AIPPI Introduction Video Released
Australia Upholds its Tobacco Plain Packaging Measures
Introduction of Major Aspects of a New Revision of Draft Fourth Amendment to the Chinese Patent Law
Intellectual Property High Court Decides on the Patentability of CRISPR-Cas9 Related Patents
Are Eleven Inventors Enough or Too Much?
New Rules of Examination and Settlement of Administrative Disputes
Trademark Salon held in Beijing Focusing on Hot Topics in Trademark Prosecution
Remembering our Member of Honour: Geoffroy Gaultier
Articles & Case Notes:
By Víctor Garrido of Dumont, Bergman, Bider & Co., S.C.
Mexico City, Mexico.
In landmark domestic and international dispute procedures, the exertion of some intellectual property rights is restricted by tobacco product plain packaging measures in Australia.
Australia was one of the first states signing and ratifying the World Health Organization (WHO) Framework Convention on Tobacco Control (FCTC), which entered into force on February 27, 2005, which has been ratified by 181 members and contemplates, as an optional measure, plain packaging of tobacco products in its guidelines. A subsequent legislative process initiated in 2008 led the country to the adoption of a series of tobacco-control-related measures, including the Tobacco Plain Packaging (TPP) Act, the TPP Regulations, and the Trade Marks Amendment Act (related to tobacco plain packaging), which were enacted in 2011 and fully implemented in 2012, all together hereinafter being referred to as the TPP measures, which operate in conjunction with other legislative requirements.
The TPP measures prohibit the appearance of trademarks and marks anywhere on the retail packaging of tobacco products, except for the brand name, business or company name, variant name, relevant legislative requirements, and other items.
Tobacco companies fought against the TPP measures. The Australian Government defended them before the High Court of Australia (JT International SA and British American Tobacco Australasia Limited v Commonwealth of Australia, 2012), specifically on the issue of whether the TPP Act resulted in an acquisition of some plaintiffs’ property by the restrictions to use their trademarks. By a majority, the High Court found that the object of the TPP Act is to dissuade persons from using tobacco products in such a way that, if effective, the plaintiffs' businesses may be harmed, but the Commonwealth do not thereby acquire something in the nature of property itself. Moreover, the Australian Government prevailed in a challenge by Philip Morris (Philip Morris Asia Ltd v Australia, 2012) in an arbitration claim under the investor-state dispute settlement regime of the Australia-Hong Kong Agreement on the Promotion and Protection of Investments. Philip Morris requested an order to withdraw the TPP measures or refrain from applying them against the company, or award damages for more than four million US dollars plus fees and expenses. The arbitration tribunal dismissed the claims as inadmissible and precluded itself form exercising jurisdiction over the dispute.
On September 20, 2013, Indonesia requested consultations with Australia within the WTO concerning certain Australian laws and regulations that impose restrictions on trademarks, geographical indications, and other plain packaging requirements on tobacco products and packaging. The consultation process was thereafter joined by a plurality of countries. Indonesia requested the establishment of a dispute resolution panel (DRP), which was composed on October 10, 2014, having as complainants the Dominican Republic, Honduras, Cuba, Indonesia and Ukraine. On May 28, 2015, this latter country requested its proceedings to be suspended. On June 28, 2018, the DRP report was circulated to WTO Members and adopted by the Dispute Settlement Body on August 27, 2018. In its report, the DRP found that the complainants had not demonstrated that Australia's TPP measures are inconsistent with Article 2.2 of the TBT Agreement, Articles 6quinquies and 10bis of the Paris Convention (1967), read in conjunction with Article 2.1 of the TRIPS Agreement, Articles 15.4, 16.1, 16.3, 20, 22.2(b), and 24.3 of the TRIPS Agreement, and Article IX:4 of the GATT 1994. In light of these findings, the DRP declined the complainants' requests that Australia was recommended to bring its measures into conformity with its obligations under the relevant international agreements. Documents related to the DRP report, including a summary of key findings, are available here: https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds467_e.htm
Starting on July 13, 2018, Honduras, Cuba and the Dominican Republic appealed some of the DRP report findings before the WTO Appellate Body, mainly, those related to Article 2.2 of the TBT Agreement and Articles 16.1 and 20 of the TRIPS agreement; however, in its consolidated report dated June 09, 2020, the Appellate Body confirmed all the appealed issues. The contents of the Appellate Body’s consolidated report are available in the following link: https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/WT/DS/435ABR.pdf&Open=True
Some interesting IP-related conclusions reached by both the DRP and the Appellate Body include the following:
Article 16.1 of the TRIPS Agreement grants a trademark owner the exclusive right to preclude unauthorized use, in the course of trade, of identical or similar signs for goods or services that are identical or similar to those with respect to which the trademark is registered but the Agreement does nor confer a positive right to use its trademark or a right to protect the distinctiveness of that trademark through use.
