million) to Huawei and could mark a major shift in the global smartphone market.

DLA Piper hires Hogan Lovells partner to head China practice
Fisher joins from Hogan Lovells, where he served for six years.

Apple settles with Unwired Planet day before trial
This ended several years of litigation between the parties.

With patents so hard to enforce in Japan the continuing fall in applications at the JPO is no real surprise
Continuing a trend manifested over the past decade, the number of patent applications submitted to the Japan Patent Office (JPO) fell again in 2016, as businesses reappraise the role that Japanese assets play in their IP portfolios. However, the decrease was significantly smaller than in previous years – suggesting that filing rates may be levelling out, for now.

Definiteness and Patent Drafting: The Nautilus Surfaces
The public notice function of patents lies at the heart of the definiteness requirement

Optimizing Patent Applications: Drafting to Withstand Challenge
Drafting patent applications can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB).

“We’re not sure that investing significant amounts of capital in patents really makes sense,” says WiLAN CEO
Yesterday’s news that WiLAN will purchase an Internet of Things (IoT) business as it looks to diversify away from patent licensing represented another nail in the coffin of the NPE sector as we know it.

With patents so hard to enforce in Japan the continuing fall in applications at the JPO is no real surprise
Continuing a trend manifested over the past decade, the number of patent applications submitted to the Japan Patent Office (JPO) fell again in 2016, as businesses reappraise the role that Japanese assets play in their IP portfolios. However, the decrease was significantly smaller than in previous years – suggesting that filing rates may be levelling out, for now.

2016 Patent Market Report: Patent Prices and Key Diligence Data
What is a good price for a patent? Are you getting a great bargain or are you being overcharged? Are you overcharging or selling yourself short? Whether as a buyer or a seller, those are hard questions to answer without comprehensive pricing analysis. In the absence of a truly public market in which a buyer or seller can look at comparable packages, many questions arise around pricing. It is difficult to know what is a fair price, a bargain price or a good deal. We continue to address these questions with our pricing analysis. We use the pricing analysis not only to help our clients buy and sell patents, but also to provide market-based pricing – knowing the asking price of an average patent allows us to model the price of a specific patent or package. As an added benefit, this method avoids discounted cash-flow analysis and having to determine an imputed royalty.

A Software Patent Discussion with Matt Levy
It is probably fair to say that Matt Levy’s views are contrary to mine with respect to many patent related matters, but particularly so with respect to software patents. It, therefore, probably comes as a shock to at least some that we have a very cordial and friendly relationship. We chat whenever we are attending the same industry functions, we get together for lunch periodically in DC, we talk via telephone, and we swap e-mails.

Federal Circuit remands part of Samsung’s $15.7m patent ruling
The US Court of Appeals for the Federal Circuit remanded part of a patent suit earlier this week, meaning that Samsung may not have to pay the full $15.7 million in damages to Rembrandt Wireless.

Uber follows in footsteps of Google and AST with new patent purchase promotion
Uber has announced that it is established a patent buying programme modelled on similar initiatives recently launched by Google and a consortium led by defensive aggregator Allied Security Trust (AST).

Want to Revive the Economy? Restore the Patent System!
Forgetting the lessons of the past is an expensive way to learn.

SCOTUS Asked to Resolve Splits in Patent-Eligibility Analysis in Context of Video-On-Demand Technology
On April 13, 2017, Broadband iTV, Inc. (“BBiTV”) filed a petition for a writ of certiorari with the Supreme Court of the United States, requesting that the Court to take the case to resolve three recurring issues relating to patent-eligibility and the procedure by which courts analyze patent-eligibility. Charles R. Macedo and Sandra A. Hudak of Amster, Rothstein & Ebenstein LLP and Paul Alston and John Rhee of Alton Hunt Floyd & Ing were authors on the brief.

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.

Audi and VW handed victory at Federal Circuit
In a win for Audi, Volkswagen (VW) and other car makers, the US Court of Appeals for the Federal Circuit affirmed that seven patents owned by patent licensing company West View Research are invalid.

Motorola continues patent war against Hytera
Motorola Solutions has sued Hytera Communications in Germany as part of its continuing war against the China-based company.



Kerrygold seller obtains restraining order over butter TM
On Thursday, April 13, Ornua obtained the temporary restraining order against Eurogold and Old World Creamery.

Moncler recovers 148 domains in cybersquatting battle
Italian sportswear company Moncler has recovered 148 domain names featuring the company’s ‘Moncler’ trademark, with the majority selling counterfeit goods.

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.



