The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 22 June 2017

UPDATE: Former Constitutional Court judge weighs in on UPC ratification suspension

Prof. Broß 
The JUVE news blog has published a short interview with former Constitutional Court judge Prof. Dr. Siegfried Broß on the constitutional complaint against the UPC-ratification in Germany.

Broß believes that the EPO Boards of Appeal are not independent from the EPO President and the EPO administration. He considers the recent reforms as being mere “cosmetics“.

A further point was the unjust imbalance regarding legal measures against validity decisions. While a European Patent is retroactively invalid with a final invalidation decision of the EPO’s Boards of Appeal, the opponent can – if the EP is upheld by the EPO’s Board of Appeal – continue to attack the then national parts of the upheld European patent in national invalidity proceedings.

Finally, Broß criticizes that the EPO would not commit to the protection of its employee’s fundamental rights guaranteed by national law and the EU Charter. A state transferring sovereign rights to a supranational administration has to safeguard that his nationals employed by such a supranational administration benefit from the same rights and standards as guaranteed by the German constitution. Prof. Dr. Broß strongly believes that these “fundamental constitutional deficiencies” have been overlooked and neglected during the drafting phase of the Unitary Patent Package.

Regarding the timing of the proceedings before the German Federal Constitutional Court, Prof. Dr. Broß says that it would be possible to decide the case within seven months but that the matter is not urgent. Rather, the Court would have to wait for the result of the Brexit negotiations until it hands down a decision.

Keep in mind that while Prof. Broß is certainly a competent lawyer with high standing - he was a judge at the Federal Court of Justice for twelve years and at the German Constitutional Court from 1998 to 2010 - he has been retained as a party expert in the Mundipharma complaints pending before the Constitutional Court, and his views expressed above certainly are in line with the complainant's position.

Life as an IP Lawyer: Sydney, Australia

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


Wen Wu

For the seventh in the series, we travel 10,553 miles south east to Sydney, Australia - the location of this year's AIPPI Annual Congress - where Wen Wu of Gilbert + Tobin looks towards the role of artificial intelligence in IP practice, changing default locations for IP Office hearings and dining with Sir Robin Jacob.

What can you see from your office window right now?

I’m lucky to be surrounded by a panoramic view of Sydney overlooking Pyrmont Bay, towards the Blue Mountains. In the evenings, laser lights dance and flicker as part of Sydney’s Vivid festival.

When did you know that you wanted to pursue a career in IP?

I took A/Prof Michael Handler’s IP course at UNSW in the first part of 2008 and loved it. Later that year, I wrote a paper on the iiNet case. I knew then I wanted to work in this fascinating area of law.

Walk us through a typical day...

I get to the office between 8 and 9am, depending on the morning’s commitments. My typical day will probably familiar to your readers: preparing cases for hearing; preparing correspondence/advice; participating in calls/meetings/conferences; supervising/mentoring or being supervised/mentored; instructing counsel; and attending court. Some days will be more exciting than others, but the subject matter is never boring. There is no “face time” in my team, so when it’s not busy, I leave at about 7pm.

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

For a country with a population of 24 million spread over an area the size of the US, Australia has a modern, relatively sophisticated IP system. We are a signatory to most major IP treaties. In 2016, Australia’s IP Office handled ~28,000 patent filings, ~71,000 trade mark filings and ~7,000 design filings (PDF). Our main IP court, the Federal Court of Australia, has substantial IP experience and recently introduced a specialist IP stream.

A second difference is that we have a second-tier patent called the innovation patent, with a lower level of invention and a term of 8 years. Because they are quick to register, innovation patents are often deployed in litigation. They have received criticism from one of our law reform bodies, which recommended their abolition. The Australian Government has not yet responded to this recommendation.

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

The main challenge is one common to all lawyers everywhere: how to create and demonstrate value to clients in a world of increasing commoditization, automation and disruption of legal services. In previous generations, expectations were different and communications were less instantaneous (I recall reading a letter from decades ago ending, “We look forward to receiving your response within 28 days”).