The owner of a registered trademark can exercise its exclusive right against unauthorized third parties but not against the WTO Member in whose territory the trademark is protected.
The possibility of a reduced occurrence of a likelihood of confusion in the market due to regulatory measures does not, in itself, constitute a violation of Article 16.1 of the TRIPS Agreement which additionally does not require Members to refrain from regulatory measures that may affect the ability to maintain distinctiveness of individual trademarks or to provide a minimum opportunity to use a trademark to protect trademarks distinctiveness.
Under Article 20 of the TRIPS Agreement, Members enjoy a certain degree of discretion in imposing encumbrances on the use of trademarks.
In order to establish that the use of a trademark in the course of trade is being unjustifiably encumbered by special requirements, the complainant has to demonstrate that a policy objective pursued by a Member imposing special requirements does not sufficiently support the encumbrances that result from such special requirements. However, while in the circumstances of a particular case the existence of an alternative measure involving a lesser degree of encumbrance on the use of a trademark could be used as a consideration in evaluating the justifiability of special requirements and related encumbrances on the use of a trademark, such an examination is not a necessary inquiry under Article 20 of the TRIPS Agreement.
By Weining Wang and Xiaolin Dang of Beijing Sanyou Intellectual Property Agency Ltd
The new revision of the draft was released to the public on June 28, 2020, after second deliberation by the Standing Committee of the National People’s Congress (NPC). Procedurally, the draft patent law would be normally passed upon the third deliberation by the NPC Standing Committee.
The proposed revision is mainly directed to the following.
A design for a portion of a product would be allowable.
A domestic priority of 6 months is introduced.
The duration of design patent extends to 15 years from 10 years.
Patent Term Adjustment
Patents dealing with a new drug will get patent term adjustment, a maximum of 5-year extension but with a validity period no more than a total of 14-years after the new drug approval.
Patent term for those unreasonably delayed grant by the CNIPA will be extended a validity period.
For both the above, the adjustment is triggered by the request of patentee.
Exception without Loss of Novelty
The new exception includes those first disclosed for the purpose of public interest upon the state of emergency or when an emergency occurs in the country.
Ineligible Patent Subject Matter
The method of nuclear transformation is added to this category.
Open License for Patent
Open license for patent is introduced in this law that the China National Intellectual Property Administration (CNIPA) will help the patentee to make a notice to the public for open license of patent upon patentee’s declaration in writing before the CNIPA.
For a patent dealing with a utility model patent or a design patent, an evaluation report by the CNIPA is required.
During the open license period, a further general license could be made but an exclusive license and a sole license are banned.
An open license for a patent is retractable in writing while the prior open licensed contract will be kept effective.
The statutory damage is to be set with cap of 5 million RMB and without lower limit.
Punitive Damage is introduced where the circumstances of willful infringement of the patent right are serious, the amount of damage may be determined between one and five times of the determined amount according to one of the three methods of calculating damage based on the loss profit, the profit from infringement and reasonable times of previous royalty.
The court has the right to order the infringer to provide account book and materials related to the infringement act when the patentee has tried his best to provide them, and the court has the right to decide the damage by referring to the patentee’s claim and evidence if the infringer does not provide or provide false account book or materials.
The damage shall include a reasonable expenses paid by the patentee to stop the infringement.
Passing off Patent
A fine of less than 5 times the illegal income or a fine of less than 250000 RMB where the illegal income is less than 50000 RMB from the passing off patent shall be imposed by the department in charge of patent law enforcement.
Patent Link of Drugs
A patent link of drugs is first introduced in article 75 of this revision.
Statute of Limitations for Patent Infringement Litigation
This statute of limitations is changed from 2 years to 3 years from the date of patentee’s knowledge of the infringement action and the infringer.
The State encourages the patentee to adopt equity, option and dividend to enable inventors or designers to reasonably share innovation income.
