This week in IP: Vidal and Stark nominations progress, Singapore passes major IP bill, and more

What should have been a routine trademark dispute at the EU General Court quickly turned into a battle over post-Brexit rights of representation last month.

In Daimler v EUIPO, the court dismissed an action by the German carmaker on the basis that its legal team didn’t satisfy the Court of Justice of the EU’s requirements – namely that parties be represented by EU-based lawyers.

Counsel say the debacle should serve as a lesson to ensure lawyers carefully read the rules in the future.

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The Senate Judiciary Committee confirmed the nominations of Kathi Vidal for USPTO director and Len Stark for the Court of Appeals for the Federal Circuit, sending them off for a full Senate hearing.

The committee confirmed Vidal by a vote of 17 to five and Stark by 16 to six.

The hearing had originally been scheduled to take place last week but was postponed to allow committee members to attend the funeral of former senator Johnny Isakson on January 6.

Senator John Kennedy led the votes against Vidal’s nomination, saying: “If you took big tech and turned it upside down and shook it, our patent office directors would fall out of big tech's pocket.”

Michael Hawes, partner at Baker Botts in Houston, said he was pleased by Stark's confirmation. 

"With Judge Stark’s experience as chief judge in Delaware, he can hit the ground running and add hands-on experience with Section 101 patentable subject matter procedures and pharmaceutical trials to the Federal Circuit," he said.

"He will also bring understanding of how Federal Circuit decisions on petitions for mandamus and interlocutory appeals, considering, for example, temporary injunction decisions, can affect a district court with a heavy docket of patent cases."

Vidal, the managing partner of Winston & Strawn’s Silicon Valley office, was nominated by President Joe Biden last October.

Stark, a judge at the District Court for the District of Delaware, was nominated in November to replace Kathleen O’Malley, who will leave the Federal Circuit in March.  

A full Senate hearing is the last hurdle Vidal and Stark will face before they take their new position.

A date for the hearing has yet to be announced.  

US patent grants dropped by 7% in 2021 compared to the previous year while grants rose in China, according to data published by patent analytics firm IFI Claims Patent Services this week.

US patent grants fell from 352,000 in 2020 to 327,329, representing the sharpest drop for a decade.

Global corporations' US patent grants decreased by 8% to 12%. China-based firms, on the other hand, had a 10% increase in grants. Chinese companies received 20,679 grants in the past year, compared to 18,792 in 2020.

Four Chinese companies – Huawei, BOE, Ant and Oppo – are now among the top 50 US patent owners.

Three Asian countries made it into the list of top five countries for patent grants. Japan claimed second place with 47,105 grants, followed by South Korea and China with 21,264 and 20,679 respectively. Germany claimed the last spot in the top five with 14,663.

“Last year saw the steepest decline in patent grants in the past decade,” said Mike Baycroft, CEO of the patent analytics firm.

“There could be many reasons for this – and clearly some are pandemic-related – but what we're seeing is that corporations are still innovating at an impressive clip despite a challenging environment, particularly US and Asia-based entities.”

The Singapore Parliament passed the Intellectual Property (Amendment) Bill on Wednesday, January 12, to streamline processes under several IP statutes.

The bill introduced changes to the Trade Marks Act, the Registered Designs Act, the Plant Varieties Protection Act and the Geographical Indications Act.

According to the government, the new law was brought in to improve the experience of doing business in Singapore and to promote the use of intangible assets.

Singapore’s second minister for law Edwin Tong, observing the growing importance of intangible assets, said: “This is significant, as it means that intangible assets are worth more than physical assets. In other words, ideas and innovations are more valuable than the physical assets they animate.”

He added that the amendments will revamp the IP registration process in Singapore, improve business-friendliness and operational ease, and provide much-needed legislative and procedural clarity.

Some of the changes include allowing divisional applications under the trademark law and offering increased public access to patent documents.

Tong revealed that the government plans to implement most of the changes in May.

Spotify won a Trademark Trial and Appeal Board proceeding against Potify, a software platform for marijuana dispensaries, on Monday, January 10.

The TTAB said it wouldn’t register the 'Potify' mark because Spotify’s trademark would be diluted, noting that the two registrations were strikingly similar in appearance, sound, connotation and commercial impression.

