The Open COVID Pledge

Intellectual property rights are – by definition – monopolistic. How, then, can researchers, charities and NGOs collaborate with business in the development of new technologies to control and eradicate COVID-19?

The Pledge

The Open COVID Pledge[1] is intended to encourage business and academia to pledge to make their intellectual property (IP) available free of charge for use in ending the COVID-19 pandemic and minimising the impact of the disease. The Pledge was developed by the Open COVID Coalition, an international group of scientists and lawyers who seek to accelerate the rapid development and deployment of diagnostics, vaccines, therapeutics, medical equipment and software solutions. Continue Reading

A Recipe for Patent Protection: Are food products patentable?

In the past several years, the food and beverage space has seen an explosion of innovation—alternative meat products, plant-based dairy and protein alternatives, CBD- and collagen-infused everything, and functional foods and beverages and containing everything from pre/pro/post-biotics to nootropic and adaptogenic herbs, just to name a few. And many of these innovations have led to wildly successful products with household brand recognition (think: Impossible Foods and Vital Proteins).

While many of these brands may be protected by robust trademark portfolios, what role have patents played in defining their territory in the market? Patent protection can add significant value to an emerging brand by keeping competitors at bay, serving as an asset or collateral to secure financing, or as leverage to license across different industries or markets. Yet, the vast majority of conventional foods occupying the shelves of your local grocery store are likely not covered by a utility patent.  Which begs the question, are food products patentable? Continue Reading

U.S. Supreme Court – Willfulness Is Not a Prerequisite for a Profit Award for Trademark Infringement

In its unanimous April 23, 2020 opinion in Romag Fasteners v. Fossil, Inc., the Supreme Court made clear once and for all that a successful trademark plaintiff is not required to establish that the defendant’s infringement was willful to be entitled to an award of the infringer’s profits. In other words, profits may be disgorged for less than willful infringement of a trademark.

Prior to the Supreme Court’s decision, federal courts were split on the issue of whether willfulness was a prerequisite to an award of the infringer’s profits. Romag gave the high court the perfect opportunity to resolve this split. By way of background, Romag Fasteners, Inc. and Fossil, Inc. had signed an agreement to allow Fossil to use Romag’s fasteners in Fossil’s handbags and other leather goods. When Romag discovered that factories in China making Fossil products were using counterfeit Romag fasteners, Romag sued Fossil and certain retailers of Fossil products for trademark infringement pursuant to the Lanham Act, 15 U. S. C. §1125(a). While the jury determined that Romag had sufficiently demonstrated infringement, the U.S. District Court for the District of Connecticut, relying on Second Circuit precedent, refused to grant Romag an award of profits on the basis that Romag had failed to demonstrate that Fossil acted willfully. After the district court’s decision was upheld by the Court of Appeals for the Federal Circuit, the Supreme Court granted certiorari and heard the case on appeal. Continue Reading

Compulsory Licensing in Russia in the view of COVID-19

Nowadays the sphere of healthcare is becoming one of the mostly discussed because of a mass spread of the coronavirus pandemic (also COVID-19). Confirmed cases of COVID-19 around the world have passed more than a 2.4 million. As the disease is continuing to surge the World Health Organization is warning that there are no specific vaccines or treatments for COVID-19 as for today. However, there are many ongoing clinical trials evaluating potential treatments and developing drugs conducted by different laboratories in developed countries.

All these clinical trials, researches and developments are very high-priced. No pharmaceutical company would invest billions of dollars to bring a new drug to the market if faced with the prospect of instantaneous competition from manufacturers of low-priced copies. In absence of patent protection or some other form of exclusivity, a generic competitor can bring a bioequivalent product to market once the innovator has secured regulatory approval and established a demand for the product. Continue Reading

In Determination of Trademark Parody Fair Use, Culture Differences and the Products Used Should be Considered

Generally speaking, “trademark parody fair use” is a defense where an unauthorized trademark user claims that the use should be shielded from liability because of public interests such as freedom of speech.  In Taiwan, while there were court judgments that recognized “trademark parody fair use”, there is no clear language for such defense in the Trademark Act and the determination of “trademark parody fair use” remains unsettled in judicial practice.  In a recent trademark infringement case, the Intellectual Property Court made a good demonstration of how to approach this issue.

The defendant in this case was a South Korean skincare and cosmetics business, who acquired license from an American tote bag manufacturer.  The tote bag manufacturer was famous for its tote bags with drawings of various luxury brands on one side and a slogan “My other bag…” the other side.  In the cooperation, the defendant released several cosmetic products, hand-held mirrors and canvas pouches with the above-mentioned drawings.  The plaintiff, a French luxury retail company, brought trademark infringement proceedings against the defendant and claimed that the drawings on the products were confusingly similar to its well-known monogram and hand bag design.  In defense, the defendant argued that the drawings have already been recognized as “parody” by the final judgment entered by the court in the United States. Continue Reading

Not Only Will We March Again: Committed, Resilient IP Lawyers Marching Still In Time Of COVID

A few weeks back, as remote working and social distancing were becoming the order of the day (and interesting phrase, given what quickly became the norm in many US states and cities, as executive orders abounded), my son tossed a statement in my direction that was both compliment and challenge:  “Isaac Newton developed calculus, among other discoveries and achievements, and Shakespeare may have written King Lear, during quarantine and social distance periods.  You’re not them, but you’re pretty smart so I am expecting something.”  Offering him this blog post, or some of the other things I have written or said in the last few weeks, is probably not what he had in mind.  But it did get me thinking about what intellectual property lawyers and others can do, and have been doing, as we practice law in the time of COVID.

Some intellectual property owners, regulators, courts and lawyers have very directly stood at the cross-rounds of intellectual property rights, patents, and the pandemic. Continue Reading

PANDEMICS AND EMERGENCY ACCESS TO PATENTED TECHNOLOGY IN CANADA

Canada’s COVID-19 Emergency Response Act came into force on March 25, 2020. Perhaps overlooked amongst emergency relief, health care and financial effects is Part 12 of the Act which makes changes to the Patent Act.

Why should the general public care about this? I’m glad you asked. Continue Reading

COVID-19 and Intellectual Property

Despite the COVID-19 closures and cancellations, some governmental intellectual property offices have not extended deadlines, so parties should remain mindful that protections for individuals and businesses should not be overlooked. Many patent and trademark offices around the world are providing relief for businesses that may have difficulty tending to their intellectual property filings due to other pressing COVID-19-related concerns; some have not. Lewis Rice remains in close contact with the United States Patent and Trademark Office (“USPTO”) and worldwide foreign associates to ensure that your deadlines are not missed, and that your intellectual property will be secure when normalcy returns. We have not found any governmental intellectual property office that has changed the first-to-file rule for purposes of original patent protection, so parties should not delay filing new patents. Continue Reading

Intellectual Property Extensions Resulting from Coronavirus

United States Patent and Trademark Office-USPTO

Currently, the USPTO is not offering extensions to patent and trademark application deadlines. The USPTO is, however, offering fee waivers to those affected by the coronavirus in the following situations: Continue Reading

Facebook and Twitter fined for violation of requirements for the personal data localization

At the end of 2019, Federal Law No. 405-FZ1 entered into force. This act has significantly increased administrative liability for violations of the requirements on the localization of databases containing personal data of Russian nationals. We already wrote about this amendment earlier.

The new provisions have significantly increased the amount of fines for violation of requirements for the personal data localization. At the moment the maximum fine may be as high as RUB 18 million. Continue Reading

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