- Comparison table before and after revision of the Patent Law of the people's Republic of China (Draft Amendment)
By Yuichiro Suzuki of Kubota
In regard to two decisions by the JPO Trial Board refusing to grant patents related to CRISPR-Cas9 by the Broad Institute, part of the Massachusetts Institute of Technology and the Harvard University, the IP High Court on February 25, 2020 rescinded one of the decisions and upheld the decision of the other case.
Generally speaking, CRISPR-Cas9 system includes Cas9 (cleavage enzymes) and guide RNAs (namely, crRNA and tracrRNA) that guide Cas9 to a target site. CRISPR-Cas9 system is a breakthrough genetic modification technology that allows for deletions, replacements, or insertions in the genome sequence at the target site.
- Case No. 1 (2019 (Gyo-ke) 10010: the JPO decision was upheld)
The JPO Trial Board rejected the patent application made by the Broad Institute and others (“Plaintiffs”) entitled “Engineering of systems, methods and optimized guide compositions for sequence manipulation” (Patent Application 2016-117740, Priority date: December 12, 2012), citing existing CRISPR technology, namely Citation 1 (Chen, PCT/US2013/073307, as a “prior application”, priority date: December 6, 2012, publication date: June 12, 2014) and Citation 2 (Jinek 2012, as a basis of lack of inventive step, published online on June 28, 2012).
The Plaintiffs brought a lawsuit presenting the following grounds for rescission of the trial decision:
- Errors in decision under Article 29-2 (Prior Application) of the Patent Act based on Citation 1
- Errors in decision under Article 29 (2) (Inventive Step) of the Patent Act, based on Citation 2.
The Court upheld the trial decision as follows.
- One of the main issues here in this case was whether Citation 1 discloses the claimed configuration of “wherein the guide RNA directs the type II Cas9 protein to a targeted site in the chromosomal sequence in the eukaryotic cell where the type II Cas9 protein introduces a break of double-strand of chromosomal DNA in the targeted site, and the break of double-strand is repaired by a DNA repair process such that the chromosomal sequence is modified”.
- Plaintiffs argued that Example 4 (FACS testing) of Citation 1 can only be used for screening and Example 5 (PCR testing) of Citation 1 is the more sensitive and accurate test, and that based on the results of Example 5 (PCR) which did not show results of integration, a person skilled in the art should have concluded that there was no integration into the target site in Citation 1, and therefore, Citation 1 shall not be qualified as a “prior application”.
- The Decision took the position that “the degree of disclosure of technical contents is sufficient if the prior invention is described to the extent that a person skilled in the art can understand that the prior invention is described therein and that the invention is practicable” in recognizing the “invention” described in the prior application under Article 29-2 of the Patent Act.
- Further, the Decision stated that “Example 4 (FACS) describes a specific test method for confirming that a donor sequence (GFP gene) is integrated into the target sequence. Moreover, from the results of Example 4 (FACS), it can be understood that … double-strand breaks and repair occur at the target site. Example 5 (PCR) cannot be interpreted as an obstacle to the above understanding.”
[Comments] Considering precedents regarding chemical substance patents, pharmaceutical patents, and so on, the above criteria that “the degree of disclosure of technical contents is sufficient if the prior invention is described to the extent that a person skilled in the art can understand that the prior invention is described therein and that the invention is practicable” is questionable. The case is on appeal to the Supreme Court.
- Case No. 2 (2019 (Gyo-ke) 10011: the JPO decision was rescinded)
The JPO Trial Board rejected Plaintiffs’ patent application entitled “CRISPR-Cas systems and methods for altering expression of gene products” (Patent Application 2016-128599) and then Plaintiffs sought recession of the decision. Unlike the application discussed above, this application had a limitation that the “tracr sequence is 30 or more nucleotides in length”. In this case, the Court found that a claimed element with regard to the length of the tracr RNA has patentability and reversed the trial decision.
By Joshua B. Goldberg of Nath, Goldberg & Meyer
Alexandria, Virginia, U.S.A.
The patent at issue here named 11 inventors on its face. After patent litigation had started, the patent holder Egenera realized all claim limitations had been conceived before one of the listed inventors started working there. The USPTO granted a petition to remove this inventor. However, during litigation, an attempt was made to re-add this inventor. In overturning the District Court, the CAFC agreed this re-addition was permissible and not blocked by estoppel.
