Transition Period Smooths Brexit's IP Changes
Despite the UK officially leaving the EU at the end of 31st January 2020, IP rights will remain unaffected until the end of the transition period on 31st December 2020.
The terms of the transitional agreement are little changed from the previously notified version. In particular:
- During the transitional period EU IP rights will remain unaffected in their application to the UK, including for EU IP right applications made during the transitional period.
- EU trade marks and designs that are registered and published at the end of the transitional period will automatically generate a corresponding UK national IP right with no official fees.
- Owners of EU IP rights that have not completed the registration process before the end of the transitional period will be entitled to make (at their cost) corresponding applications in the UK, retaining the same filing and priority dates. For trade marks and designs UK applications need to be filed by 30th September 2021 and for PVRs by 30th June 2021.
- International applications under the Madrid Protocol and the Hague Agreement designating but yet to enter the EU before the transitional period ends can also enter the UK after the transitional period. The UK is a contracting party to both the Madrid Protocol and Hague Agreement.
- Cancellation etc proceedings commenced against EU IP rights prior to the end of the transitional period will also result in the generated UK IP right being cancelled etc if successful.
- In trade mark non-use actions involving a UK right that was generated from an EU right at the end of the transitional period, evidence of use within the EU but outside of the UK prior to the end of the transitional period will have increasingly less effect and after 31st December 2025 will have no effect.
- There is some doubt as to whether the exhaustion of rights principle will be mutually applied, however the UK is likely to recognise the exhaustion of rights in the EU.
- Unregistered EU design rights existing at the end of the transitional period will be recognised as unregistered design rights in the UK for their remaining EU term (maximum 3-years).
- After the transitional period UK based attorney firms will only be able to file applications and proceedings before the EUIPO if they have some form of EU presence – such as having a subsidiary in the EU or a co-operation agreement with or part ownership of an EU firm.
Given that the EPC is not an EU institution the ability to file European patent applications is unaffected by Brexit. UK based attorneys who are qualified as European Patent Attorneys will continue to be able to represent clients before the EPO. However, assuming the Unitary Patent and Unified Patent Court commence, there is still doubt about whether the UK will be able to participate in those. While the EPC allows for unitary patents, the Unitary Patent Regulations is an EU text, as is the Unified Patent Court Agreement.
Important to Comply with India's Statement of Working Requirements
In contrast to other countries India requires a statement of working to be filed for granted patents. The patentee and licensee if relevant need to file the statement regarding the working (or non-working) of the patented invention on a commercial scale over the preceding calendar year by 31st March each year.
While a patent will not be nullified if the statement of working is not filed, significant fines can be imposed. When filing a statement of working it is also important that the statement is not incomplete, incorrect or false as this can result in criminal sanctions.
If the patented invention has not been worked, then relevant reasons for the non-working need to be provided. These could be on account of: there not currently being a market for the product; actively working to develop a market; pre-launch preparations needing to be made; regulatory approval being required; third-party supply issues etc.
If the patented invention is being worked, then the following information should be provided: the quantity of sales and the total revenue generated therefrom (can be an internal estimate); whether any manufacturing occurred in India; whether any products were imported and if so from which country or countries; whether the patent has been licensed and if so who the licensee is.
It should also be noted that India’s compulsory licensing provisions allow any interested person to apply for the grant of a compulsory license if after three years from the date of grant either: the patented invention is not worked within the territory of India; the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented product is not available to the public at a reasonable price.
Secondary Evidence of Non-Obviousness Should Take Account of Non-Claimed Features
In 18-2024 Fox Factory Inc v SRAM LLC the Court of Appeal for the Federal Circuit (CAFC) clarified that the analysis of secondary evidence of non-obviousness by the Patent Trial and Appeal Board (PTAB) was wrong on account of not taking into account unclaimed features.
SRAM’s challenged patent concerns a bicycle chainring claiming features that reduce the likelihood of the chain disengaging from the chainring. In particular the patent variously claims a chainring with alternating narrow and wide tooth tips and teeth offset from the centre of the chainring either toward the body of the bicycle (“inboard offsets”) or away from the body of the bicycle (“outboard offsets”). The specification also discloses non-claimed features that also contribute towards the chain being unlikely to disengage from the chainring, such as forwardly protruding tip portions, a hook feature that may be formed on the rear flank of each tooth and inner link-receiving recesses. SRAM also owns another patent, which is a continuation of the challenged patent, and which includes claims reciting a chainring with alternating narrow and wide teeth where the wide teeth have >80% gap filling.
Fox asserted that the claims in the challenged patent to chainrings containing alternating narrow and wide tooth tips and teeth with outward offsets are obvious in light of two pieces of prior art that each disclose one of these two features, on the basis that the skilled person would combine them. The PTAB accepted that the skilled person would combine those features, but found that the patent was not obvious on the basis of secondary evidence of non-obviousness and that the patentee is entitle to a presumption that there is a nexus between the claimed combination of features.
