This week in IP: Pfizer allows COVID pill copies, USPTO publishes TMA rules, and more

UKIPO CEO Tim Moss spoke with Managing IP this week about his experience managing Brexit.

“We had this small task on December 31 last year of creating two million rights overnight,” says Moss.

“The fact that it went so smoothly, even to the point that it happened in the background and people almost didn’t notice it, it’s testament to the fantastic work the team has done. 

“It’s defined the organisation, and probably been the biggest single issue in my time at the office.”

Click here to read the full article. 

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• In-house: eco-conscious brands must be wary of ‘greenwashing’

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• INTA 2021: Cannabis, alcohol and gambling counsel share top trademark tips

• Rise in tech goods and services calls for Nice reboot: sources

• Judge Meade: why skeleton brevity can help ease complexity

• Blockchain a boon for IP enforcement in China, say sources

• O’Malley to pursue patent policy work after Federal Circuit

• Four factors driving forum shopping in US trademark litigation

• In-house: registered designs take chequered flag post-Ferrari

Pfizer has signed a deal with international public health group Medicines Patent Pool that will allow generic drug manufacturers to produce and supply an experimental COVID antiviral drug to poorer countries, it emerged on Tuesday, November 16.

Pfizer also released a statement on Tuesday confirming that the company would license the antiviral drug to the Medicines Patent Pool.

The pharma leader has sought emergency use authorisation for its pill from regulators in the US. Drug companies can prepare to produce generic versions once they have secured licences, but must wait for regulatory approval before launching them on the market.

Albert Bourla, Pfizer’s chief executive, said Pfizer remained committed to bringing forth scientific breakthroughs to help end the pandemic for everyone.

“We believe oral antiviral treatments can play a vital role in reducing the severity of COVID-19 infections, decreasing the strain on our healthcare systems and saving lives.”

According to Pfizer, late-stage trials showed its COVID pill reduced the chance of hospitalisation and death for adults at risk of severe disease by 89%. The trials analysed data collated from the US, Europe, Africa, and Asia.

“This licence is so important because, if authorised or approved, this oral drug is particularly well-suited for low and middle-income countries and could play a critical role in saving lives, contributing to global efforts to fight the current pandemic,” said Charles Gore, executive director of the Medicines Patent Pool.

Production company Miramax sued Quentin Tarantino over his planned sale of non-fungible tokens from the cult movie Pulp Fiction in the US District Court for the Central District of California on Tuesday, November 16.

The legendary director had recently announced his plans to auction off seven exclusive scenes along with high-resolution scans from his original handwritten screenplay from the 1994 motion picture as NFTs.

The lawsuit – filed for copyright and trademark infringement, breach of contract and unfair competition – alleged that Tarantino infringed the IP rights relating to one of Miramax's most iconic and valuable film properties by offering the NFTs for sale.

Tarantino had kept his NFT plans a secret from them, the production house claimed.

Upon learning about the NFTs, Miramax sent a cease-and-desist notice to Tarantino. But the director’s attorneys responded by saying Tarantino was acting within his reserved rights.

The studio has claimed that except for Tarantino’s limited rights, the copyright in the finished motion picture and all its elements in all stages of development and production vests in Miramax, and it also holds the rights to develop, market and sell NFTs related to its films.

“Left unchecked, Tarantino's conduct could mislead others into believing Miramax is involved in his venture,” the suit said.

Miramax has sought a jury trial for all the issues listed in the complaint.

The USPTO announced on Wednesday, November 17 that it had finalised the rules for the implementation of the Trademark Modernization Act, which will go into effect on December 18.

The rules specify what petitioners have to do to file ex-parte expungement and ex-parte re-examination proceedings at the USPTO, which make it easier for third parties to cancel marks that are not in use.

The office said petitioners didn’t always have to include the name of the party on whose behalf the petition would be filed. Third parties don’t need to have standing to initiate the proceedings.

This is important because brands can ask their firms to initiate proceedings for them without identifying their brands.

But the rules said the director could require this information to be disclosed in particular cases.

The USPTO added that petitioners had to provide certain information such as the basis for the petition, the name, domicile address, and email address of the petitioner and a clear and legible copy of all documentary evidence supporting a prima facie case of non-use of the mark.

The rules also explained what registrants would have to do if petitioners had provided enough evidence to institute one of these proceedings.

Registrants would have to provide evidence of use, information, exhibits, affidavits, or declarations that were reasonably necessary to rebut the prima facie case of non-use.

The US Senate confirmed Jonathan Kanter as the new antitrust head of the Department of Justice by a vote of 68 to 29 on Tuesday, November 16.

Dick Durbin, chair of the Senate Judiciary Committee, said Kanter was a distinguished antitrust lawyer with decades of experience in the public and private sectors.

“With his extensive experience, deep knowledge of the law, and masterful understanding of the challenges facing antitrust law enforcers, Mr Kanter will be an outstanding addition to the justice department.”

Stakeholders could soon find out how Kanter intends approach antitrust law pertaining to standard essential patents (SEPs) and pharmaceutical patents.

Counsel told Managing IP shortly after Kanter was nominated that the White House had likely already established its SEP policy, and had picked Kanter to follow it. They expected that he would support policies more favourable to accused infringers.

Attorneys said, however, that Kanter was a less radical choice than some of Biden’s nominees for other key positions.

