• Inside Views: Brazil’s Federal Court Reviews Medicines Mailbox Patents

    This week the media reported that the Brazilian federal court removed the patent protection for eculizumab, sold under the brand name Soliris by Alexion Pharmaceuticals Inc. Eculizumab is used in the treatment of paroxysmal nocturnal hemoglobinuria (PNH), a rare and life-threatening blood disease. The product was approved by the US FDA for this indication in 2016. Brazil’s health care system spent $184.2 million to treat 442 patients with Soliris, an average of over $416,000 per patient. The patent office expects that more revocations may follow. This blog explains why this is.

    Continue Reading ...
  • AALS Panel on IP Remedies at the Supreme Court and Worldwide

    Professor John Golden has asked me to pass along the following AALS Remedies Section Call for Papers.  This should be an interesting session!

    The AALS Section on Remedies is hosting a program called Intellectual Property Remedies at the Supreme Court and Worldwide” during the upcoming AALS Annual Meeting in New Orleans from January 2 to January 6, 2019.  The remedies panel is currently scheduled for Friday, January 4.  One speaker on the panel will be chosen from a call for papers on the general themes of the panel, which are described below:
    The United States Supreme Court’s docket shows the Court’s increased interest in the availability and scope of IP remedies. Global enforcement of IP remedies spans a variety of forms of relief, ranging from enhanced damages to tailored injunctions.  This panel will feature discussion among experts on provocative IP-remedies topics including the legacy of the Supreme Court’s eBay decision on injunctions, approaches to assessing reasonable royalties, and the propriety of recovery of an infringer’s profits in light of the Restatement (Third) of Restitution and Unjust Enrichment.  The panel will explore such questions as: should the status of the right holder affect the relief, especially if the holder uses the remedies process to extract exorbitant licensing fees; are reasonable royalties legal or equitable; what are the implications of FRAND licensing commitments on reasonable royalties; what level of intent and fitness relative to other remedies should be required to obtain a gain-based remedy?
    To be considered for inclusion on the panel, please submit an abstract (and a draft paper if available) by June 1, 2018, to the Chair of the Remedies Section: alexandra.lahav@uconn.edu.  This call is open to all scholars, both those new to remedies and/or the legal academy and those who have been teaching for some time. 
    Continue Reading ...
  • Image Rights: Valuable Intellectual Property

    The cult of celebrity keeps creating more and more wealth. And concurrent with protecting that, ‘Image Rights”’have been receiving a lot of publicity – as well as the attention of tax authorities. Even James Bond, Sir Sean Connery, has just discreetly protected his brand and trademarked his name. Documents filed in both the EU and the US show the veteran star is ensuring that he and he alone can profit from his name.

    The post Image Rights: Valuable Intellectual Property appeared first on…

    Continue Reading ...
  • The Zulu Challenge

    Millions More for Zulu King Goodwill Zwelethini” is a headline that appeared in yesterday’s TimesLive circulation creating the usual outcry, provoked by the title of the piece. It is a pity that the value of the Zulu monarchy is so misunderstood, even if a component of this emotive criticism is warranted.