The CAFC noted that ordinarily the patentee has the onus of showing that the secondary evidence of non-obviousness and the claim scope sufficiently correspond. However, the patentee is entitled to a rebuttable presumption that there is such correspondence between the secondary evidence and the claim scope if the patentee can show that the asserted evidence is tied to a specific product and that the product is the invention as disclosed and claimed – i.e. the evidence does not relate to a product of which the claimed invention is merely a component.
As a finding of fact the CAFC found that SRAM chainrings are not co-extensive with the challenged claims as the chainrings also contain unclaimed features that contribute to its chain retaining properties. SRAM’s marketing material and other self-led evidence portrayed those unclaimed features as playing a significant role in the chainring having chain retaining properties. Another reason for the patentee not being entitled to a presumption of nexus between the product and the claims is SRAM’s continuation patent relating to the same product, as the patentee is not entitled to a presumption of nexus when the product embodies at least two patented inventions that cover different combinations of features.
Consequently, the CAFC remanded the case back to the PTAB where SRAM will have the burden of proving that the evidence of secondary considerations is attributable to the claimed combination of wide and narrow teeth with inboard or outboard offset teeth.
Single Actor Not Required for Infringement by Importation of Product Made by Patented Process
In 18-1614 Syngenta Crop Protection LLC v Willowood LLC the Court of Appeals for the Federal Circuit (CAFC) held that section 271(g) does not require a single actor to have practiced the patented process in order to be liable for infringement.
Syngenta asserted four patents against four Willowood entities, where three Willowood entities are based in the USA and the other is a Hong Kong company that contracts for the manufacture of azoxystrobin in China and sells the fungicide to Willowood USA. Two of the patents were directed to a group of chemical compounds, including azoxystrobin, a fungicide commonly used in agriculture to control fungal growth on crops. Shortly before expiry of those compound patents Willowood USA imported into the USA 5kg of azoxystrobin. On this basis the District Court granted summary judgment against Willowood USA for infringement of the compound patents and also against Willowood LLC for induced infringement of the compound patents. Summary judgment was not made against the Hong Kong Willowood company in respect of the compound patents from its sale of 5kg of azoxystrobin to Willowood USA as the evidence pointed to the sale taking place outside of the USA.
In regards to the two process patents the District Court denied summary judgment for infringement in respect of the earlier of the two on the basis that there was a genuine dispute of material fact as to whether a single actor performed all the steps of that patent. The District Court also denied summary judgment for infringement of the later process patent as there was found to be a genuine dispute of material fact as to whether the relevant processes were practiced within the claimed ranges, although the District Court granted the motion that Willowood has the burden of proving that the manufacturing processes did not fall within the claimed ranges.
Syngenta appealed the District Court’s findings in respect of the process patents. In regards to the earlier process patent the CAFC held that the District Court misapplied precedent relating to a different section to section 271(g). The relevant part of section 271(g) provides that “[w]hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer.” The District Court approached this issue by applying the CAFC’s 2015 en banc decision in Akamai Technologies Inc v Limelight Networks Inc, which held that where no single actor performs all steps of a method claim, direct infringement only occurs if the acts of one are attributable to the other such that a single entity is responsible for the infringement. However, the CAFC held that the District Court was wrong to apply the Akamai test, which relates to section 271(a), to section 271(g). In construing the language of section 271(g) the CAFC readily found that it is the importing, offering to sell, selling or using within the USA of a product made by a process that is patented in the USA that infringes. As such, under section 271(g) it does not matter whether the patented process is performed by more than one entity as that is not a relevant consideration, given that the focus is only on acts with respect to products resulting from the patented process. The CAFC also noted from the Senate Report accompanying the Bill that enacted section 271(g) that it extends protection to the products resulting from practicing a patented process and prevents circumvention of a US process patentee’s rights through manufacture abroad and subsequent importation into the USA of products made by the patented process. Accordingly the CAFC held as a matter of summary judgment that Willowood USA infringed under section 271(g) and remanded the case for the District Court to determine whether Willowood LLC also infringed.
Syngenta also appealed the District Court’s dismissal of their copyright claims in respect of their detailed labels that provide directions for use, storage, and disposal, as well as first-aid instructions and environmental, physical, and chemical hazard warnings. The District Court held that the Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA) precludes copyright protection for the required elements of pesticide labels as against the labels of generic registrants. The CAFC found the District Court’s conclusion in this regard to be premature and remanded it back for further consideration. The CAFC noted that while use of FIFRA’s expedited generic pathway is premised on similarity to a registered product, the relevant section does not require a generic applicant to ensure that its product label is identical to a registered label; nor does it require applicants to otherwise derive the elements of its label from that of the registered label. In contrast to the Hatch-Waxman Act, which not only permits but requires producers of generic drugs to use the same labelling as the pioneer drug, FIFRA allows for differences in labelling. Willowood countered that there was still only a limited number of ways to express the required information and as such copyright protection should not apply in such circumstances. The CAFC remanded the copyright issue to the District Court to discern whether the Copyright Act prohibits Willowood’s use of any portion of Syngenta’s label, and in particular whether the fair-use doctrine or the merger doctrine would eliminate infringement.