In the recent case of Egenera, Inc. v. Cisco Systems, Inc., (Fed. Cir. 20202), http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2015.OPINION.8-28-2020_1644541.pdf, Egenera’s U.S. Patent No. 7,231,430 listed eleven inventors. In 2016, Egenera sued Cisco for infringement, and Cisco responded with an IPR petition challenging the validity of the patent. At that time, Egenera realized all claim limitations had been conceived before one of the listed inventors started working there and was thus concerned with its ability to prove an early pre-filing invention date. While the IPR was not instituted, the USPTO did grant a petition to remove the inventor (Peter Schulter).
During the District Court proceeding, Cisco argued Mr. Schulter actually was an inventor and that the patent should therefore be invalid. In response, Egenera suggested that Mr. Schulter by conditionally re-listed as an inventor. This suggestion was rejected by the District Court on the basis that judicial estoppel precluded Egenera from re-adding Mr. Schulter’s inventorship. As a result, since the District Court believed Mr. Schulter should have been an inventor, the patent claims were invalid.
The CAFC reviewed this inventorship decision on appeal. Under US law, the typical test for determining judicial estoppel includes:
1. Are the two positions clearly inconsistent with one another?
2. Did the party succeed in persuading the court to accept the first position?
3. Would the party receive an unfair advantage if not estopped?
On review, the CAFC found no clear inconsistency between the different positions taken by Egenera. This was based, at least in part, on the District Court’s interpretation and construction of the patent claims inconsistent with the position taken by Egenera. Since the claims define the invention, and thus the inventorship, this was considered to be a highly relevant factor. In addition, the CAFC also found there was no unfair advantage taken by the apparent inconsistent positions. Even though Mr. Schulter was dropped as an inventor due to the potential IPR proceeding, the IPR was denied before the change in inventorship was approved. Since none of the factors pointed to estoppel, according to the CAFC, the judicial estoppel was improperly applied.
On remand, the District Court will need to permit the re-addition of Mr. Schulter as an inventor, and then reconsider the validity and infringement of the patent at issue.
By Vladimir Biriulin
President of AIPPI Russia.
The Russian patent office introduces new Rules to streamline examination of the appeals and make them more friendly to the conflicting parties. New Rules of examination and settlement of administrative disputes by the patent office came into force on September 6, 2020…
The Russian patent office has introduced new Rules to streamline the examination of appeals and make them more friendly to the conflicting parties.
These new Rules of examination and settlement of administrative disputes by the patent office came into force on September 6, 2020. These rules substituted earlier Rules used from 2003.
The basic differences of the new Rules in comparison with the earlier Rules are the shortening of terms of examination of disputes, electronic communication of the parties with the patent office and the removal of limitations of rights of the persons who filed the appeals and statements to file new arguments in support of their claims.
Removal of the above limitations in conjunction with the right of the Chamber of Patent Disputes to consider new and known to it circumstances show that the new Rules are more reasonable. They are based on the concept consisting in that the administrative procedure of examination of the disputes, unlike the court procedure, does not provide for the principle of competitiveness of the parties only. It also empowers the patent office to go outside the scope of the appeal in order to correct mistakes made by the patent office in its decisions related to the grant or refusal of grant of a protection title.
AIPPI Country News:
By Lei Zhang. China Patent Agent (H.K.) Ltd.
The AIPPI Chinese Group held a Trademark Salon in Beijing on August 28, 2020, the first of a series of events to be held by the Trademark Committee of AIPPI China focusing on hot and controversial issues in trademark prosecutions.
China has witnessed a rocketing rise of trademark filings in the last five years. One can imagine that with these huge numbers, there are quite a lot of controversial issues that trademark practitioners and trademark owners encounter. In this Salon, senior examiners from the trademark examination division and trademark review division of the CNIPA, as well as a senior Judge from IP Tribunal of Beijing High People’s Court, were invited to join an open discussion with senior trademark attorneys and legal counselors of two promising Chinese companies on two topics, "How the continuous trademark registrations are viewed and handled" and "How to distinguish the distinctive part and indistinctive part in the examination stage".
The Salon drew around 160 participants and also more than 3,000 online viewers as the discussion was also aired online simultaneously. It was organized with dedication by the five members from the Trademark Committee of AIPPI China, Ms. Maggie MI from CHISPO and Mr. Yakai SHI from Beijing Dakun Law Firm were the moderators of the two topics, Ms. Alice ZHAO from CCPIT Patent and Trademark Law Office organized the discussion material and contents, and Dr. Qiang MA from Hai Wen Law Firm and Rachel ZHANG from China Patent Agent (H.K.) Ltd. spoke from the perspective of the trademark practitioner.