2016 Year in Review: Intellectual Property

By Boris Lubarsky

Patent & Trade Secret Law

• The European Unitary Patent would allow the European patent office to issue a single patent with unitary effect for all participating EU members. Brexit temporarily stalled expectations for its ratification and rollout, however, in November the UK announced it would continue with ratification. 11 of the 13 required member states have ratified the underlying Unified Patent Court Agreement.
• Ely Lily Sues Canada under NAFTA. Ely Lily brought a 2013 suit alleging that Canada’s judicial interpretation of its patent law breached Canada’s Obligations under the TRIPs agreement by imposing a further requirement that a patent must fulfill any “promise” set out in the specifications. The hearing on the merits took place in June 2016 and a final decision is still pending.
• Exporting Patent Infringement. The U.S. Supreme Court heard arguments in December to determine if a domestic exporter can be liable for infringement if it provides a single component of a patented invention to buyers abroad. The decision is still pending.
• New U.S. and E.U. Trade Secret Law. The U.S. enacted the Defend Trade Secrets Act seeking to expand protections and remedies to trade secret owners. While the E.U. passed the Trade Secret Directive which strengthens and standardizes trade secret protections across member nations.

Trademark Law

• European Trademark Reform. In March, the EU passed a new regulation to harmonize Trademark Law across the 28 member states. The reforms contain wide ranging changes to registrability, filing procedure, fee structure, and infringement proceedings.
• Disparaging Marks in the U.S. In December a U.S. Circuit Court held that prohibitions on disparaging trademarks are in violation of constitutional free speech protections. This now puts the U.S. at odds with most international trademark laws and is expected to be appealed to the U.S. Supreme Court.
• China Trademark Enforcement. The Supreme People’s Court of China invalidated a trademark registration of Michael Jordan’s surname by an unaffiliated Chinese sports company, sending a clear message that China will respect and enforce IP rights.

Copyright Law

• UK Repeals 25 year cap on Industrial Copyright Protections. Previously copyrighted work that has been applied industrially was limited to 25 years of copyright protection. In accordance with the EU direct, the UK repealed this section in July – thus extending copyright protection to 70 years after the artist’s death.
• Fair Use of Application Programming Interfaces. In May, a U.S. Federal Judge found that Google’s use of Oracle’s API (bits of programming code) was protected under fair use – which cleared Google of an $8.8 billion liability form a previous trial. The Federal Circuit is now reviewing the case.
• EU Clarifies Copyright Standard for Hyperlinking. In September the Court of Justice of the European Union issued a landmark decision clarifying that commercial and individual users are held to different standards when they hyperlink to an infringing work.

Trans-Pacific Partnership Abandoned. In January 2017, President Trump formerly withdrew the US from the TPP, a multilateral free trade agreement that had been in negotiations since 2008. The TPP had extensive provisions aimed at standardizing IP rights and protections across all 13 member countries. The US withdrawal, signaling the demise of the entire agreement, now leaves many unanswered questions about the state of international intellectual property rights.