What are the misnomers that people have about IP practice in your jurisdiction?

Law students are often attracted to IP practice because it is seen to be “sexy”. It is not sexy. But it is almost always interesting, intellectually challenging and varied.

What advice do you give clients when they are looking to protect or enforce IP rights in your jurisdiction?

Start with the end: what is the outcome the client wants to achieve? From the result, you work out the options and the strategy to get there. Speak to the law/IP firms on your panel and compare their approaches. Cheap is not always best. A brand name is not always best.

If you could change one thing about IP practice in your jurisdiction, what would it be?

That IP Office hearings were held by default in the major capital cities, rather than in Canberra.

View from the office...
What gives you the biggest thrill in your job?

To work with clients and experts in a variety of different industries and fields. There has never been a day where I haven’t learned something new about a client’s business or an expert’s field.

What are the top trends or cases that we should be looking out for in your jurisdiction in 2017?

I mentioned earlier about a law reform body’s proposal to abolish innovation patents. The body also made a number of other recommendations (PDF), including in copyright (introduce fair use) and patents (raising inventive step to be similar to Europe’s). The Australian Government will respond to these recommendations in mid-2017.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

A deep interest in IP law, a strong work ethic, the ability to handle stress, the ability to work in and rally a team towards a goal, and the importance of showing up.

As the IPKat’s readers are likely eating their lunch while reading this, what is a typical lunch for you?

I try to eat healthy on most days, but sometimes I have some comfort food like pho or Hainan chicken rice.

What other jurisdictions do you work with the most in your practice?

The US and the UK. On the trade marks side, we work with associates all over the world.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Unless the profession were fully replaced by AI, I hope we would still be thriving and responding to the challenges that face us today. Efficiency and innovations will be the norm. Technology will allow us to do more and different things, but we will be no less busy.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

I’d like to practise in the US or the UK to see how things are similar but different, and to gain different perspectives.

Royal Botanical Gardens (Flickr)
If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?

Sir Robin Jacob, one of your biggest IP rock stars.

What is the best piece of advice you have ever been given?

I’ve retold this story many times over the years that I can’t say whether this advice was given or not, but here goes: in response to the book Getting to Yes, one of my supervisors said to me, “The client’s position is yes. Get to yes.”

If our readers were to come to your city - which they may well be doing in October for AIPPI - what are the top three things you recommend they see, do and eat (in that order)?

Watch the ferries roll in and out of our beautiful harbour city, followed by a walk (or run) along the water’s edge in the Royal Botanical Gardens, topped off by lunch at Masuya Izakaya.

Wednesday, 21 June 2017

A googol of generic questions in Ninth Circuit's Elliott v Google decision

If you were going to ask a friend to search something online, what word or phrase would you use to direct him or her to conduct that search?  "IPKat it", of course!  Kat jokes aside, this question was at the center of the recent Ninth Circuit Court of Appeals (Ninth Circuit) judgment in Elliott v. Google.

The dispute concerned the attempt of Mr. Gillespie (later joined in the suit by Mr. Elliott) to acquire 763 domain names such as “” and“”, all containing the word “google”. Google Inc. objected to the registration and filed a complaint of domain name infringement, or “cybersquatting”, before the US National Arbitration Forum. Upon refusal, the claimants petitioned the Arizona District Court for the cancellation of the Google trade mark on grounds of “genericide”. In other words, according to the claimants, the Google trade mark would have lost its uniqueness as it is used as a verb in common language. In fact, in the cross-motions for summary judgment, the claimants stated that the use of a trade mark as a verb, i.e. “I will google this”, constitutes genericness automatically. On grounds of insufficiency of evidence provided to support this argument, the District Court sided with Google and dismissed the claim. The claimants decided to appeal the judgment, focusing on two arguments in particular:
  • the District Court misapplied the primary significance test + it failed to recognize the importance of verb use; and 
  • the District Court impermissibly weighed the evidence in the granting of the summary judgment.
The question which then the Ninth Circuit had to answer was: Are there any genuine issues of material fact and did the District Court apply the relevant substantive law?