Thom Tillis (ranking member of the Senate IP subcommittee) asked Kanter at his nomination hearing in October whether he would withdraw the joint policy statement on SEPs from the USPTO, DoJ and National Institute of Standards and Technology.

Kanter said this subject was something he looked forward to examining if he were confirmed.

The new antitrust head at the DoJ was a partner and the antitrust co-chair at Paul Weiss before he set up his own firm called The Kanter Law Group in 2020.

The author of a children’s book about a fire-breathing dragon that causes havoc with his fiery sneezes has accused UK-based retailer John Lewis of infringement over its 2019 Christmas advertisement, it emerged this week.

Author Fay Evans claims a “striking similarity” between her book ‘Fred the fire-sneezing dragon’, published in 2017, and the 2019 advert called Excitable Edgar. The author filed a copyright infringement claim at the Intellectual Property Enterprise Court (IPEC) on November 5.

John Lewis has denied the allegations, and said the concept was first presented to it in early 2016.

Evans’s book is a rhyming story about a small green dragon whose causes chaos but eventually wins humans over by cooking their food with his flames.

In the John Lewis ad, the dragon annoys the people in the town he lives in by melting a snowman and burning down their Christmas tree, but then lights their Christmas pudding.

John Lewis’s Christmas advert has been a staple in the run-up to Christmas in the UK for several years.

In recent years it has faced other copying claims.

In 2017, author Chris Riddel suggested the retailer borrowed from his picture book ‘Mr Underbed’ in its 2017 advert that depicted a monster living under a boy’s bed.

This year, husband and wife duo the Portraits have alleged that the retailer lifted their arrangement to Philip Oakey and Georgio Moroder’s song ‘Together in Electric Dreams’ – the soundtrack to its latest advert.

The German Federal Patent Court has ruled that a listed inventor must be a natural person but can be named in conjunction with an artificial intelligence, in the latest development in the DABUS saga.

It was the opinion of the court, revealed this week, that the listed inventor must be a natural person, even if the AI had identified both the problem and the solution. But it said an AI system could be additionally named.

It is the latest ruling in a string of cases surrounding the DABUS patent applications – which have been filed by inventor Stephen Thaler.

In September, the England and Wales Court of Appeal rejected the notion that an AI could be an inventor in its own right as it was not a legal person. An appeal has been filed at the UK Supreme Court.

A DABUS-invented patent was granted in South Africa (albeit without formal examination) in July and the Federal Court of Australia ruled in that same month that an AI could be an inventor under the country’s patent laws.

The DABUS applications cover an emergency warning light and a food container that improves grip and heat transfer. DABUS stands for ‘Device for the autonomous bootstrapping of unified sentience’.

INTA will hold its first in-person annual meeting since 2019 in Washington DC next April, it was confirmed on Monday, November 16.

INTA CEO Etienne Sanz de Acedo made the announcement at this year’s virtual meeting, which is set to conclude today, November 19.

Next year’s meeting is scheduled for April 30 to May 4 at the Walter E Washington Convention Center in the US capital.

INTA also promised to deliver a robust virtual component to the meeting for those unable to attend in person.

The organisation had planned for this year’s event to take place with a hybrid format, combining in-person and virtual elements.

In the end, it has been mostly online, with one-day mini-conferences held in New York, Berlin, and Los Angeles.

It was the second annual meeting to be disrupted by the COVID-19 pandemic, following the cancellation of the April 2020 event in Singapore.

The last meeting to be held in-person was in May 2019 in Boston.

“The 2022 annual meeting marks a return to our legacy as the world’s largest in-person gathering of brand professionals and affirms our strategic decision to combine the best of both worlds – in-person plus virtual – into our events moving forward,” said Sanz de Acedo.

“While the current meeting is a fully-fledged virtual event and inching back into in person with limited-capacity mini-conferences, next year, we’re in effect reversing the formula, ” the INTA CEO added.

Moderna has offered to share IP rights for its breakthrough COVID-19 vaccine with the US government, it confirmed in a statement last Thursday, November 11.

The drug maker is involved in a dispute with the National Institutes of Health (NIH) over whether government-employed scientists should be listed as inventors on the patents for the vaccine.

NIH director Francis Collins told Reuters that Moderna had made a “serious mistake here in not providing the kind of co-inventorship credit to people who played a major role in the development of the vaccine that they're now making a fair amount of money off of”.

The government had argued that scientists working for the National Institute of Allergy and Infectious Disease (NIAID), one of the bodies of the NIH, co-invented the mRNA sequence used in the Moderna vaccine.

In a statement issued on November 11, Moderna hit back at the NIH’s account, but said it was willing to share patent rights.

“The mRNA sequence was selected exclusively by Moderna scientists using Moderna’s technology and without input of NIAID scientists, who were not even aware of the mRNA sequence until after the patent application had already been filed,” the drug maker said.

“Therefore, only our scientists can be listed as the inventors on these claims,”

It added: “For those who would seek to twist Moderna’s good faith application of US patent law into something else, nothing could be further from the truth. Moderna remains the only company to have pledged not to enforce its COVID-19 intellectual property during the pandemic.

“Moreover, on September 29th, Moderna offered to resolve its dispute with NIAID by making the government co-owners of those patent applications that only listed Moderna scientists as inventors, including the right as co-owners to license the patents as they see fit.”