    KwaZulu-Natal Premier Willies Mchunu announced during his budget vote for the 2018/19 financial year in the provincial legislature in Pietermaritzburg on Thursday that the Zulu monarch’s annual budget has been increased by R7-million‚ from R58.8-million last year to R65.8-million this year. (about USD520k)
    The article explains that the budget is required to support the King, his family, their farms and the Royal Household Trust which was set up to make the Zulu Royal family self sustainable. This may therefore sound like a few people benefitting from the allocation but in reality every single person in South Africa stands to gain from it if this money is properly spent and frankly, the budget is probably still far too small.
    Whilst the amount of money is significantly large in comparison with the median income of a Zulu person living in Zululand or to the average South African, it is less than is received by South Africa’s top earning CEOs and not even double the median pay for a Facebook employee. However, even my own comparison is misguided for the function of the Zulu King is not equivalent to a CEO or to a Facebook employee, it is substantially greater than that.
    Whilst I am aware that the Zulu nation dislikes comparison with any other monarchy or nation (I made this mistake once in a presentation to them) the criticism it faces is much the same as those critics of say, the British monarchy. At the same time, its part within southern african culture is also no less significant than that of the British monarchy to its own culture. Arguably the role of the Zulu nation (and others) is even more important in the context of a continent where cultural identity and understanding is so critical, and where misappropriation is commonplace (there are well over 100 cases of potential misuse of Zulu cultural expressions, for instance).
    Part of the Zulu King’s function and responsibility to his people is to preserve Zulu culture and so the money designated to his household, in part, is required for this purpose. It is estimated that the value of the British monarchy is USD88 billion. This article claims that each royal costs the British taxpayer 18.5 million pounds, and David Haigh of Brand Finance describes the British monarchy spend as “a giant PR campaign for the UK“.
    Against the numbers in the Brand Finance reports, a spend of USD529k per annum for the Zulu monarchy is meagre. The challenge faced by the Zulu nation is then, not only to justify this spend in terms of accountability but also to communicate its own worth by delivering, not only to their people but to the region in general. It will need to partner with professionals to do so, as the TimesLive article explains.
    From an IP perspective there is much to be done and a start has been made. Quite apart from the spend required to “put the genie back in the lamp” and secure, audit and preserve the culture through traditional IP systems available to them and, in time, indigenous knowledge legislation there is a need to embark on a revenue building model based on that IP. This requires expense and the portion that may be allocated out of the USD529k for such a project, is a shoestring in comparison to what is required.
    There is also need to assist rather than criticise the Zulu nation, and others in South Africa, and the Zulu nation needs to meet their challenge responsibly, or continue to face the adversity.

    Continue Reading ...
  • Alston & Bird Appoints Natalie Clayton Head of Biopharma, Life Sciences Patent Litigation Team

    Alston & Bird has named partner Natalie Clayton as the head of its Biotechnology, Pharmaceutical & Life Sciences Patent Litigation Team, effective immediately. Clayton has more than 10 years of experience guiding industry-leading companies through sophisticated patent litigation, as well as complex Food and Drug Administration regulatory matters.

    The post Alston & Bird Appoints Natalie Clayton Head of Biopharma, Life Sciences Patent Litigation Team appeared first on…

    Continue Reading ...
  • Academic IP Conferences

    Three years ago, I posted some general advice about academic IP conferences, including links to sites that compile IP conference information. Most of that advice still stands, but the definitive IP conference compilation site has moved to https://emptydoors.com/conferences, where it is maintained by Professor Saurabh Vishnubhakat—who was a wonderful member of a conference panel I moderated last week.

    The most recent entry on Saurabh’s site is interesting: the AALS Remedies Section has a call for papers for a program on IP remedies at the Jan. 2019 AALS Annual Meeting in New Orleans. Abstracts are due June 1.

    Continue Reading ...
  • 基準に(して)



    (BASED (UP)ON)
    $$ The optical brightener is preferably added in amounts of from 50 to 1000 ppm, more preferably 100 to 500 ppm, and …

    Continue Reading ...
  • USPTO to Update Patent Bar Exam in August 2018

    “This is a mere change in form, not substance,” according to John White, principle lecturer in the PLI patent bar review course. “The PTO will start testing the current version of the MPEP, and stop testing the miscellaneous memos and the like that are currently tested. But all of those memos have now been incorporated into the new MPEP, so there’s no change of substance. Just a change in citations.”

    The post USPTO to Update Patent Bar Exam in August 2018 appeared first on IPWatchdog.com |…

    Continue Reading ...
  • When Co-Inventors Fail to Cooperate – Nobody Gets a Patent

    When Co-Inventors Fail to Cooperate – Nobody Gets a Patent

    by Dennis Crouch

    In re VerHoef (Fed. Cir. 2018) is a sad tale of a failed partnership that doomed the patent rights.  The tale may be useful for anyone representing co-inventors involved in a start-up.  At a minimum, a corporate entity should have been created at the get-go to hold the patent rights and mitigate later breakdowns in the partnership. Notice the drawing below – even the dog looks sad.

    = = = =

    For patent applications filed prior to the America Invents Act implementation, the Patent Act included an express requirement that the patent applicant be the inventor.