The Ninth Circuit ultimately sided with the District Court's findings that the evidence before it from the claimant was insufficient.

With regards to the first point of appeal, the circumstances surrounding Mr. Elliott's claim are undeniable - people do actually use the verb “to google”. What was lacking in the claim, as the Ninth Circuit noted, is the fact that it was not made with regards to a particular type of good or service. Lanham Act provisions supported Google's view.  Those provisions clearly state that in order for a mark to be considered generic the mark must lose its primary significance towards less than all of the goods and services for which the mark is registered (15 U.S.C. §1064(3)).

With arbitrary or fanciful marks, the word used as trade mark has its own meaning and it therefore has its own place in language (the Ninth Cirucit in this case used the example of the trade mark IVORY, which is a trade mark for soap but also is the material of the tusks of elephants Abercrombie & Fitch Co. v. Hunting World, Inc., F.2d 4, 9 n.6). Thus, it is essential when making a generic trade mark claim to clearly identify the goods and services related to the product: in fact, a mark maintains its validity if the public can describe “who” the mark is, conversely, the mark loses its validity if the public only understands “what” the service is Kellog Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938). Only implying that the fact that “to google” is used as a verb is not enough, the primary significance test must be shifted to inquire whether the public, when using such verb, implies a generic way of referring to search engines or whether it identifies the Google search engine in particular. In this regard, the Court noted that it is not possible to partake to the public's inner thought process and thus discern whether they are using the verb in a “discriminate”, or with a particular source in mind, or an “indiscriminate”, no particular source in mind, manner (the same reasoning was followed in the Coca-Cola Co. v. Overland Inc., 692 F.2d 1250 (9th Cir. 1982), where it was argued that customers in a restaurant when ordering “a COKE” could refer to any type of cola beverage). 

A googol of Kats
This Kat also thinks that an argument could have been made with reference to the word googol, the very word from which the trade mark name Google originated from. A googol, in mathematical lingo, is a 1 followed by 100 zeros. In fact, the intent behind the choice of the trade mark Google as a search engine was to indicate the act of sifting through an immense amount of data, a googol of data with a small typo. Googol is then a word with its own meaning and could very well be used as a verb, to indicate, for example. the multiplication of a number by a very large amount. It is certainly not a common usage word, but nonetheless it exists and it pertains to a completely different domain, thus underlining the importance of identifying the goods and services involved.

The Ninth Circuit found that the use of a trade mark as verb does not constitute genericness automatically and that the claimant did not produce enough evidence to support its argument.

As to the second point of appeal, the Court determined that the evidence put forward by the claimant was insufficient as to “how the public primarily understands the word itself”. The claimant produced four categories of evidence:  (i) consumer surveys (of which only one was considered acceptable); (ii) use by the media and by consumers; (iii) use in dictionaries; and (iv) evidence from Google itself encouraging users to “keep googling”.  All evidence was dismissed.   

The question reported in the opening of the post was considered as only supporting the statement that the verb “to google” might be used indiscriminately, but that does not necessarily imply that it refers to all search engines. On the second point, use by the media and consumers, the claimant cited as evidence the song Bottlez (rEVOLVEr, RCA Record 2001), where the singer T-Pain says "to google [his] name”. The Ninth Circuit held that it was impossible to partake to the singer's inner thought process. It was also impossible to determine if T-Pain was referring to Google or to another search engine. Other examples of use in the media and by consumers cited by the claimant were of  the use of the phrases such as “to google on eBay” and “to google on Facebook”.  These were rejected as they were not disclosed during discovery and, in any event, they were considered largely irrelevant.
The dictionary evidence was not decisive. This was because the sources cited refer to the verb “to google” - the secondary meaning of the trade mark which only indicates the act of searching something through a search engine. As for the last point, the claimant was, again, not able to show what was on the mind of Mr. Larry Page when he wrote the “Google Friends Newsletter”.  

