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 In accordance with the EU direct, the UK repealed this section in July – thus extending copyright protection to 70 years after the artist’s death.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.

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March 29, 2017

By Joshua Blume

Antimicrobial resistance is on the rise, and a new antibiotic has not been invented since Eli Lilly & Co. invented daptomycin in 1984. A recent WHO report indicates that resistance to antibiotics currently reduces worldwide GDP by around 1.5 percent, but drug companies are not able to recover enough of that lost productivity to pay the $2.558 billion in development costs for inventing a new drug.

As it stands, not only is the antibiotic market saturated with dozens of products, but the return on investment for antibiotic medicines—which is used in only short-term doses—is projected by most companies to be less valuable than medicines for chronic illnesses, such as heart disease or diabetes. Another problem is that while many underdeveloped nations have a greater need for new antibiotic treatments, they are some of the greatest contributors to antibiotic resistance and have almost exclusive access to compulsory licenses—as provided by the WTO TRIPS Agreement and the paragraph 6 framework to Article 31.

As the WTO explains, a compulsory occurs “when a government allows” another country to produce a patented product “without the consent of the patent owner.” It was originally included in the 1995 TRIPS Agreement, but was expanded to allow wider access. While there are some restrictions they mostly have to do with notice and attempts to negotiate a voluntary license, it is not restricted to national health emergencies, as many believe. Even if it were, the WTO has clearly stated that “[e]ach member has the right to determine what constitutes a national emergency.” It is available to all nations except the several dozen who have opted out or limited their use to extreme necessity. These vast differences in consumption, regulation, law, and access for less-developed countries creates an uphill battle for companies to recoup their research and development costs.

The problem is worsened by the growing antibiotic resistance disparity between developed and less-developed countries. Antibiotic consumption is decreasing in many developed countries, while growing exponentially in much of the developing world. This growing disparity will also increase the incentive for less-developed countries to announce compulsory licenses. Canada’s production of TriAvir for Rwanda to combat the HIV/AIDS crisis is one prominent example of such compulsory licensing. Antibiotic-resistant tuberculosis is on the rise and poses exactly this type of threat. Current WHO numbers show that 480,000 people globally develop multi-drug resistant TB each year. This is not to say that the developed world is not affected—gonorrhea acts as one of three drug-resistant “urgent threats” in the United States according to the CDC, with only 0.3 percent of cases exhibiting resistance in 2011, multiplying by more than 8 times that percentage in just three years—but many developed countries have opted out of compulsory licensing.

That said, considering the differences in regulation and law in many underdeveloped countries, compulsory licenses should not be the main concern for corporations. Instead, the worry is that countries will simply refuse to grant patents to newly invented pharmaceuticals within their borders, so that their citizens can receive treatment at a greatly reduced cost, such as happened with the $84,000 Hepatitis C drug cure Sovaldi in 2014. Sovaldi—the generic name is Sofosbuvir—was heralded as a miracle cure for Hepatitis C, a liver disease spread by blood. Studies have shown that an estimated six million people in Egypt have this deadly disease, and for years it was incurable. The problem was that due to the high costs of developing the drug, Gilead, the patent holder, needed to find a way to get returns on a drug that is disproportionately needed in less-developed nations. Gilead ended up negotiating a 99 percent reduction in price so that they could sell their product in Egypt. One article even recommended that patients leave the United States and seek treatment in Egypt for a few months, where it was available for only $900. If patents are not respected where the medicine is being used, the downside risk for originating companies is even more immense than for compulsory licensing.

Thus, the question remains, what ways are available to encourage sustainable antibiotic production? The WHO has recommended international prize funds using 0.01 percent of worldwide GDP. Others have agreed to the principle of prize funds to create “delinkage” from the typical sales revenue, but there is disagreement on how to implement it, how much to contribute, and who to put in charge. While delinkage could prove extremely successful as an incentive—after all 80 different companies are asking for it—it does not change the fact that approximately 80 percent of all antibiotics in the United States are used for farming, nor does it structure proper incentives for the developing world to prevent antibiotic pollution. In the meantime, however, we should not let the perfect become the enemy of the good, especially on a ticking clock where pharmaceutical research often takes years and billions of dollars of expense. Such a prize fund may be the best solution to prevent 300 million premature deaths before 2050.

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October 22, 2016

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July 15, 2016

By Shannon Togawa Mercer

In an era during which the exchange of intellectual property across borders can carry just as much, if not more, value than conventional goods, the protection of intellectual property rights is now a matter of international concern. Whereas much of the WTO treaty regime is focused on the liberalization of trade barriers for goods and services, the protection of intellectual property rights through the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement involves affirmative obligations to restrict the flow of ideas in order to protect the rights of an individual to his or her intellectual property.

