Like a slogan or logo, a particular placement or positioning of a mark on a good may itself be a trademark (i.e. the particular positioning of the mark on the good may be a “position trademark”). Position trademarks are registrable in many countries. As of October 1, 2021, it is now possible to apply to register a position trademark in Brazil as well.
Read more here.
A US court has held that the fictional motorcyclist Duke Caboom does not infringe trademark or publicity rights of Evel Knievel. The differences in appearance between Caboom and Knievel, as well as the purpose of Caboom in Toy Story 4, were enough to avoid liability.
Read more here.
The World Intellectual Property Organization (WIPO) has recently released its 2021 Global Innovation Index (GII) in partnership with Portulans Institute. The index aims to provide factual evidence and reliable data to inform the many essential debates around innovation. The index notes that investment in research and development has shown great resilience in the face of the COVID-19 pandemic. Consistent with last year’s finding, the 2021 index shows that the most innovative economy is Switzerland, followed by Sweden and the United States. Canada moved up one spot from last year and is in the 16th place.
Read more here.
A class action brought by photographers and other artists who post material on the social media site Instagram claims that Instagram’s new “embed” feature is encouraging “widespread” copyright infringement, since other sites use the artists’ work without reimbursement.
9th Circuit U.S. District Judge Charles Breyer found that the embed feature did not pass the “server test,” which says that copyright is only infringed if the copyright material is stored on the downstream website’s server. Since the embed feature pulls the image from the server the artist originally posted on (Instagram’s), there is no infringement. This test is contentious in the US, and has been overturned in other circuits, most recently by a Manhattan federal judge, U.S. District Judge Jed Rakoff. The lawyer representing the photographers in the class action says they will likely appeal the decision.
More information here.
Beginning in earnest in 2017 with the issuance of the “Opinion on Deepening the Reform of the Review and Approval System and Encouraging the Innovation of Drugs and Medical Devices”, China established a reform plan to improve its IP regime. Since then, China has continuously and gradually revised its patent system. For example, last year, China amended its Patent Law and signed the US-China Phase One Trade Deal committing to make several improvements to its patent system. This year, China’s new Patent Law came into force on June 1st. To implement the legal and administrative reforms, the China National Intellectual Property Administration (“CNIPA”) has published a number of documents discussing its proposals. This article summarizes the CNIPA’s proposals relating to patent term adjustment and patent term extension.
Some of CNIPA’s Proposal Documents
Some of the important proposal documents are:
The CNIPA’s Draft Implementing Regulations have not yet been adopted by the State Council as regulations. As such, they may be viewed as recommendations to the State Council. Although the CNIPA is not a legislation-drafting agency, the CNIPA can take on an important role in the drafting process. The US Patent and Trademark Office has shared an unofficial English translation of the Draft Implementing Regulations.
The Interim Measures appear to have a legislation status as they have been listed under the legislative category of “public notice” (公告) on the official Chinese government website www.gov.cn.
The Draft Guidelines are currently open for public consultation and the consultation period will end on 22 September 2021.
CNIPA’s Proposal for Patent Term Adjustment
Article 5 of the Interim Measures provides that “for utility patents issued after 1 June 2021, the patentee may, pursuant to the second paragraph of Article 42 of the new Patent Law, submit a request within three months from patent issuance date for patent term adjustment.” [Machine translation using Google Translate]
Part IV, Chapter 9 of the Draft Guidelines explains that patent term adjustment is calculated as follows:
Patent Term Adjustment = [CNIPA delay] minus [Applicant delay]
CNIPA Delay. The Draft Guidelines suggest that days of unreasonable delay caused by the CNIPA are calculated based on: “the patent issuance date minus either (i) the date after four years from the application filing date or (ii) the date after three years from the entry of substantive examination, whichever is later.” [Machine translation using Google Translate] The application filing date is the actual filing date in China and not the priority date. For PCT applications, the application filing date refers to the national phase entry date. For divisional applications, the application filing date refers to the date a divisional application was submitted to the CNIPA. CNIPA delay does not include “a stay proceeding, a preservation proceeding, an administrative litigation proceeding, and re-examination procedures.” [Machine translation using Google Translate]
Applicant Delay. The Draft Guidelines suggest that unreasonable delay caused by the applicant includes:
Patent term adjustment is not currently available in Canada but Canada will have to add provisions relating to patent term adjustment to comply with its obligations under the Canada-US-Mexico Free Trade Agreement (“CUSMA”). CUSMA requires that patents granted more than 5 years from the filing date or 3 years from the request for examination date may be eligible for patent term adjustment.
