2020 – Page 5 – IP Law Watch

COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak

Apr 01 2020

In a Notice issued March 31, 2020, the U.S. Patent and Trademark Office (“USPTO”) extended certain filing and payment deadlines due between March 27, 2020, and April 30, 2020, by 30 days from the initial due date, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. The USPTO’s authority to offer this extension was part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 26, 2020.

COVID-19: UKIPO declares “interrupted days” to extend deadlines

Mar 31 2020

Following similar measures from the EUIPO and other national registries (see here), the UK Intellectual Property Office (the UKIPO), has declared 24 March 2020, and subsequent days until further notice, “interrupted days”. This means that any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period.

PTAB designates additional decisions precedential relating to its discretion to deny petitions

Mar 26 2020

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions. The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity. These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references.

U.S. Supreme Court Holds Copyright Remedy Classification Act of 1990 Does Not Abrogate State Sovereign Immunity for Copyright Infringement: Allen v. Cooper

Mar 25 2020

On March 23, 2020, the Supreme Court of the United States held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) does not abrogate the states’ sovereign immunity from copyright infringement suits.[1] The practical effect of this ruling is that copyright holders cannot sue the states for damages for copyright infringement.[2]

Allen was decided in reliance on and accordance with Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, a 1999 case in which the Supreme Court found unconstitutional the Patent Remedy Act (“PRA”), a related statute “basically identical” to the CRCA, that eliminated the states’ sovereign immunity from patent infringement suits.[3]

Applying the reasoning of Florida Prepaid and emphasizing stare decisis, the Supreme Court rejected the arguments that either Article I’s Intellectual Property Clause or Section 5 of the Fourteenth Amendment’s limitations on state power provide a basis for the CRCA’s abrogation of state sovereign immunity in copyright suits.[4]

German Constitutional Court partly slows down the Unified Patent Court Agreement Process

Mar 20 2020

Today the German Federal Constitutional Court announced its decision in the complaint against the German implementation of the Unified Patent Court Agreement (UPCA). The outcome of the decision is a clear yes-and-no!

U.S. Court of Appeals Affirms Copyright Sublicenses Can Be Implied by Conduct: Photographic Illustrators Corp. v. Orgill, Inc

Mar 18 2020

On March 13, 2020, the United States Court of Appeals for the First Circuit held in Photographic Illustrators Corp. v. Orgill, Inc. that a copyright licensee given the unrestricted right to grant sublicenses may do so without using express language.[1] Specifically, the court held that a sublicense may be implied by the conduct of the sublicensor and the sublicensee.[2] Orgill presents the first ruling by a circuit court on whether copyright sublicenses can be implied in the absence of express permission from a sublicensor.[3] Read More

COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged

Mar 17 2020

With the global impact of the COVID-19 pandemic being seen in all facets of our lives, European IP registries are also seeking to manage these exceptional circumstances.

On Monday 16 March 2020, the Executive Director of the EUIPO issued a decision extending all time limits for EU trade marks and designs expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. Similarly, the EPO has announced that all deadlines for patent matters are extended until 17 April 2020.

Misappropriators Beware: Motorola Court Embraces Extraterritorial Application of the Defend Trade Secrets Act

Mar 10 2020

On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case — Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd.[1] This judgment was made possible, in large part, by an earlier order from the district court holding that the Defend Trade Secrets Act (“DTSA”) applies to misappropriation that occurs outside the United States if (1) the misappropriator is a U.S. citizen or entity, or (2) “an act in furtherance of” the misappropriation occurred domestically.[2] While Motorola is not the first case to recognize that the DTSA provides a private right of action for foreign misappropriation,^[3] it appears to be the first substantive analysis of extraterritorial application of the DTSA to date.^[4]

Case Background

The Motorola case centered on allegations that Hytera, a Chinese rival of Motorola, misappropriated Motorola’s trade secrets to develop and sell a competing digital radio.[5] Motorola claimed that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole thousands of technical, confidential Motorola documents containing trade secrets and source code.[6] According to Motorola, Hytera used Motorola’s trade secrets to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s digital radios.[7] Hytera proceeded to sell its newly developed radios both internationally and in the United States.[8] While the key actions that enabled Hytera’s acquisition of Motorola’s trade secrets took place overseas, certain actions related to the misappropriation occurred in the United States.[9] In particular, Hytera advertised, promoted, and marketed products embodying the allegedly stolen trade secrets at numerous domestic trade shows.[10]

Beware the pitfalls of informal licensing agreements

Feb 19 2020

The Federal Court of Australia recently handed down its decision in the copyright case of Hardingham v RP Data. This decision serves as a warning about the risks of informal licensing arrangements. The case centres around copyright infringement regarding the use of photographs and floorplans without authority.

The applicants in the case were Real Estate Marketing (REMA) and its sole director, Mr Hardingham. REMA had been operating its business since 2009 and entered into informal agreements with real estate agencies to create and provide photos and floorplans of properties for marketing campaigns. It was understood by REMA that, as part of marketing campaigns, the agents would upload the commissioned photos to platforms such as realestate.com.au. However, the scope of the permitted uses by the agents was not clearly agreed or recorded in writing.

Cofemel’s first UK outing – The wooly world of copyright and designs

Feb 03 2020

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

Archive:2020