IP Law Watch – Page 38 – Legal issues, law and regulations concerning the world of IP

Nucleic Acids Remain Patentable in Australia

Oct 27 2016

A recent Patent Office decision in Arrowhead Research Corporation [2016] APO 70¹ (“Arrowhead”) has confirmed that nucleic acids can still be patented in Australia.

Following the High Court of Australia’s ruling in D’Arcy v Myriad Genetics Inc [2015] HCA 35² (“Myriad”), the Australian Patent Office has been broadly objecting to claims that encompass isolated nucleic acids. This practice has frustrated applicants and their attorneys who consider many of the objections to be reactionary, and not consistent with the facts and principles set out in Myriad. In a very recent decision, the Patent Office has confirmed that nucleic acids remain patentable subject matter in Australia by allowing claims directed to interfering RNA compositions.

In Myriad, the High Court clearly stated that it would not be concerning itself with “gene patents” generally, but with the disputed claims specifically (at [37]). Those claims defined isolated nucleic acids per se that were useful in the detection of breast cancer. While acknowledging that the claims defined a product created by human action, the High Court considered that the “substance” of the claims was information, which could not be the subject of a valid claim.

Federal Circuit Confirms Cuozzo Does Not Disturb § 314(d) Bar on Appellate Review of PTAB Reconsideration of IPR Institutions

Oct 25 2016

The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue of whether termination of instituted inter partes review (“IPR”) proceedings based on a failure to meet the statutory filing requirements for a petition (namely, to identify all real parties-in-interest) would be barred from review by 35 U.S.C. § 314(d). The Court found that Cuozzo did not disturb Federal Circuit precedent as to the § 314(d) bar on review for reconsiderations of institution decisions.

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By: Rebecca M. Cavin, James (Kwangho) Jang, Jason A. Engel

EU Board of Appeal decision: trademark application consisting of a combination of colours

Oct 20 2016

On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.

The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.

The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.

The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.

SOURCE: www.euipo.europa.eu

By: Daria Golus

From the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

Australian Court Orders Former Customers and Builder to pay Damages to Henley for Copying its House Plan

Oct 17 2016

A recent decision on copyright infringement in building designs

On 13 October, Justice Beach of the Federal Court of Australia delivered his judgment in the case of Henley Arch v Lucky Homes & Ors, a copyright infringement case in respect of a project home design.

Mr and Mrs Mistrys were customers who, in 2013, went part way through the sales process with Henley Arch (Henley) for it to build them a house in accordance with its “Amalfi” design. The Mistrys paid Henley a deposit and plans were drawn up to build the house on the block that the Mistrys were purchasing. The Mistrys signed a standard Henley document acknowledging that Henley owned copyright in the plans and that the Mistrys were not entitled to use these (other than by building with Henley). While the Mistrys had initially wanted Henley’s “Avenue” façade option, after they learned that this would increase the price by about AUD10,000 they reverted to the standard option for the facade.

The Mistrys did not sign a final contract with Henley and instead approached Lucky Homes with the Henley plan (which featured Henley’s title block and copyright notice). Lucky Homes agreed to build the home for the Mistrys with the “Avenue” façade they preferred for about AUD10,000 less than Henley’s price (that is, Henley’s price for the house with the standard façade). The Mistrys ultimately engaged Lucky Homes, and it engaged a draftsperson to create a plan for the Mistrys’ house from the Henley plan, with a number of minor changes.

Motion Trademarks as an Element of Brand Promotion

Oct 13 2016

One of the most interesting forms of trademark in circulation is the motion trademark

A Moving Logo

A motion mark may be an animation created using a computer program, or some other moving object which exists in the real world. In particular, such a mark may be in the form of a gesture made by a person using various parts of the body, especially the hand. Submitting a motion trademark involves the same criteria of assessment as do other forms of trademarks, but motion marks remain but a small fraction of the trademark submissions made in the European Union.

