On 12 July 2023, the US Senate Judiciary Subcommittee on Intellectual Property held a hearing focused on artificial intelligence (AI) and intellectual property. This hearing broadly concerned AI platforms potentially infringing copyright, the impact of such platforms on human creators such as artists and authors, and potential solutions to protect copyright owners and consumers.

The hearing included testimony from representatives representing human creators, copyright owners, and companies developing AI platforms.

Click here to watch a recording of the hearing in full. Click here to read a summary of the hearing from IPWatchdog.

Egypt has become the latest jurisdiction to participate in the World Intellectual Property Organization’s (WIPO’s) Madrid Goods and Services Manager. The Madrid Goods and Services Manager can be used to verify whether a participating jurisdiction’s IP office will accept a proposed list of goods and services before a Madrid application is submitted. With Egypt’s participation, there are now a total of 41 participants of the Madrid Goods and Services Manager.

Read more here.

On 26 June 2023 the Federal Court released their most recent certification decision (Voltage Pictures, LLC v. Salna, 2023 FC 893 [Salna]) relating to reverse class actions attempting to hold copyright infringers liable for illegally downloading copyrighted content.

This decision is the latest in a case which began in 2016 and which has had aspects brought before the Federal Court of Appeal three times, and the Supreme Court of Canada once. For our previous discussion of this case see here.

In Salna, Voltage Pictures sought certification of the class action proceedings against internet account subscribers who allegedly uploaded and downloaded films produced by Voltage without authorization. The Federal Court rejected certification due to ‘deficiencies’ in Voltage Pictures’ litigation plan but left Voltage Pictures with the option to reapply for certification with a revised litigation plan. Specifically, the Federal Court rejected Voltage Pictures’ plan to use the notice and notice regime to communicate with the defendants and for failure to provide adequate provisions for the funding of Class Counsel. Rectifying both of these deficiencies is likely to increase the cost for Voltage Pictures of proceeding with the reverse class action.

While the failure to certify the class proceedings is a setback for Voltage Pictures, this decision did reject many of the arguments raised by the Representative Defendant and interveners against proceeding with a reverse class action. Notably, the Federal Court found that a reverse class action is presently the preferable procedure regardless of any potential differences in facts and defenses available to individual defendants. Further, the concern that defendants may opt-out thereby rendering the class size too small may be addressed if such a situation arises and decertification may be an option in such an event.

An additional aspect of this case which may be significant to entities in a similar situation as Voltage Pictures, is that over $50,000 in costs were awarded to the Representative Defendant in the certification motion. Ordinarily costs are not available in certification motions, however the Federal Court found that reverse class actions are in and of themselves an exceptional circumstance which warrants costs being awarded to the representative defendant to incentivise meaningful participation in the proceedings. This precedent may act as a disincentive for future reverse class actions as this raises the cost for plaintiffs who may find themselves footing the bill for defendants’ legal counsel.

The European Patent Office (EPO) will end the “10-Day Rule” from November 1, 2023.

The “10-day rule”, also known as the “10-day grace period”, refers to Rule 126(2) of the European Patent Convention (EPC) which stipulates that official communications from the EPO are deemed to have been delivered to the recipient 10 days after the date which they were issued.

Rule 126(2) EPC will likely be amended such that from November 1, 2023 onwards, official communications from EPO will be deemed to be delivered on the same date which they were issued.

See the full EPO article here.

EPO article: EPO – Administrative Council adopts legal changes in support of digital transformation

The USPTO Climate Mitigation Pilot Program concluded its initial phase on June 5, 2023. Its primary objective was to accelerate the review process for patent applications focused on minimizing greenhouse gas emissions. This program was established in response to an Executive Order that emphasized the urgent need to address the climate crisis both in the United States and internationally.

In an announcement made on June 1, 2023, the USPTO revealed an extension of the program until June 7, 2027. Along with the time extension, two additional expansions were introduced. First, the USPTO has opted to broaden the scope of eligible subject matter for expedited examination. Now, any patent that contributes to the advancement of achieving net-zero greenhouse gas emissions is included. This includes patents focused on greenhouse gas removal, reduction/prevention, or monitoring. Second, the previous limit of 4 applications per inventor has been raised to 12 applications, allowing inventors to submit a greater number of patent applications within the program.