On a related note, as part of the implementation of the patent term adjustment obligation in the CUSMA, Canada recently published proposed amendments to its Patent Rules aiming to encourage conclusion of patent application prosecution in a timely manner. The proposed amendments include certain limits on patent application processing and fees to discourage lengthy applications, e.g. excess claim fees and a limited number of Examiner’s Reports before a request for continued examination (with an associated fee) is required.
CNIPA’s Proposed Approach to Patent Term Extension
Article 6 of the Interim Measures provides that patent term extension may be available if a patentee submits a request for it within three months of approval of the new drug marketing authorization from the National Medical Products Administration (“NMPA”).
Part IV, Chapter 9 of the Draft Guidelines provides that the term of patent term extension is calculated as follows:
Patent Term Extension = [the date of market authorization] minus [the patent filing date] minus [5 years]
Patent term extension is capped at a maximum of five years and is subject to a 14-year limit for the total patent valid term after the new drug receives market authorization.
The Draft Guidelines provide that only certain drugs are eligible for patent term extension. Such drugs include:
In comparison, patent term extension of up to two years has been available in Canada since 2017 for patents pertaining to new medicinal ingredients or new combinations of medicinal ingredients for human or veterinary use, as a result of Canada’s implementation of the Canada-European Union Comprehensive Economic and Trade Agreement (CETA).
More Developments
China has been continuously and gradually revising its patent system. This article only covers two of the many legislative and administrative reforms that are being implemented. Other reforms include a patent linkage system, measures to enhance patent quality, and a registrar of open patent licensing and related agreements. It is truly an exciting time to monitor the changing landscape of China’s patent system and plan strategies that take advantage of such changes.
**This article was originally published by The Lawyer’s Daily a division of LexisNexis Canada Inc.
The European Patent Office (the “EPO”) recently published its Annual Review 2020. The Annual Review 2020 demonstrates that the demand for European patents in 2020 was approximately the same as in 2019. Particularly, the EPO received 0.7% fewer applications in 2020 than in 2019, overall receiving a total of 180,250 patent applications in 2020.
Read more about the EPO’s 2020 Annual Review here.
Oyen Wiggs is pleased to announce that eight of our lawyers have been selected by their peers for inclusion in the 2022 edition of Best Lawyers in Canada in the field of intellectual property law.
Best Lawyers is considered to be the leading peer-review publication in the legal profession. Its rankings of lawyers and firms are based on extensive peer-review surveys in which thousands of leading lawyers confidentially evaluate their professional peers.
We are proud to announce that the following lawyers have been recognized as Best Lawyers in Canada for 2022:
(Year) First year the lawyer was listed in the published practice area.
On 26 August 2021, a U.S. appeals court reversed a $1.2 billion ruling against the defendant Gilead Sciences after finding that the plaintiff’s patent was invalid because it lacked sufficient descriptions and details, in a blow to the plaintiff’s corporate owner, Bristol Myers.
The dispute arose from a cancer treatment patent. The treatment known as chimeric antigen receptor T-cell therapy, or CAR-T, reprograms the body’s own immune cells to recognize and attack malignant cells.
Bristol Myers claimed infringement against Gilead Sciences based on a patent owned by its subsidiary Juno and Memorial Sloan Kettering Cancer Center (“Juno Patent”). A jury in 2019 found infringement against Gilead Sciences and the District judge awarded $1.2 billion in damages.
However, a three-judge panel reversed the previous decision unanimously and held that the Juno Patent was invalid because it lacked a sufficient written description and details. In oral argument, Judge Moore compared the Juno Patent’s description to trying to identify a specific car by saying it has four wheels.
For more details on the decision, read here.
As of the end of July, approximately 8,700 requests for Track One Prioritized Examination have been filed with the United States Patent and Trademark Office (USPTO). Under the Track One program, the USPTO aims to provide a final disposition (e.g. a Notice of Allowance or a Final Office Action) for a pending utility patent application within about 12 months. A maximum of 12,000 Track One requests can be granted annually.
Read more about Track One Prioritized Examination here. Program statistics can be reviewed here.
The maker of luxury winter coats, Canada Goose, has sued a competitor Goose Country for trademark infringement and passing off. Part of the complaint alleges that the patch used by Goose Country on the arm their coats is confusingly similar to Canada Goose’s.
Read more here.