A motion trademark should have distinctiveness, and should be possible to depict precisely in an application. The presentability of motion marks depends on being able to depict a series of movements by an appropriate arrangement of a sequence of images. It is also crucial to provide a sufficiently exact description of the mark, including the order and form of the movement occurring in the images. In a motion mark, it is precisely the motion and the succession of scenes which are the most important aspects which may be subject to protection. Care must also be taken, since motion marks cannot appear in trade in “pure” form, but only as a combination of marks, for example, movement and sound (e.g. application CTM No. 003429909 showing clasping hands, used for some time by the company Nokia).

Practical Implications from the Federal Circuit’s Rare en Banc Reversal in Apple v. Samsung

Oct 12 2016

In a precedential opinion issued en banc on Friday, October 7, 2016, the Federal Circuit overturned a panel decision, affirming and reinstating the district court’s judgment and the jury’s verdict. The majority opinion scrutinized and at times scolded the panel for taking on a role well outside of its appellate function and erroneously relying on extrinsic evidence to modify an agreed to and unappealed claim construction and hold claims invalid for obviousness. The majority characterized the appellate court’s function as “limited” and “requiring appropriate deference be applied to the review of fact findings.”

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By: Jason A. Engel, Rebecca M. Cavin, Gina A. Jenero

Fall Brings a Flurry of Biosimilar Approvals: FDA Approves Biosimilars of Enbrel® and Humira®

Oct 03 2016

The United States biosimilars market is beginning to grow, with two recent approvals for biosimilars: Erelzi^® and Amjevita^®.

On August 30, 2016, the Food & Drug Administration (“FDA”) approved Sandoz’s application for a biosimilar of Enbrel^®. The product is called Erelzi and is the first biosimilar of etanercept to be approved by the FDA. Like Enbrel, Erelzi is administered by injection and is approved to treat moderate to severe rheumatoid arthritis and moderate to severe plaque psoriasis, among other conditions. Erelzi is approved as a biosimilar, not interchangeable, product. It is identified as etanercept-szzs.

A dog of a trade mark dispute

Sep 29 2016

A long running trade mark dispute between Black Dog Ride Pty Ltd (Ride) (http://www.blackdogride.com.au/) and the Black Dog Institute (Institute) has concluded almost four years after an acrimonious dispute arose between the two organisations ended what had been a mutually beneficial relationship. The Delegate of the Registrar of Trade Marks who heard the dispute ultimately dismissed each of the respective oppositions filed by the parties and confirmed the rights of Ride to register BLACK DOG RIDE (stylised) and the Institute to register BLACK DOG for various goods and services.

In 2002, the Institute was founded as a non-profit organisation specialising in the diagnosis, treatment and prevention of mood disorders. In 2008, Steve Andrews created Ride to organise charitable motorcycle rides to raise awareness of depression and suicide prevention. Importantly, the Delegate found that both Ride and the Institute adopted names including the words BLACK DOG as a result of Winston Churchill’s well known use of the phrase BLACK DOG when referring to his battles with the mood illness.

Remicade® Update: Double Patenting Redoubles in Post-Gilead Biosimilar Case

Sep 21 2016

On August 17, 2016, in Janssen Biotech, Inc. v. Celltrion Healthcare Co., District of Massachusetts Judge Mark Wolf faced a double patenting fact pattern that had not been adjudicated in a district court case since the Federal Circuit decided Gilead Sciences Inc. v. Natco Pharma Ltd. [1] Judge Wolf held U.S. Patent No. 6,284,471 (the “’471 patent”) invalid for obviousness-type double patenting over U.S. Patent No. 6,790,444 (the “’444 patent”) because the ’471 patent expired later due to the changes to patent terms under the Uruguay Round Agreements Act (“URAA”), even though both patents claim priority to the same application and the ’471 patent issued years before the ’444 patent. [2]

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By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots

Sep 15 2016

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

In July, the Court of Milan issued an interesting decision that granted copyright protection to the famous après-ski boots “Moon Boots” on the basis that they have recognized artistic value. In fact, the court recognized that Moon Boots have a particular aesthetic appeal capable of deeply changing the concept of après-ski boots, so that they have become an actual icon of Italian design.

In this case, the producer of the famous après-ski boots sued the producer and the distributor of a similar type of boots, called “Anouk Boots”. They alleged they constituted copyright infringement, infringement of the registered community design as well as unfair competition and asked for applicable remedies and compensation.