Finally, Elliott argued that there is no efficient alternative to the verb “to google” in order to describe the act of searching on the internet. This claim was rejected as the Court held that for this to be true it would require the search engines to call themselves “a google” but none of them do.  It reinstated that “genericide” does not occur “until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name” TY Inc. v. Softbelly's Inc., 353 F.3d at 531.

This Kat also thinks that the use of the Google mark has a hard time being compared to other marks which have become generic because searching on the internet is an active process.  A user will have to physically type the name of the search engine or have it previously set as a homepage, as opposed to for example asking for an aspirin at the drug counter or looking for shredded wheat cereal at the supermarket.  Furthermore, there is a difference between traditional and vertically integrated search engines: search engines like Google look for information across the web, while eBay, for example, will look into its vertically integrated database. As the Court pointed out in the judgment, the goods and services for which a trade mark is registered are key to a claim of "genericide". If eBay services, here taken as an example, are mixed up with the inherently different services of Google it is clear that that claim is void.

Keep IPKatting!

Image credits: Cecilia Sbrolli

Wolfing down those veggies: it's a matter of the right descriptive term

Ask a trademark attorney about descriptive marks, and she will tell you that they are ineffective as a source indicator. As such, descriptive marks usually give rise to one of two strategies: (i) argue that the mark is not generic, with the hope that secondary meaning/acquired distinctiveness can later be shown; or (ii) argue that the mark is ab initio suggestive (in US trademark parlance), rather than descriptive, and thus inherently distinctive. This Kat has been immersed in this way of looking at descriptive marks for more than 30 years (sigh).

It is refreshing, therefore, to consider descriptive marks from a quite different perspective.This Kat’s attention was drawn to a report on of a recently published research report— “Association Between Indulgent Descriptions and Vegetable Consumption: Twisted Carrots and Dynamite Beets”, by Bradley P. Turnwald, Danielle Z. Boles, and Alia J. Crum. If the title has not already whetted Kat readers’ palates and minds, consider the problem under scrutiny: are some words better than others in inducing students (at Stanford University, no less) to prefer healthy foods?

In the words of the study—
"Ironically however, health-focused labeling of food may be counter-effective, as people rate foods that they perceive to be healthier as less tasty. Healthy labeling is even associated with higher hunger hormone levels after consuming a meal compared with when the same meal is labeled indulgently. How can we make healthy foods just as appealing as more classically indulgent and unhealthy foods [citations omitted]?"
The study went on to label vegetables in one of four ways: basic, healthy restrictive, healthy positive or indulgent. Basic meant calling the vegetable by its name (certainly a generic use of the relevant words); the healthy restrictive category employed such terms as reduced-sodium corn or lighter-choice zucchini; and healthy positive included such terms as vitamin-rich corn and nutritious green zucchini. For indulgent descriptions, terms such as rich buttery roasted sweet corn and slow-roasted caramelized zucchini bites were used. The researchers then measured which category of term led the students to put more vegetables on their plate as well as to actually wolf down the chosen vegetables.

The big winner were the indulgent labeled veggies. They were 25% more likely to be taken than basic labeled vegetables. Even more notably, 35% more students chose indulgent labeled vegetables over healthy positive labels; and 41% more selected indulgent labeled vegetables over healthy restrictive labeled vegetables. As for consumption, indulgent labeled vegetables were consumed 23% more than vegetables labeled in a basic fashion, and a 33% increase was found when indulgent labels were used in comparison with the amount of vegetables consumed under a healthy restrictive label. There was no statistical difference in consumption in comparing indulgent labels with healthy positive labels.