3. Trade Marks
Responses to Madrid Protocol Formalities Objections to be Filed Directly with WIPO
International registration applications under the Madrid Protocol need to pass a formalities only examination by WIPO prior to becoming an international registration, after which WIPO notifies the designated countries so that it can be substantively examined in those countries.
If WIPO’s formalities examination identifies problems that need to be remedied, then a notice of irregularity is generated. Depending on the type of problem and the home office of the application or registration on which the international registration application is based, the notice of irregularity is sent either to the home office or to the applicant (or their agent).
Currently IP Australia requires applicants of international registration applications based upon an Australian application or registration to file a response to the notice of irregularity through the eServices function on the IP Australia website. These responses are then forwarded to WIPO. However, for notices of irregularity that are issued on or after 3rd February 2020 where a response is required from the applicant, this will need to be done via the Madrid eFiling system. IP Australia will amend its system so that users attempting to file relevant responses to a notice of irregularity will be re-directed to the Madrid eFiling system.
Priority Entitlement Challenge from Suspicious Ownership Changes Fails
In 2019 NZIPOTM 30 Apple Inc v Swatch AG the Assistant Commissioner held that Apple’s assignment of IWATCH trade mark applications from an affiliated entity was not in contravention of the Trade Marks Act (and Paris Convention) provisions that only allow priority to be claimed from the first priority filing.
In June 2015 Apple became the assignee of trade mark application 989093 for IWATCH in classes 9 and 14, which has a filing date of 5th December 2013 and convention priority date of 5th June 2013. In May 2016 it divided out application 1042166, which also covers classes 9 and 14 and has the same filing and convention priority dates as 989093, and this proceeded to acceptance in the same month. Application 989093 proceeded to acceptance in January 2017 when the same Assistant Commissioner held that it had acquired distinctiveness from Apple’s family of i-prefix marks, given that Apple had not made use of IWATCH in New Zealand at the application date.
Swatch timely filed oppositions to both accepted applications. Priority was one of the grounds put in issue with Swatch arguing that IWATCH is deceptively similar to various Swatch marks, with the closest one being registration 986048 for iswatch Device in classes 14 and 35 filed on 3rd July 2013.
Application 989093 and the US application from which it claimed priority were filed in the name of Brightflash USA LLC, which by Apple’s own admission is an affiliate of Apple. However, on 3rd December 2012, just over 6-months prior to the US application in the name of Brightflash USA LLC, Apple had filed applications for IWATCH covering classes 9 and 14 in Jamaica and it used those applications to make convention applications in Brazil, Mexico, Russia, Japan, Chile and Colombia.
Section 36 of the Trade Marks Act 2002, which enacts the convention priority obligations under Article 4 of the Paris Convention, relevantly states:
36 Priority of application to which convention country application relates
(1) A person who has applied for the registration of a trade mark in a convention country (whether before or after it became a convention country), or his or her legal representative or assignee, is entitled to registration of his or her trade mark in priority to other applicants, and the registration has the same date as the date of the application in the convention country if the application is made within 6 months after the date of the convention country application.
(2) Subsection (1) applies only in respect of the first application for the trade mark that is made in a convention country by a person and does not apply to any subsequent applications for the trade mark by that person.
On the basis of Brightflash being affiliated with Apple, Swatch argued that the New Zealand applications are not entitled to the convention priority date, as the USA convention priority application was not the first convention priority application by the same entity. However, Apple pointed to the differences in the language used in sections 36(1) and 36(2). Whereas section 36(1) allows a person, their legal representative or assignee to claim priority, the restriction in section 36(2) to only being entitled to claim priority from the first application for the trade mark by a person only applies to that person. The Assistant Commissioner agreed with Apple’s construction of those sections and the proposition that mere affiliation does not make those entities the same legal person. Swatch had further argued that in the absence of any explanation from Apple as to why the USA convention priority application was filed in the name of Apple’s affiliate, it should be assumed that the affiliated entity was used as an attempt to circumvent a fundamental requirement of a valid priority claim. However, the Assistant Commissioner implied that the onus was on Swatch to show evidence of this rather than mere speculation and declined to make a finding that Brightflash’s applications were made in bad faith.
In the absence of being able to rely on its iswatch Device registration Swatch’s 25(1)(b) ground of opposition failed as the descriptiveness of the WATCH element led the Assistant Commissioner to hold that IWATCH is not deceptively similar to SWATCH (for the same goods).
