This week in IP: Biologic PGRs rise, drink sound mark falls flat, USPTO launches eligibility study

Post grant reviews have become more popular among pharma companies looking to knock off biologic patents at the Patent Trial and Appeal Board over the past six months.

According to USPTO data, more than three quarters (78%) of the post-grant petitions filed against biologics between October 1 2020 and April 30 2021 were PGRs, as opposed to inter partes reviews (IPRs), which traditionally account for most PTAB challenges.

PTAB counsel should pay attention to this early shift because it likely indicates a growing trend – perhaps not a dramatic one but certainly one of note because of biologics’ worth.

The head of IP litigation of a large generics company suspects the benefits of filing a PGR against biologics will, in many cases, outweigh the risks.

“We haven’t filed any PGRs against biologics yet, but fully expect that we will use them in the future quite a bit – the stats the USPTO presented don’t surprise me at all,” he says.

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The USPTO plans to launch a patent eligibility jurisprudence study, it was revealed yesterday, July 8.

The announcement came in response to a letter sent by a bipartisan group of senators to acting director Drew Hirshfeld in March asking the office to “publish a request for information on the current state of patent eligibility jurisprudence in the US and evaluate the responses”.

A federal register notice (FRN) is now scheduled to be published today, July 9, requesting answers and input from stakeholders to 13 questions and topics to assist in that effort, according to a publicly posted draft of the FRN.

The FRN includes questions such as whether the current state of patent eligibility jurisprudence affects the conduct of business, how one’s experience with US patent eligibility jurisprudence compares to other jurisdictions, and how it may affect business strategies for protecting intellectual property.

Comments are due 60 days from the date of publication of the FRN and must be submitted through the Federal eRulemaking Portal at www.regulations.gov.

The sound of a drinks can being opened followed by silence and a fizzing sound cannot be registered as a trademark, the EU General Court has ruled.

In a decision handed down on Wednesday, July 7, the court said the trademark application – submitted via an audio file – was non-distinctive. According to the court, this is the first time it has ruled on the registration of a sound mark submitted in audio format.

Germany-based Ardagh Metal Beverage Holdings, which makes metal cans used in drinks including beer and wine, had initially applied to the EUIPO, but its application was rejected. It sought registration in respect of various drinks and metal containers for storage or transport.

The General Court backed the EUIPO’s view, finding that the opening of a can was a purely technical and functional element in relation to the goods and services in question.

“The opening of a can or bottle is inherent to a technical solution … and such a sound will therefore not be perceived as an indication of the commercial origin of those goods,” the court wrote.

“Sound marks do not differ from those applicable to other categories of marks and a sound mark must have a certain resonance which enables the target consumer to perceive it as a trademark and not as a functional element.”

While Ardagh is technically able to appeal against this ruling to the Court of Justice of the EU (CJEU), it may face an uphill task.

As of May 2019, trademark decisions that have already been considered on appeal twice (by the EUIPO’s Boards of Appeal and then by the General Court) can only be taken on by the CJEU if they raise an issue that is “significant to the development of EU law”.

Since that rule was introduced, zero appeals have been granted.  

The EPO’s Enlarged Board of Appeal has finally considered the legality of mandatory video conferences for oral proceedings – and practitioners will now keenly await its decision.

The Enlarged Board of Appeal (EBoA) hearing in G1/21 was held on Friday, July 2.

It was initially scheduled to start on May 28 but was delayed that same day after a request from the opponent, who claimed it had not been given enough time to consider submissions by EPO president António Campinos.

During last week’s hearing, it was noted that before oral proceedings by VICO became mandatory, only 300 matters using this method were held. It was added that one party in a dispute was able to stall proceedings for all others simply by declining a VICO hearing.

At the end of last year, sources told Managing IP that some patentees deliberately declined virtual proceedings in order to stall potential invalidation of their patents.

In January this year, the need for both parties to consent to VICO was removed. Since then, 3,000 oral proceedings have taken place by VICO, the EBoA heard.

The G1/21 hearing has been dogged with controversy. The composition of the EBoA panel was changed after the EBoA accepted that there was a justified fear of bias.  

Those concerns were raised because Boards of Appeal president Carl Josefsson, who was involved in the drafting of the article that allowed for VICO hearings, was due to sit on the panel hearing the dispute.