There are two ways to look at these results. First, let the authors explain their findings:
“These results challenge existing solutions that aim to promote healthy eating by highlighting health properties or benefits and extend previous research that used other creative labeling strategies, such as using superhero characters, to promote vegetable consumption in children. Our results represent a robust, applicable strategy for increasing vegetable consumption in adults: using the same indulgent, exciting, and delicious descriptors as more popular, albeit less healthy, foods. This novel, low-cost intervention could easily be implemented in cafeterias, restaurants, and consumer products to increase selection of healthier options.”
We know that “healthy” means that it is good for us, but translating thought into action at the university cafeteria is not straightforward. Terms like those that entice us to eat junk food also tend to increase our likelihood to eat those healthy veggies (although what happens when the veggies are placed contiguous to the crisps and pastry, indulgent terms or not?)

From a trademark point of view, the results described above offer an interesting challenge, namely how to find indulgent terms that lie at the divide between a descriptive and suggestive mark. “Good evening, Mr. Phelps, your mission” is to convince the examiner that the mark using an indulgent terms is inherently distinctive. If successful, the registrant gets exclusive use of the term, which will have the potential to attract more custom than the various descriptive terms.

All in all, food for thought (sorry about that).

Picture on top right by Evelynfabi 95

Tuesday, 20 June 2017

Around the IP Blogs!

This Kitten is delighted to bring you the highlights from some recently published IP blogs!

Ben Challis reports on The 1709 Blog about Drake’s victory in the lawsuit filed by the Estate of James Oscar Smith, case 1:14-cv-02703-WHP. The case involved the inclusion in Drake’s song “Pound Cake/Paris Morton Music 2 part of the “Jimmy Smith Rap” lyric, which was then modified so as to convey something different (jazz versus “real music”). The Court found such inclusion was fair use and, as a consequence, the defendants were not liable for copyright infringement.

Transformative use in an old-fashioned way!
Moving to trademarks, MARQUES CLASS 46 reports on the amendments to the Rules 12, 25, 26, 27 and 32 of the Common Regulations under the Madrid Agreement and Protocol and item 7.4 of the Schedule of Fees. The amendments will enter into force on 1 July 2017 and provides, inter alia, that WIPO may issue an irregularity notice when examining international application regarding a limitation of goods or services, which should be remedied within three months, otherwise such limitation shall be deemed not contained in the application.

Staying with trademarks, John Welch discusses on The TTABlog the case of In re PharmaCann LLC, Serials Nos. 86520135 and 86520138, in which the Trademark Trial and Appeal Board refused to register PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana” and “dispensing of pharmaceuticals featuring medical marijuana” in classes 35 and 44, on the ground of lack of “bona fide intention to make lawful use of the marks”.

Turning to Appellations of Origin (AO), Patricia Covarrubia blogs on IP Tango about the announcement of the cancellation of the authorization to use the AO “Pisco” for those Peruvian producers who participate in the contest “Spirits Selection by Concours Mondial de Bruxelles”, which will take place in Chile this year. The announcement was made by INDECOPI (the Peruvian National Institute for the Defence of Competition and Protection of Intellectual Property), in the context of the changes to the participation rules, which provides that Peruvian producers will be allowed to participate if the products are named “Peruvian Grape Distillate” instead of “Pisco”.

Last, but not least, regarding patents, David Pearce muses on Tufty the Cat whether an Artificial Intelligence (AI) system could be considered as an inventor, in the context of a recent article published in the Digital BusinessLaw.

Monday, 19 June 2017

BREAKING: US Supreme Court holds provision preventing registration of disparaging trade marks unconstitutional

The Slants
Can signs which are offensive and disparaging be registered as trade marks?

Similarly to EU trade mark law, which prohibits registration of signs "which are contrary to public policy or to accepted principles of morality" [Article 4(1)(f) Trade Mark Directive; Article 7(1)(f) Trade Mark Regulation], the US Lanham Act contains a provision that prevents registration of certain signs on similar grounds.