Swatch pointed to evidence of its use of ISWATCH and iswatch Device from late 2012 for the purposes of its opposition under section 17(1)(a), which prohibits marks being registered if their use would be likely to mislead or deceive. However, the Assistant Commissioner found there to be insufficient evidence of use in New Zealand in order for Swatch to discharge its onus of establishing awareness of its reputation in those marks in New Zealand prior to 5th June 2013. Consequently the section 17(1)(a) ground was only fully considered in respect of the SWATCH marks, but despite its strong reputation in those marks, Apple’s strong reputation in i-prefix marks and the descriptiveness of the WATCH element meant that ground of opposition also failed.
Swatch also opposed the applications under section 32(2), which prohibits the registration of marks with very broad specifications that are not justified on account of use or intended use. However, it was held that the substance of Swatch’s pleadings actually concerned section 32(1), which concerns whether at the date of application the applicant intended to use the mark. In considering the plead ground of section 32(2) the Assistant Commissioner readily found that the specifications are not overly broad and that in any case Apple could be presumed to intend to use the mark on a wide variety of goods.
Although not required to the Assistant Commissioner then considered section 32(1) where Swatch argued Apple had no intention to use IWATCH as it was actually using a mark that included an Apple Device and Apple Watch. While noting that those other marks were not in use before Apple’s IWATCH application, the Assistant Commissioner found that in any case those other marks do not displace the presumption that Apple intended to use IWATCH.
Shape and Colour Registration Invalidated for Lack of Specificity in Colour
In 2019 EWHC 3454 Fromageries Bel SA v J Sainsbury Plc the Judge upheld a UKIPO Hearing Officer’s finding that Fromageries registration of the shape and colour mark for Mini Babybel cheese is invalid on account of not sufficiently specifying the hue of the colour red.
The registration had the following description: “The mark is limited to the colour red. The mark consists of a three dimensional shape and is limited to the dimensions shown above.” The Hearing Officer found those attributes to be essential characteristics of the mark. While acknowledging that it is not always necessary to precisely define colour for marks in which it is present, the Hearing Officer held that where it is an essential feature it needs to be defined with sufficient precision. In considering the relevant degree of precision the Hearing Officer referred to the 2003 European Court of Justice decision Libertel Groep BV v Benelux-Merkenbureau (C-104/01), which concerned colour per se marks. Summarising that decision the Hearing Officer at  stated that:
 The Libertel judgment has been generally understood as meaning that neither a sample of the colour(s), nor merely descriptions of colour in words, such as ‘red’, are sufficiently clear, precise and/or durable to satisfy the requirement for a graphical representation of colour marks. Instead, the practice of using internationally recognised colour identification codes has become the usual way of representing such marks.
The Hearing Officer further stated that there is no rule that the pictorial representation of the mark takes precedence over the description, so it cannot be inferred that the claim to the colour ‘red’ is limited to the shades of red shown in the picture. The pictorial representation of the colours on the register is not considered to be objective as it is only as accurate as the process used to capture the colours when they were scanned from the application into the electronic register. Also the representation contains a different hue of red on the pull tag, thereby making the pictorial representation and the description ‘the colour red’ somewhat inconsistent.
On appeal Fromageries argued that because red is not the only essential characteristic of the mark it should not be necessary to define the specific hue of red. The Judge noted that for marks containing colour which are not colour per se marks, it is the entire mark which must be capable of distinguishing. Depending on the facts, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue. Further, that colour is a prominent feature in a mark does not necessarily mean that it is an essential characteristic.
However, the Judge rejected the Hearing Officer’s approach of considering whether colour is an essential characteristic and then, if it is, requiring the colour to be specified with sufficient precision so as to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Judge noted that the approach of first identifying the essential characteristics of a mark only applies for shape marks consisting exclusively of the shape which: results from the nature of the goods; is necessary to obtain a technical result; or gives substantial value to the goods.
Instead the Judge asked whether the trade mark is capable of distinguishing the cheese of Fromageries from the cheese of other undertakings on the assumption that the hue used in the trade mark may be any hue of red and whether they are free to vary the hue from time to time without affecting the registration right. The Judge held on the balance of probabilities that the trade mark requires the particular hue of red (in addition to the shape) in order to be capable of distinguishing their cheese from that of other undertakings.
The Judge refused Fromageries request to limit the registration by adding the relevant Pantone colour reference in the description. Section 13 of the Trade Marks Act 1994 allows for limitations and relevantly provides that:
where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly.
In line with another decision the Judge held that limitation of a registration under section 13 requires that there was first a valid right which is being limited. On account of the Judge holding that the registration is invalid in the form it was filed in, then section 13 cannot be used to make the registration valid.