    A person shall be entitled to a patent unless – (f) he did not himself invent the subject matter sought to be patented.  35 U.S.C. 102(f) (pre-AIA)

    The named in inventor in this case – Jeff VerHoef – received some help from a veterinarian Dr. Lamb. In particular, VerHoef first designed and built his prototype harness designed to provide ‘knuckling’ therapy for his dog.  Later, during a therapy session with Dr. Lamb, she suggested he consider a “figure 8” strap around the dog’s toes.  VorHoef implemented the idea then filed for patent protection — naming both himself and Dr.

    Continue reading When Co-Inventors Fail to Cooperate – Nobody Gets a Patent at Patently-O.

    Continue Reading ...
  • Damages for Extraterritorial Harms in Germany and the U.S.

    This past semester I taught my International Intellectual Property course, using Paul Goldstein & Martina Trimble’s casebook.  The way I teach the course, most of the semester is devoted to comparative IP law, the major international IP treaties, and their implementation in the U.S. and elsewhere.  During the last week of the semester, however, we cover some topics relating to the litigation of international IP disputes, and although I’ve used the Goldstein/Trimble casebook for a while now this was the first time my attention fixed on a case they cite in a note early in the book, Schmid Bros. v. Genossenschaft der Franziskanerinnen von Siessen e.V. (Hummel Christmas 1971 Plate), I ZR 110/74, Dec. 19, 1975, English language translation published in 8 IIC 276 (1977).  The case addresses the question of whether a German court can grant, for an act of copyright infringement occurring in Germany, a monetary award for conduct that is causally linked to the domestic infringement but which is realized in another country.  More specifically, Schmid filed an action in Germany for a declaratory judgment that it was authorized to make “Hummel” plates in Germany and export them to the U.S.  The defendant association counterclaimed for infringement, arguing that it, not Schmid, owned the exclusive right to the copyrighted pictorial work; that it had licensed that right to a third party, Goebel; and that, but for the unlawful competition resulting from the infringement, Goebel would have earned additional revenue and paid additional royalties to the association.  The Court of Appeals held that the defendant association was indeed the holder of the German copyright, and this conclusion was no longer in dispute by the time the matter made its way to the Federal Supreme Court.  On the issue of extraterritoriality and monetary relief, however, the Federal Supreme Court held as follows (pp. 277, 280):
    . . . From this territorial limitation of the copyright (and consequently also of the exploitation rights derived from this basic right) it follows that the alleged infringing acts in the Federal Republic of Germany – i.e. the manufacture of reproductions of the work by Berta Hummel “Angel with Candle” in the form of wall plates showing this motif – can only infringe upon the copyright granted by  German law. Respondent’s counterclaim is based exclusively on such violation of the German
    copyright. . . . 
    Nor could any objections be raised as a matter of law against the decision of the Court of Appeals that plaintiff’s accounting on the distribution of wall plates manufactured in the Federal Republic of Germany is to be without any territorial limitations since defendants’s royalty receipts payable by Goebel have been reduced through plaintiff’s distribution abroad (reference omitted). There was thus no error of law when the Court of Appeals extended plaintiff’s obligation to account to such information on distribution activities abroad, which will enable defendant to calculate the damage it suffered. Such data include amounts shipped and sales proceeds (BGH, 1974 GRUR 53, 54 – Nebelscheinwerfer) as well as – in order to permit the accounts to be checked – shipment dates and customers’ names and addresses (BGH, 1963 GRUR 640, 642 – Plastikkorb; 1958 GRUR 346, 348 – Spitzenmuster; 1958 GRUR 288, 290- Dia-Riihmchen I).
    If I (and Goldstein and Trimble) are reading this right, then, under German copyright law the loss of royalties suffered by a German copyright owner as a result of a domestic act of copyright infringement may include royalties that would have accrued to it from sales made by the licensee outside Germany.  As Goldstein and Trimble point out, this would put Germany in the same camp as the U.S. as far as copyright damages are concerned.  One might, therefore, also expect Germany to follow the same rule with regard to patents, as some Canadian decisions have done and as the U.S. may be poised to do following the oral argument a couple of weeks ago in WesternGeco (see discussion here)–though I don’t know of any cases on point (though if any of my readers do, I’d be eager to see them).