More specifically, among other things §1052(a) provides that "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises ... matter which may disparage".

Readers will remember that the issue of disparaging trade marks has been at the centre of attention in the US for a while, also following the refusal, by the US Patent and Trademark Office (PTO), to register "THE SLANTS" as a federal trade mark. Readers will also recall that the issues facing disparaging trade marks are not limited to this case: back in 2014, for instance, the PTO cancelled the Redskins' trade mark registrations on the same grounds.

The application to register "THE SLANTS" as a trade mark was made by Simon Tam, lead singer of rock groupThe Slants”. The band chose this name [a slang, derogatory term used for persons of Asian descent] to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. 

Justice Samuel Alito
Further to the PTO's refusal to register the sign as a trade mark, Tam took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause in the Lanham Act facially unconstitutional under the First Amendment’s Free Speech Clause

The US Supreme Court accepted to consider the issue of disparaging trade marks, and earlier today it issued its judgment. Delivering part of the Court's opinion, Justice Alito announced the judgment, which affirms the Federal Circuit's judgment.

Among other things, Justice Alito held that: 

"The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech. Because the “Free Speech Clause . . . does not regulate government speech,” Pleasant Grove City v. Summum, 555 U. S. 460, 467, the government is not required to maintain viewpoint neutrality on its own speech. This Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints."

A more detailed analysis will be provided as soon as possible.

Never Too Late: If you missed the IPKat last week!

Don't let the sun go down on me...
Too busy soaking up the sun (which kindly decided to show up) to keep up with the latest IPKat news? No problem! Here is the 151st edition of Never Too Late!

Guest Kat Stephen reports on an event at UCL organised by the Institute of Brand and Innovation Law (IBIL). The theme was how composers in the time of Mozart made use of each other's material at a time before copyright law, compared with the modern position.

Tian reports on the 5th bi-annual TILTing Perspectives conference held at Tilburg University in the Netherlands. This, the first of two posts, focused on the healthcare sessions at the conference, including topics such as robot doctors and algorithm therapists; robotic cognitive therapeutic researchers and the law; and, expert systems and medical malpractice: reframing the notion of negligence.

This is the second of two posts on the TILTing Perspectives conference which reported on the panel discussions on new IP perspectives; the collective management of copyright; and, copyright law making in the EU. As well as the key note speech from Professor John M. Golden.

New Kat friend, Robyn Trigg (A&O) reports on HHJ Hacon’s judgment in Curt G. Joa, Inc. v Fameccanica Data SpA [2017] EWHC 1251 (IPEC), particularly considering the new trend to include added matter in the pleading point of patent cases.

Mathilde lets us know about the recent filing of a copyright infringement claim by internet chef Elizabeth LaBau (known as SugarHero) against Television Food Network, relating to LaBau's cooking video of her flagship recipe “Snow Globe Cupcakes”.

AmeriKat looks at the newly anointed FRAND injunction from the recent case of Unwired Planet v Huawei FRAND. Following Huawei’s failure to comply with the terms of the worldwide licence (at the time of the final judgment), a separate hearing was held at which the injunction was granted. This is contrary to the normal position under English law that once final relief is granted, parties are not entitled to come back to court. However, in recognising the special nature of a FRAND undertaking, the FRAND injunction is more flexible to allow parties to come back to court at the expiry of the licence.

In a reference for a preliminary ruling, the French Council of State asked the CJEU to clarify the compatibility of the 2012 French law on the digital exploitation of out-of-print 20th century books with the InfoSoc Directive. The CJEU stated that the system of the InfoSoc Directive is one of broad and preventative rights. Although national initiatives on out-of-commerce works are not against the directive per se, the Court clarified that nonetheless authors, not collecting societies that do not have any direct mandate from them, must consent to third-party uses of their works.