Spotify successfully showed that it owned a famous mark, that the use of the 'Potify' mark began after the music streaming service became famous, and that the mark was likely to cause dilution by blurring.   

Dilution by blurring means an association has arisen from the similarity of two marks that impairs the distinctiveness of the famous one.

Spotify’s victory is the latest development in a string of cannabis-related intellectual property battles.

British actor Sacha Baron Cohen sued cannabis company Solar Therapeutics in July 2021 for copyright infringement, false advertising and misappropriation of his right of publicity over a billboard that used the likeness of his famous character, Borat.

In May 2021, Wrigley filed lawsuits against cannabis product sellers that allegedly infringed its Skittles, Starburst and Life Savers brands. One defendant had used the name Zkittlez for its product.

Law firm Mathys & Squire released data on Monday, January 10, showing that 5,070 global patent applications related to COVID had been published since the start of the pandemic.

COVID testing and diagnosis accounted for 1,668 patents (33%), 325 patents were related to face masks (6%), 55 pertained to sanitizer, and 38 to ventilators and respirators.

The firm said 2,652 (52%) of these patents came from China, the highest number of any country. India came in second with 388 (7.7%) and the US had 383 (7.6%).

The firm found this data through WIPO.

Juliet Redhouse, partner at Mathys & Squire in London, said COVID had sparked an unprecedented wave of innovation in the healthcare sector within a very short timeframe.

“Pharmaceutical companies and scientific researchers worldwide have done remarkable work in identifying diagnostic and therapeutic solutions to the virus. If businesses are going to continue to invest in R&D in the healthcare sector, they need to be able to protect their intellectual property.”

She added that more patent applications, including those related to testing and treatments, would emerge as society found innovative ways to adapt to the presence of the virus.

The EUIPO has this week issued a call for applications for its new SME Fund – a grant scheme aimed at helping EU-based businesses access with their intellectual property rights.

Successful applicants will be granted discounts of up to 75% on trademark applications at the EU level (50% outside the EU) and 50% off any national patent applications.

The fund also includes an IP scan, provided by the participating IP offices, to help SMEs develop their IP strategies. This can help companies identify their IP assets, according to the EUIPO.

According to EUIPO research, SMEs with IP rights generate 68% more revenue per employee than those that don’t. But fewer than one in 10 European SMEs have any registered IP right.

Christian Archambeau, executive director of the EUIPO, said: “The COVID-19 pandemic has hit SMEs significantly and has shown, more than ever, that we must support them towards recovery.

“Through this new and expanded phase of the SME Fund, available to all small businesses in Europe, we are committed to helping them secure and reap the benefits of their intellectual property assets.”

Applications for the grant can be filed by an owner, an employee or an authorised representative of an SME acting on its behalf. Grants are transferred directly to the companies and are available on a first come, first served basis.

The EUIPO will dedicate €28 million ($32 million) to the fund, which will be increased to €45 million ($51.5 million) as of 2023 for new services if the demand warrants this. The European Commission will provide an additional €2 million ($2.29 million), giving a total of €47 million ($53.85 million).

INTA has urged the Court of Justice of the EU to adhere to the wording of EU law in a Polish case concerning the exhaustion of trademark rights in parallel import cases.

The association filed an amicus brief on January 7 at the CJEU in the case Harman International Industries v AB.

The Regional Court in Warsaw, Poland, referred the case to the CJEU, seeking guidance on how orders from national courts should be formulated in cases of parallel imports.

It was keen to ensure that the orders didn’t over-burden the defendant but also provided protection to the claimant, while securing free movement of goods and protection of IP rights.

The referred question concerns how claimants formulate claims in court actions introduced before a national court.

In its brief, INTA claimed that adopting wording that doesn’t stem from the EU legislation, as proposed by the referring court, risks escaping the CJEU’s uniform interpretation and may result in multiple levels of protection in EU member states.

According to INTA, not sticking to wording stemming from EU legislation would shift the burden of proof to the trademark owner.

The association claims that this would contradict existing CJEU case law and undermine the protection of trademark owners’ rights under the regional EU trademark system.