2016: 10 Developments in Intellectual Property Law You Should Know About
This year the IP world will be brimming with changes, the largest of which will take place in the European Union. Sweeping reforms in EU trademark law will be implemented in March as well as the likelihood of the Unitary Patent making its debut in Europe at some point this year. China will likely see patent changes as well. Ladas & Parry has been at the forefront of helping IP owners handle the changes in IP law year after year.
TRADEMARKS: LARGE SCALE REFORM OF EUROPEAN TRADEMARK LAW TO BE IMPLEMENTED IN MARCH
On March 23, 2016, the recently adopted EU trade mark reform legislative package will enter into effect making several substantial changes to the European trade mark regime. Notable changes relate to:
- A deadline to review old trademark registrations covering “class headings”
- Adoption of the “literal meaning” for covered goods and services
- Potential registration of non-conventional marks
- A bar on registering geographic indicators and designations of origin as trademarks
- An ability to seize counterfeit goods in transit through Europe
- A new fee structure requiring filing fees on a per class basis
- The renaming of the Office for Harmonization in the Internal Market to the
- European Union Intellectual Property Office
- The renaming of the Community Trademark to the European Union Trademark
PATENTS: EUROPEAN UNITARY PATENT FINALLY ARRIVING IN 2016?
2016 is likely to see the start of the implementation of the regulations and treaty introducing the long-awaited Unitary Patent in the European Union. These will create a single patent with unitary effect in the EU member states and put disputes relating to the unitary patent and also potentially any other patent issued by the European Patent Office for an EU country under the jurisdiction of a unified European patent court. It will be possible for owners of non-unitary patents issued by the EPO to opt out of the new court’s jurisdiction, at least for a number of years. It is expected that the court registry, where such opt-outs will need to be recorded will open during 2016, although this could be delayed should the United Kingdom vote to leave the European Union in a referendum to take place on July 23rd of this year.
TRADE SECRETS: EU AND U.S. EFFORTS TO CODIFY LAW ON TRADE SECRETS
The Parliament of the European Union has agreed upon a proposal for a directive on the harmonization of the law on trade secrets in EU member states, which is currently severely fragmented. The Directive includes a uniform definition of “trade secrets” and “unlawful acquisition”, and contains protections for “whistle blowers”. It is currently expected that final adoption of the Directive will occur in the spring of 2016.
In the United States, on January 28, 2016, the Senate Judiciary Committee approved the Defend Trade Secrets Act, a new legislation designed to replace or supplement the current state laws providing federal relief for trade secrets claims. It is expected that the full senate will vote on the bill later this year, and a House bill is also under consideration.
PATENTS: CHINA CONTEMPLATES CHANGES TO PATENT LAW
A 2015 draft amendment to the Chinese Patent Law may be enacted 2016. As proposed, the amendment would bring significant changes to the laws related to design patents, contributory infringement, damage awards, and employee inventions.
TRADEMARKS: U.S. COURTS WEIGH FREE SPEECH VS. DISPARAGING TRADEMARKS
In late December 2015, the U.S. Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision to refuse a trademark application for THE SLANTS holding that that Lanham Act § 2(a)’s prohibition against disparaging trademarks is unconstitutional and a violation of the First Amendment.
This decision could breathe new life into the Washington Redskins’ appeal of the USPTO’s invalidation of the REDSKINS trademarks currently before the Fourth Circuit Court of Appeals.
PATENTS: U.S. SUPREME COURT TO REVIEW CLAIM INTERPRETATION IN POST GRANT PROCEEDINGS
On January 2016, the Supreme Court granted certiorari in Cuzzo Speed where the main issue is whether it is proper to use the “broadest reasonable interpretation” of a claim in proceedings before the Patent Trial and Appeal Boards in the new “opposition” proceedings created by the America Invents Act.
PATENTS: ELI LILLY SUES CANADA OVER PATENT REQUIREMENTS
A hearing is scheduled for May 30 – June 9, 2016 in Eli Lilly’s arbitration proceedings against the Government of Canada in which it claims that Canada’s patent law system is in breach of Canada’s obligations under the TRIPS Agreement and under the Patent Cooperation Treaty because Canadian courts have imposed requirements on patentability that exceed those set out by TRIPS.
TRADEMARKS: TRENDING ISSUE – REGISTRATION OF WIDELY-USED PHRASES
A recent trademark filing trend has brought attention to the rule that widely used phrases, such as “BLACK LIVES MATTER”, are generally barred from trademark registration. To elaborate further on the examination of widely-used phrases, the USPTO will be issuing a draft Examination Guide for public comment in early 2016, which will outline how such marks should be analyzed and discuss the case law pertinent to the issue.
TRADEMARKS: GROWTH OF THE MADRID SYSTEM
The Madrid System provides a single application process for “international registrations” across multiple member states. New and expected future members of the Madrid Protocol include:
- African Intellectual Property Organization (OAPI) [joined March 2015]
- Algeria [joined October 2015]
- Gambia [joined December 2015]
- Zimbabwe [joined March 2015]
- Lao People’s Democratic Republic [effective March 2016]
- Canada [implementing trademark reform, expected to join soon]
- Trinidad and Tobago [implementing trademark reform, expected to join soon]
PATENTS: BRAZIL REQUIRES ADMINISTRATIVE APPROVAL FOR PHARMACEUTICAL PATENT
Under Brazilian law patent applications for pharmaceutical inventions have to be approved by the National Agency for Sanitary Vigilance Administration (ANVISA as well as the Patent Office) before the patent can be granted. This requirement, referred to as the “jabuticaba law”, sets Brazilian law apart from other patent systems in a time when the world-wide trend is harmonization. Recent changes have led to conflict between ANVISA and the Patent Office with the Patent Office asserting that ANVISA has acted beyond its authority by effectively carrying out an additional patent examination (in which it frequently finds inventions unpatentable). It is hoped that this conflict will be resolved in 2016.
For additional information, see the article in our Education Center