This week in IP: in-house on SPCs, YouTube opinion out, EU hints UPC alive

In-house counsel revealed this week that last Thursday’s decision from the Court of Justice of the EU to refuse supplementary protection certificates to second medical use indications provided welcome clarification on the SPC regulation.

The Santen judgment came eight years after the Neurim case, in which the EU’s highest court said Article 3d did not preclude innovators from getting an SPC for a different application of a product that had already been given a marketing authorisation.

However, the CJEU did not define what it meant by “different application”, which led to fragmented interpretations of the ruling across the EU.

The head of IP for biologics for a Switzerland-based pharma company says that even though some innovators might not like the outcome of the decision, they will still feel grateful that the CJEU has finally given some clarity about how to interpret Article 3d.

“Now, in-house IP teams can go to their management and say this is when we will lose exclusivity on this product. There will be some innovator companies that will welcome the clarity even if they lose some exclusivity terms.”

Read more here.

Other Managing IP stories from the week that you might want to read include:

·       Opinion: How to clean up a polluted IP world

·       Licensors: video talks save time but can’t replace face to face

·       Qualcomm’s Laurie Self on why diversity is crucial for innovation

·       India needs central point of enforcement to fight counterfeits

·       WIPO’s Gurry on accusations, COVID-19, and IP’s ‘watershed’ moment

·       PTAB: new $400 appeal fast track is boon for important patents

YouTube and similar platforms should not be liable for user-uploaded infringing content because they do not communicate that content to the public under the Infosoc and e-Commerce Directives, an adviser to the EU’s highest court said yesterday, July 16.

In his opinion – not available in English at the time of this article’s publication – in YouTube (C-682/18) and Elsevier (C-683/18), Advocate General Henrik Saugmandsgaard Øe found that while the Digital Single Market Directive (2019/790) introduced a new liability regime for illegally uploaded works, the directive was not applicable to either case.

He pointed out that the directive does not come into force until after its transposition period in 2021, and thus advised the Court of Justice of the EU (CJEU) to base its decisions in these matters on the regime currently in force.

In YouTube, music producer Frank Peterson brought proceedings against the Google-owned content platform in the German courts over the uploading of several phonograms without his authorisation.

In the second case, publishing group Elsevier filed proceedings against Cyando in the German courts following the uploading of various works. Germany’s Federal Court of Justice referred both matters to the CJEU.

The CJEU usually rules on matters within three to five months after an AG issues an opinion.  

The European Commission would welcome Germany’s swift ratification of the Unified Patent Court Agreement despite Brexit, commissioner for the internal market Thierry Breton wrote on Wednesday, July 15.

In a letter to MEP Patrick Breyer, who is from the German Pirate Party and asked in May whether Germany could ratify the UPCA now that the UK has left the EU, Breton said that Brexit does not affect the UPC’s ratification process.

The commissioner reasoned that the UK ratified the UPCA when it was still an EU member state, and that its departure from the bloc simply meant that it would not be able to participate in the UPC after the end of the Brexit transition period.

“The unitary patent will be an effective tool for businesses to protect their inventions on the European market at a competitive price, and the Unified Patent Court will offer the possibility for these businesses to enforce their patents at a European Union level, thereby enhancing legal certainty and reducing costs,” Breton wrote.

“It will further boost innovation in Europe, which will be key for the economic recovery following the COVID pandemic.”

The UK confirmed in February that it would not seek to participate in the UPC, noting that membership was inconsistent with its aims to become an independent and self-governing nation.

In June, the German Federal Ministry of Justice called for comments on a draft of its UPCA Approval Act, three months after the Federal Constitutional Court ruled that Germany’s pre-ratification of the agreement was void because it did not have a two-thirds majority in the Bundestag.

The Washington Redskins announced on Monday, July 13, that it would change its team name after mounting pressure from advertisers and sponsors, but could face an uphill battle from trademark squatters as it looks to alter its brand identity.

The decision came after the death of African-American man George Floyd and the subsequent growth of the Black Lives Matter movement, which have already compelled some brands, including Aunt Jemima, to change their names.

In a press release, the NFL franchise said that owner Dan Snyder and team coach Ron Rivera were working closely to develop a new name and design approach that would enhance the standing of its franchise and inspire sponsors, fans and the community for the next 100 years.

The franchise has yet to reveal what it plans to change its name to, but will undoubtedly be hindered by the fact that squatters have registered so many viable nicknames for the team, including the 'Washington Braves' and 'Washington War Hogs'.

However, one particularly active filer and Redskins fan, Martin McCaulay, who holds marks for the 'Washington Monuments', 'Washington Redtails', 'Washington Veterans', 'Washington Red Wolves' and 'Washington Warriors', claims to have offered his registrations to the team for free.

He tweeted on Tuesday that he was embarrassed if he had done anything to slow down the team’s efforts to change its name, and that he was now holding on to the marks to prevent other squatters from leveraging them.

In a rare hearing that was live-streamed to the public for the first time in the EPO’s history, the Enlarged Board of Appeal heard three referred questions in case G1/19 on the patentability of computer-simulated inventions on Wednesday, July 15.

During the proceedings, the patent applicant argued that a requirement of a direct link with physical reality (proposed by the referring board) should be dropped or replaced by a different test and the requirement for a technical purpose.

The applicant also set out that even if there was no difference between a computer simulation and a mathematical method, that fact shouldn’t be a problem.

The hearing drew in a large crowd of virtual spectators who were keen to assess how the EBoA might rule in this matter.  

Simulations are now routinely used in all areas of technology, from designing drugs and vaccines to engineering in all areas. In-house counsel have argued in the past that severely limiting or ruling out patentability for these inventions would have a damaging effect on European industry.  

The EBoA will probably deliberate the matter for several months before issuing a decision.

On Monday, July 13, the USPTO announced that secretary of commerce Wilbur Ross had reappointed commissioner for patents Drew Hirshfeld for a second term. His first term was due to expire in July.

Hirshfeld joined the USPTO in 1994 as a patent examiner, was promoted to supervisory patent examiner in 2001, and became group director in the technology centre 2100 (computer architecture software and information security) in 2008.

He has a mechanical engineering degree from the University of Vermont, and a JD from Western New England College School of Law.

Ross said: “Commissioner Hirshfeld has made great contributions toward the mission of the patents organisation, and I am confident he will continue to do so throughout his second term.”

Hirshfeld’s second term will last for five years.