Beyoncé seeks to dismiss $20m copyright suit under fair use
Back in February, the estate of deceased New Orleans rapper Anthony Barré, also known as Messy Mya, brought the lawsuit against Beyoncé and Sony Music at the US District Court for the Eastern District of Louisiana.

Hot Topic in hot water with artist in copyright suit
US-based retail chain Hot Topic has come under fire in a copyright infringement lawsuit focusing on a dragon design created by an artist.



Gucci grabs $9m verdict in counterfeiting claim
Gucci America, the US arm of the luxury brand, has secured a $9 million verdict and a permanent injunction against online counterfeiters.


Intellectual Property

China’s IP and business environments continue to move in opposite directions, say foreign firms
It is IP week in China, and that means we’ll be getting a lot of statistical insight into China’s relatively closed court system in the coming days as the Supreme People’s Court releases white papers summing up how many IP case were filed and by whom in 2016

Top 3 Ways Legal Tech is Improving IP Management
From the moment we wake up in the morning, until the moment we lay our heads down on the pillow at night, we consume an immeasurable amount of information about every facet of our lives. Think about it, would you go to a movie or try a new restaurant without first Googling reviews and then checking out reservations or show times on booking sites like Open Table or Fandango? For most of us, the answer is probably no, because modern technology makes doing it so simple! Today’s technology delivers terabytes of data to our fingertips in an easily digestible, visual format that allows us to make better decisions.

Pierce Atwood boosts IP practice with four attorneys
US-based law firm Pierce Atwood has strengthened its IP practice with the appointment of Robert Abrahamsen, Ilan Barzilay, Christopher Baxter and Cyrus Miller.

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End of double patentability analysis in Brazil

Back in 2001, new articles were inserted into the Brazilian Industrial Property Law (Law n° 9.279 / 96 – IPL), among them Article 229-C, which established that the granting of patents for pharmaceutical products and processes depended upon prior consent from ANVISA [Brazilian Health Surveillance Agency].

From 2001 to 2012, the Brazilian PTO initially analyzed the patentability of patent applications and, after concluding that the subject-matter analyzed was patentable, applications related to pharmaceutical products and processes were sent to ANVISA for a second patentability analysis. ANVISA then decided on whether to consent to the patent application. When there was agreement between ANVISA and the BPTO, the application would return to the BPTO, and its status would change to “allowed”. In the case of disagreement between the institutions, when ANVISA did not provide consent, the application would be returned to the BPTO and, in practice, it was not re-examined nor allowed by the BPTO.

In 2009 and 2011, the Brazilian Federal Attorney General (AGU) issued opinions confirming that the examination of patent applications concerning patentability was not the role of ANVISA, and that ANVISA should proceed exclusively with public health analysis. However, if the subject-matter of the analyzed patent application could be used in at least one therapeutic destination related to the Unified Health System (SUS), said application could be analyzed for patentability by ANVISA.

In 2012, the BPTO changed the procedure for forwarding applications to ANVISA, and applications related to pharmaceutical products and processes were first sent to ANVISA. In cases where ANVISA provided consent, the application would have its merit analyzed by the BPTO and, if ANVISA denied prior consent, it would be removed from the active records by the BPTO.

Considering that there was still double patentability analysis being conducted in some situations, it began to generate much discussion and controversy, as ANVISA and the BPTO often have different technical opinions on the same subject-matter.

In order to pacify these procedures, Joint Ordinance No. 1 was published on April 12, 2017, which establishes the following main points:

• ANVISA’s prior consent is still required, in accordance with Law No. 9,279 (Article 229-C of IPL);
• After the formal examination carried out by the BPTO and the request for examination, the application will be sent to ANVISA;
• ANVISA will analyze applications in the light of public health. Applications comprising a pharmaceutical product or process that present a health risk resulting from a substance whose use has been prohibited in the country will be considered contrary to public health. If ANVISA denies consent, the application will be forwarded to the BPTO for definitive removal from the active records;
• In the case of patent applications containing a pharmaceutical product or process of interest to the Unified Health System (SUS), ANVISA may issue an opinion, with patentability analysis, which will serve only as information for aiding the technical examination to be carried out by the BPTO. The BPTO may use its discretion for accepting ANVISA’s opinion in its analysis but is not required to do so.

In the other cases that do not present a health risk to public health nor being interest to the Unified Health System (SUS), ANVISA will automatically prior consent the cases and they will be returned to the INPI to begin the patentability examination.

An important provision of this new Ordinance is that these same principles will be applied to applications that had the administrative instance closed at ANVISA. That is, patent applications, which were previously denied consent, will now be analyzed by the BPTO, taking into account ANVISA’s opinion on patentability as information for aiding the technical examination.