    A couple of sidenotes:  First, the Hummel decision mentions a parallel lawsuit asserted by Goebel against Schmid in the U.S., involving infringement of the U.S. copyright interest in the same pictorial work.  It would be interesting to know, if and when damages were assessed in the U.S. and Germany, the courts took into account the damages awarded or recoverable in the other (as I believe they should to avoid duplicative judgments, see here).  
    Second, the material preceding the casebook note referred to above is an excerpt from an article by Professor Curtis Bradley titled Territorial Intellectual Property Rights in an Age of Globalism, 37 Va. J. Int’l L. 505 (1997), which states that “The Federal Circuit has indicated (without much explanation) that, so long as the defendant infringes the patent in the Untied States (for example by making the patented invention here), then the recoverable damages may include the profits received by the defendant from foreign sales of the invention” (emphasis in original, and citing Schneider (Europe) AG v. SciMed Life Sys., 39 U.S.P.Q.2d (BNA) 1596, 1598 (Fed. Cir. 1995) (per curiam), and Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 826-27 (Fed. Cir. 1989)).  If I had ever read these cases in the past, I had forgotten about them, but I see now that at least one amicus in the WesternGeco litigation (the New York Intellectual Property Law Association) cites both of these cases in its brief (as well as a couple of others, Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649 (Fed. Cir. 1985), and R.R. Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 (Fed. Cir. 1984)) as support for its argument that “A per se bar to recovery of foreign lost profits proximately caused by domestic patent infringement is a departure from this Court’s and the Federal Circuit’s own precedent.”  Judge Wallach also cited Stucki in his dissenting opinions in WesternGeco, though judge Taranto partially distinguished Stucki in Carnegie-Mellon Univ. v. Marvell Tech. Group, 807 F.3d 1283, 1306 (Fed. Cir. 2015):
    For the present context, we think that § 271(a) provides the basis for drawing the needed line. It states a clear definition of what conduct Congress intended to reach—making or using or selling in the United States or importing into the United States, even if one or more of those activities also occur abroad. . . . Where a physical product is being employed to measure damages for the infringing use of patented methods, we conclude, territoriality is satisfied when and only when any one of those domestic actions for that unit (e.g., sale) is proved to be present, even if others of the listed activities for that unit (e.g., making, using) take place abroad. Significantly, once one extends the extraterritoriality principle to confining how damages are calculated, it makes no sense to insist that the action respecting the product being used for measurement itself be an infringing action. Thus, here the claim is a method claim, but the damages-measuring product practices the method in its normal intended use, cf. Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 128 S.Ct. 2109, 170 L.Ed.2d 996 (2008) (applying exhaustion to sale of unit that sufficiently embodies a method claim); and the hypothetical negotiation would have employed the number of units sold to measure the value of the method’s domestic use (before production and after), as discussed above. In these circumstances, the inquiry is whether any of the § 271(a)-listed activities with respect to that product occur domestically.

    This approach accords with precedent. In Goulds’ Manufacturing Co. v. Cowing, 105 U.S. 253, 26 L.Ed. 987 (1881), the Supreme Court approved an award, based on an accounting of the defendant’s profits, reaching units made in the United States though some were to be used only abroad. Id. at 256. In Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 (Fed.Cir.1984), this court held that a royalty award could reach units made in the United States—valued at their sale price—regardless of whether they were sold abroad. Id. at 1519. On the other hand, in Power Integrations, we rejected a claim to lost-profits damages based on the defendant’s “entirely extraterritorial production, use, or sale of an invention patented in the United States,” pointing to § 271(a). 711 F.3d at 1371–72; see also WesternGeco, 791 F.3d at 1348–52 (rejecting foreign use as basis for lost-profits damages).

    As I stated a few weeks back, my view is that the court should award all damages proximately caused by an act of domestic infringement, subject to a duty to avoid duplicative recoveries.  I think the Supreme Court will adopt such a rule, but we’ll see what happens.

    Continue Reading ...