In the case of Chugai Pharmaceutical v UCB [2017] EWHC 1216 (Pat) the Japanese pharmaceutical company Chugai applied for a declaration that it did not have to continue paying royalties to UCB under a patent licence. The licence was originally for a portfolio of patents relating to an antibody known as tocilizumab of which all but one (the 771 Patent) had expired. Some of its tocilizumab products are manufactured and sold in the USA, so Chugai argued that those products fall outside the scope of the claims of the 771 Patent, meaning that it would no longer have to pay for them.

Elena Varese at DLA Piper in Milan, Italy dispels some notions about Italian court delays, the joys of being an expert in various fields and wine tasting with Advocate General Cruz Villalón.

AIPPI/AIPLA event on 15 June 2017 at Bird & Bird for a discussion on copyright law in the digital age with a particular focus on exhaustion of rights and the development of digital marketplaces for pre-owned digital copies.


Never Too Late 150 [week ending on Sunday 4 June] BREAKING: German court makes two (very important) copyright references to the CJEU I Implausibly incredible or just plain insufficient? I Marks misleading the public on the paternity of copyright works are fraudulent - say French Supreme Court I Should the court be indifferent to consumer indifference regarding the mark? I ‘Display At Your Own Risk’: A Tour into ‘Copyright Surrogacy’ I To UPC or not to UPC? That is the question... (Part 1) I Book Review: Patents for Technology Transfer I Event Report: Combat the Copycats
Never Too Late 149 [week ending on Sunday 28 May] IPSoc Event Report: The ever-evolving law on the "communication to the public" right | Nestlé loses yet another KitKat battle | Judge sounds alarm of weakened US patent system, while industry groups start amending Section 101 | BREAKING: Supreme Court limits US patentee's forum shopping capabilities | Shinder, Shinder, Shinder … will you ever be like Tinder? | US Supreme Court uses TC Heartland to blunt key troll tool, but will California welcome the next wave of troll litigation? | Is there copyright in the taste of a cheese? Sensory copyright finally makes its way to CJEU | Big Data, products & processes: being a German patentee in the era of the Rezeptortyrosinkinase decisions | Life as an IP Lawyer: Singapore | Appointed Person issues first appeal decision in a design case | The meaning of "red carpet" in two and three dimensions: from Ancient Greece to Cannes | Judge Alsup driving forward Uber-Waymo trade secret dispute amongst "red flag" disclosure hearings | Monday Miscellany | Friday Fantasies.

Never Too Late 148 [week ending on Sunday 21 May] Book Review: Russell-Clarke and Howe on Industrial Designs I Scope of review by the General Court of decisions by the EUIPO Board of Appeal: the last act in LAGUIOLE I Dining out on trade marks - ZUMA - the own name defence for pets and groundless threats I The popular China copyright monitoring website 101 I Where are the women? Supreme Court hosts London launch of ChIPs with call to action to advance women in tech, law and policy I Br*x*t and brands – out of the EU in 680 days I In memoriam: Adolph Kiefer, Olympic gold medalist, innovator and inventor extraordinaire I Digital copies, exhaustion, and blockchains: lack of legal clarity to be offset by technological advancement and evolving consumption patterns? I German TV show allowed to call right wing politician 'Nazi sl*t', Hamburg court rules I Latest leak reveals that review of EU IP enforcement framework is currently in a deadlock I Sunday Surprises, Around the IP Blogs

Never Too Late 147 
[week ending on Sunday 7 May] Deterrence sentencing for copyright infringement: Court of Appeal gives guidance I AIPPI Event Report: Will the Unwired Planet v Huawei FRAND judgment lead to fewer NPEs? I Unjustified Threats Bill receives royal assent I"Socialistic brand": a unique category of vintage brand I Movement afoot in the patent scene in Argentina I‘Right to be forgotten’ may potentially apply to all top-level domains, says Swedish Data Protection Authority I A General Civil Restraint Order against issuing further IP claims - Is this the end of the Perry v Brundle saga? I Monday Miscellany, Wednesday Whimsies

Photo credit: Emily Schreck

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