With the publication of Joint Ordinance No. 1, in principle, there will no longer be in Brazil the “double examination” for patent applications related to pharmaceutical products and processes, as it has occurred from 2001 until present. This ordinance will take effect in 60 days.

This new procedure is expected to contribute significantly to reducing the number of pending patent applications (backlog) related to the pharmaceutical field.

For further information, please feel free to contact us at diblasi@diblasi.com.br.

See bilingual PDF: Newsletter – Portaria ANVISA INPI

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INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO

Article “INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO”, coauthored by managing partner Gabriel Di Blasi, was originally published in the latest International Trademark Association (INTA) bulletin.




INTA’s Designs Committee has provided comments on the topic of Graphical User Interface (GUI), Icon and Typeface/Type Font Designs to the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the World Intellectual Property Organization (WIPO).
In many instances, GUIs, icons and fonts have become a key aspect of a company’s overall brand. They should therefore be considered an important part of the company’s overall IP portfolio. The INTA Designs Committee considers that design protection should be provided for GUIs, icons and fonts, independently from any other form of protection available on the computer program or other technical means of creating it, even if they are projected onto a screen or otherwise only appear when technology is activated.
However, in most of cases, the lifespan of this kind of technology is very short. To the extent that GUIs, icons and fonts may be eligible for overlapping protection, the INTA Designs Committee believes that design law is a good tool to provide short term protection. And this should be without prejudice to protection appropriately provided under other laws, such as copyright, trademark or the law of unfair competition/passing off.
Responding to the Questionnaire of SCT on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, the INTA Designs Committee has made several suggestions of ways to harmonize the position on GUIs, icons and fonts. In addition, the INTA Designs Committee believes that users are best placed to determine how to disclose an innovative design for the purposes of applying for GUI, icon, or font protection. At present, a designer, especially an individual designer or SME, can be disadvantaged if a design registry outside the designer’s home jurisdiction rejects the application because (under its own rules) the “wrong” representation has been used, even though that representation was accepted in the home jurisdiction.
The designer seeking protection should be allowed to make its own choice on how best to protect the design. Design law protects innovative designs, which have to be novel in order to be protected. A GUI which incorporates an image of a telephone lacking novelty may still be considered novel on the whole, but its novelty will not lie in the telephone image.  Similarly, a design registered for a GUI which shows a digital read-out for a number will not be novel so far as that number is concerned – but may be for the innovative way in which the number is presented.
In practical terms the GUIs, icons and fonts are used across technologies. It is therefore essential that protection is NOT dependent on the product that incorporates it. Once again the designer must have the choice as to how best to represent the design, whether in relation to a specific product, or in the abstract. Furthermore, protection for GUIs and icons should NOT be excluded if the GUI/icon appears only temporarily when a program is loaded.
The INTA Designs Committee considers that there should not be any additional requirements for GUIs, icons or indeed fonts that are animated, and Offices should be able to accept video files within appropriate guidelines. Color and black and white photographs, drawings, including technical drawings and other graphic representations, including CAD and video or moving files, should all be acceptable forms of representations of GUIs, icons and fonts, as long as the representation accurately represents the design.
In their final observations and comments, the INTA Designs Committee has advocated that.

  •  the examination criteria for GUIs and icons be no different to those for other forms of industrial design;
  • for fonts, the additional elements discussed above may also be examined; and
  • the duration of protection for GUI, icon and font designs ought to be the same as for other industrial designs. 

Please see the INTA Designs Committee’s complete response to the questionnaire on inta.org.


Gabriel DI Blasi (Di Blasi, Parente & Associados Advogados)

Patrick Wheeler (Collyer Bristow LLP Solicitors)

Members of INTA Design Committee

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Simpósio sobre Propriedade Intelectual – UFRJ Technology Park, April 26

Encontros no ParqueManaging partner Paulo Parente Marques Mendes will be participating in the upcoming “Simpósio sobre Propriedade Intelectual.” The event is being held in celebration of World Intellectual Property Day and will take place at the UFRJ Technology Park (Rua Paulo Emídio Barbosa, 485 – Ilha da Cidade Universitária) on April 26, beginning at 8:30 AM. The participants will discuss the role of intellectual property in the promotion of innovation and creativity.

Registration on the link https://docs.google.com/forms/d/e/1FAIpQLSee3AmSrysXJxzTl3abwN8-_DrsSFoBDz_Oq8DDaKZaQ0SsEA/viewform?c=0&w=1

 More on the World Intellectual Property Day: http://www.wipo.int/ip-outreach/en/ipday/

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