Around the IP blogs!

What’s happening around the IP blogs? Your handy weekly summary is here! This week we have analysis of some of the AIA's less known provisions, comments on the new EU 'naughty list' for IP infringers and analysis of the recent CJEU preliminary ruling on competition law in the pharmaceutical sector.

Copyright

IP finance reports on a Variety article commenting on the recent regulations issued by the US Copyright Royalty Board, in which the royalties available to songwriters for online streaming services such as Pandora, Spotify, Apple and YouTube were raised by almost 50%. Variety asks whether this increase is sufficient - does the industry still need time to grow, or should the disparity between performance and streaming royalty rates be further addressed?

Prof. Saurabh Vishnubhakat

Competition law

On the 1709 Blog, CopyKat reports on the coming-soon EU’s watch-list for online and physical marketplaces where IP abuse is common. The EU list will be similar to the US Trade Representative (USTR) “Notorious Markets List” (Special Report 301) in which IPKat takes a keen interest and which provides an overview of copyright holder complaints. As CopyKat points out, the US list excludes US infringes and only includes foreign counterfeiting and piracy markets. The European "Counterfeit and Piracy Watch-List" will therefore hopefully reveal some new information on the US’s own “notorious markets.” Contributions to the new EU list can be made here (deadline 31 March 2018).

Patents

Patentlyo comments on the often overlooked provision provided in the America Invents Act (AIA) which allows the USPTO to intervene in an appeal from the PTAB to the Federal Circuit (AIA, 35 U.S.C. § 143). Patenlyo observes that the USPTO makes ample use of this right, with apparent strategic aims by only intervening certain cases and often to the detriment of the patent owner (80% of cases). Professor Saurabh Vishnubhakat of Texas University (former adviser to the USPTO) explores how the right of the USPTO to intervene interacts with the constitutional limits on the USPTO’s power. The blog post is based on a paper published in the NYU Annual Survey of American Law.

Sovereign Kat

Continuing the AIA theme, the Kluwer Patent Blog reports on the latest decision by the US Federal Circuit regarding patent invalidity based on an “on sale” bar, according to which a patent can be found invalid if the patented subject matter was both the subject of a commercial sale, or offer for sale, prior to the critical date of the patent and “ready for patenting” (this Kat believes the US is the only jurisdiction to have such a provision, but is ready to stand corrected!). In Europe, for example, a patent cannot be invalidated by prior use (including sale) of an invention, if a skilled person would be unable to reverse engineer the invention. It was one apparent aim of the AIA to bring the US in line with Europe and the rest of the world on this matter. However, as the Kluwer Patent Blog comments, whether or not this attempt was successful has been a contentious issue. In their recent decision, the Federal Circuit has now clarified that, under the post-AIA version of 102(b), public disclosure of the existence of the sale of a patented item may suffice to invalidate patent under the on-sale bar, even if “the details of the invention” are not “publicly disclosed in the terms of sale.”

IPwatchdog explores the issue of sovereign immunity in US intellectual property disputes. What happens in cases where the government is the alleged infringer?

Trust in IP analyses the recent preliminary ruling by the CJEU addressing some major issues of competition law in the pharmaceutical sector. The request for a preliminary ruling concerned a case in which the Italian Competition Authority fined Roche and Novartis 180 million euros for colluding to artificially reduce the demand for the off-label drug Avastin, to the benefit of the more expensive drug Lucentis. Lucentis is manufactured by Novartis and licensed to the Roche subsidiary Genentech. As part of the supposed agreement between Novartis and Roche, Roche requested an amendment by the EMA that the characteristics of Avastin be amended to include alleged side effects - where these effects were in fact uncertain. The Italian Council of State asked the CJEU whether, in the context of scientific uncertainty, a concerted practice intended to emphasize that a drug is less safe or efficacious than another, should be regarded as a restriction of competition by object under Article 101(1) of the TFEU? The CJEU concluded that it was.

Events

IP Alchemist and alumnus Kat Darren Smyth provides comments on the recent IP Out Event (part of IP inclusive).

Look out for details of future IP Out events here on IPKat!

Trade agreements

In Canada, Michael Geist is as ever on top of the latest goings on with the NAFTA negotiations, and their implications for IP. This week, Michael reports on Candian Prime Minster Justin Trudeau’s speech at the World Economic Forum Annual Meeting, in which Trudeau cited changes to the IP provisions as one example of how the Canadian government worked to make the TPP more progressive. The US, by contrast, now wishes to replicate the original TPP IP chapter in a renegotiated NAFTA. The list of IP provisions originally suspended from the TPP can be found here.

Brexit

CLASS 46 reports on the publication by the EUIPO of a Q&A document on a so-called “hard” Brexit and its potential effects on EU trademarks and designs. A full review by the MARQUES Brexit Task Force is promised! The latest developments in the UK concerning IP and Brexit are reported here by IPKat.

Author: Rose Hughes