For more information about the Climate Mitigation Pilot Program and its expansion, please see the USPTO’s publication: https://www.uspto.gov/about-us/news-updates/uspto-expands-and-extends-climate-change-mitigation-pilot-program

The United States Patent and Trademark Office (the “USPTO”) has proposed a set of amendments to the rules that govern inter partes review (“IPR”) and post grant review (“PGR”) processes. The USPTO has presented these amendments as being directed to constraining abusive practices that are used to attack granted patents. One of the problematic practices which the USPTO claims will be limited by these amendments are parallel or serial proceedings. Some other amendments are directed towards giving the USPTO greater or clearer discretion to refuse to institute IPR and PGR proceedings attacking patents owned by small entities.

Some commentators have taken the position that the proposed amendments are harmful in that they will reduce the availability of IPR and PGR proceedings to attack invalid patents. For example, the Electronic Frontier Foundation has asserted that the proposed amendments will benefit patent trolls.

The proposed amendments have been published to allow for comment by interested members of the public. Comments must be received by June 20, 2023 to be considered in this round of consultations.

A full copy of the amendments and details for how to provide comments can be found here: https://www.federalregister.gov/documents/2023/04/21/2023-08239/changes-under-consideration-to-discretionary-institution-practices-petition-word-count-limits-and

The Electronic Frontier Foundation’s commentary on the proposed amendments can be found here: https://www.eff.org/deeplinks/2023/06/our-right-challenge-junk-patents-under-threat

Some further commentary on the proposed amendments can be found here: https://ipwatchdog.com/2023/06/01/iancu-agrees-key-uspto-anprm-proposals-handled-congress/id=161781/

On 26 May 2023, a jury in the US found Google to have infringed one of Sonos Inc.’s patents pertaining to smart-speakers. The jury decided that Google had to pay Sonos $32.5 million USD.

The patent found to be infringed was United States Patent No. 10,848,885 titled “ZONE SCENE MANAGEMENT.”

Sonos also alleged that Google infringed Sonos Inc.’s United States Patent No. 10,469,966 also titled “ZONE SCENE MANAGEMENT.” The jury came to the decision that Google did not infringe this patent.

The decision from 26 May 2023, is part of a longstanding intellectual property dispute between Google and Sonos that involves lawsuits in the US, Canada, France, Germany, and the Netherlands. The dispute began with Sonos suing Google in California in 2020. Google has also initiated actions against Sonos for patent infringement. Google has accused Sonos of infringing US Patent No. 10,593,330 titled “HOTWORD DETECTION ON MULITPLE DEVICES,” US Patent No. 10,134,398 also titled “HOTWORD DETECTION ON MULTIPLE DEVICES,” and US Patent No. 7,705,565 titled “METHOD AND SYSTEM FOR WIRELESS CHARGING.”

In the past, Google and Sonos collaborated to integrate Mountain View, a streaming music service, into Sonos products.

For more information, see here.

On Tuesday, 16 May 2023, Taco Bell filed a petition to the US Patent and Trademark Office to cancel its competitors’ US trademark registrations for “Taco Tuesday.”

Gregory’s Restaurant & Bar, a New Jersey restaurant, has been the registrant for the “Taco Tuesday” trademark in New Jersey since 1995. Taco John’s, a Wyoming food chain, has been the registrant in all 49 other states since 1989. The registrants have used the phrase “Taco Tuesday” for more than 40 years.

In its petition to cancel the trademark registrations, Taco Bell argues that “Taco Tuesday” is too generic to be a registered trademark. The petition states that Taco Bell and the public “must be able to use the generic, informational term ‘Taco Tuesday’ to advertise and properly identify their own goods and services.”

The petition’s preface states “Taco Bell believes ‘Taco Tuesday’ is critical to everyone’s Tuesday. To deprive anyone of saying ‘Taco Tuesday’—be it Taco Bell or anyone who provides tacos to the world— is like depriving the world of sunshine itself.”

In response to the petition, Taco John’s has announced a two-week “Taco Tuesday” promotion. In an email statement, Taco John’s CEO said “I’d like to thank our worthy competitors at Taco Bell for reminding everyone that Taco Tuesday is best celebrated at Taco John’s.”

For Taco Bell’s petition against Taco John’s, click here.

For more information, see the following:

Reuters: https://www.reuters.com/legal/taco-bell-seeks-cancel-smaller-rivals-taco-tuesday-trademarks-2023-05-16/

CTV News: https://www.ctvnews.ca/business/taco-tuesday-trademark-tiff-flares-anew-between-fast-food-competitors-1.6401940