Josefsson was replaced by EBoA member Fritz Blumer.

A written decision is expected, but no timeline has been provided yet.

Burton Davis will oversee intellectual property at Microsoft, it was announced this week after current IP head Jennifer Yokoyama revealed she was stepping down.

Yokoyama said in a LinkedIn post on Saturday, July 3, that she was moving to a new role in the company’s cloud and artificial intelligence department.

“As we head into the new fiscal year at Microsoft, I’m looking forward to expanding my role as the new corporate vice president and deputy general counsel of cloud and AI as part of a new customer experience and policy team,” she wrote.

“This is a dynamic moment for these technologies, so to say I'm excited is an understatement.”

Her reported replacement, Davis, has been at Microsoft since 2003 and serves as associate general counsel.

According to his LinkedIn profile, Davis has “held various roles of increasing responsibility and seniority in Microsoft's legal department” and currently leads the legal team supporting Microsoft Azure, partnering with the Azure business on legal and transactional matters in the US and abroad.

Yokoyama, who took over from Erich Andersen after he became general counsel at TikTok in January 2020, has been with Microsoft in an IP role since 2018.

Huawei announced that it had concluded a licensing agreement with Volkswagen on Wednesday, July 7, the biggest licensing deal in the company’s history.

The agreement included licences for Huawei’s 4G standard essential patents (SEPs), which will provide VW vehicles with wireless connectivity.

Speaking on the deal, Song Liuping, chief legal officer of Huawei, said: “As an innovative company, we own a leading patent portfolio for wireless technologies, which creates great value for the automotive industry.

“We are pleased that key players from the automotive industry recognise that value. We believe this licence will benefit worldwide consumers with our advanced technology.”

SEP owners and automotive companies have been locked in various litigation struggles over the past few years over the question of whether car companies or suppliers should be responsible for taking licences to connectivity patents.

The Huawei deal with VW follows on the heels of the settlement between Nokia and Daimler that resolved all patent litigation between the two companies, including a reference to the Court of Justice of the EU.

In a press release from the Chinese telecoms company, it said that it expects more than 30 million cars to be licensed under its patents based on existing licensing terms.

Amazon has launched its Intellectual Property Accelerator programme in India, it emerged on Sunday, July 4.

The programme provides recommendations for legal services providers that sellers can access to obtain trademarks and protect their marks on Amazon.in and Amazon websites globally.

Six IP law firms – Hasan and Singh, Lexorbis, Sujata Chaudhri IP Attorneys, Amitabha Sen & Co, Remfry & Sagar and H K Acharya & Company – have signed up.

Sujata Chaudhri, principal at Sujata Chaudhri IP Attorneys, said in a statement that her firm was happy to be associated with the programme.

“We are sure this programme will create an excellent platform for the small, medium and start-up firms in India to get connected with a proven and trusted network of IP law firms in India, thereby giving access to various brand protection tools.

“We look forward to an engaging association with sellers on Amazon.in.”

Businesses can use Amazon.in’s services to protect their brands before their marks are officially registered.

Amazon launched IP Accelerator in the US in 2019 and it has since expanded to Europe, Japan, Canada and Mexico. The company piloted the programme in India in 2020.

The Delhi High Court has created an intellectual property division to handle all cases related to IP rights, including trademarks, copyrights and patents, it was revealed on Tuesday, July 6.

About 3,000 pending matters at the Intellectual Property Appellate Board (IPAB) – which has been shut down – will now be moved to this division in the High Court.

The division’s creation came after the chief justice of the High Court, Dhirubhai Naranbhai Patel, formed a committee to determine how to deal with the IPAB’s remaining IP cases. The committee included Justices Prathiba Singh and Sanjeev Narula.

The High Court is developing a comprehensive set of rules for the IP division, the first draft of which has been released for comment from stakeholders.

This news comes after Indian president Ram Nath Kovind ordered the shutdown of the IPAB in April, using powers afforded to him by India’s constitution.

Kovind enacted the Tribunal Reforms (Rationalisation and Conditions of Service) Bill 2021, which closed the IPAB and transferred its functions to the courts.

The bill said that India’s high courts would hear patent, trademark, geographical indication and plant variety cases that would have previously been heard at the IPAB.

It was introduced because the government believed the IPAB had failed to provide speedy access to justice.