It makes sense that an organization of nations interested in trade liberalization would concern itself with the movement of ideas: adequate protection of intellectual property can impact trade flows. If a seller knows that her ideas will not be pirated in a purchasing country, she will be more encouraged to sell there. Furthermore, if an innovator knows that he will reap the profits from his inventions, he is more likely to innovate – thus incentivizing businesses’ R&D.

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November 20, 2015

By Abbie Schepps

While 50 plus years of economic sanctions hit Cuba hard in their factories, banking system, and hospitals, it seems to have missed the fans of American movies and television. The Washington Post reports that currently playing, for free, on Cuban television and in the movie theaters is American media content.

Cuban officials claim that since U.S. sanctions remain so restrictive, discussions regarding copyright protection would be a bit premature. While these protections are important, trade issues must be the primary focus for now.  The idea is that once the U.S. eases its aggressive and punitive measures, Cuba will be more willing to discuss protections of property across the board. Of course, the government’s handling of the media content is just a drop in the bucket and nothing in comparison to street-level Cuban bootleggers.

Cuba is not against the protection of intellectual property. As a signatory to major international treaties protecting such property, Cuba has done a good job of enforcing these protections for many U.S. products. Unfortunately, media content is not one of these products. With free media content pervading the country, media piracy will most likely pervade long after efforts to correct the system begin.

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October 30, 2015

By Nestor Gounaris and Limin Zhang

Over twenty years ago, the groundwork for a wholly domestic intellectual property dispute started its long, slow brew. A branded herbal tea product achieved tremendous commercial success, generating significant good will in the design patent and trademark, which were each owned by separate parties. When the commercial relationship started to unravel, each party argued that their respective intellectual property had generated

more value than the other.

The dispute recently came to a head in December 2014 with a decision issued by the Guangdong High Court. However, the fight is not over yet, with the losing party filing an appeal. This case reflects the organic growth of intellectual property in the People’s Republic of China and the increasing domestic need for recognizing, defining and protecting intellectual property. Furthermore, the case also reminds contracting parties to a license agreement to anticipate and clearly articulate how to share the good will that may arise from the licensing of intellectual property.

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April 16, 2015

By Nathaniel DeLucia

Negotiations are currently underway between the United States and eleven other Asia-Pacific countries (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam) to secure the U.S.’s latest free trade agreement, the Trans-Pacific Partnership Agreement (“TPP”).  The TPP will affect almost all areas of international trade, from   Even dispute settlement and environmental regulations are covered.  Despite the TPP’s broad coverage, its provisions (or proposed provisions) on intellectual property laws stand out, as they further the important goal of harmonizing the world’s intellectual property laws.

textiles and E-commerce, to intellectual property and labor laws.

World harmonization of intellectual property laws has been a major goal of international law since the creation of the original Paris Convention in 1883 and the Berne Convention in 1886.  These two treaties attempted to harmonize the signatories’ (predominately western Europe) patent, trademark, and copyright laws by creating certain minimum standards.  Since the creation of the Paris and Berne Conventions, many treaties have been signed which have sought to make the world’s intellectual property laws more uniform.  The U.S. has signed the Trade Related Aspects of Intellectual Property (“TRIPS”) Agreement in 1994(which incorporated and greatly expanded the scope of the Paris and Berne Conventions) and passed America Invents Act (“AIA”) in 2011 (which brought the U.S.’s patent laws more in line with the rest of the world).  The TPP is therefore simply continuing this trend of intellectual property harmonization. 

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March 31, 2015

By Nathaniel DeLucia

Playboy is one of the most recognizable trademarks in the world with registered trademarks in virtually every developed country.  It therefore comes as no surprise that Playboy Enterprises Inc. took issue when Michael Ross a property-developer in London, decided to register the domain name “Playboy.london.” Playboy won the initial lawsuit, filed with the World Intellectual Property Organization (WIPO). However, Mr. Ross filed a subsequent suit in the UK, which has yet to be decided, attempting to block implantation of the adverse WIPO ruling.

A current trend is to use common words as domain names, such as “.tech” or “.london.”  As Web domains begin to collide with Trademark law, lawsuits like the one here should be seen with increasing regularity.

For the complete story, including a brief summary of the WIPO ruling, visit Bloomberg News.

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March 03, 2015

By Nathaniel DeLucia

The U.S. Trade Representative’s (USTR) recent “out-of-cycle review” of India’s IP laws is a perfect example of the tension that arises between patent laws and international treaties. The USTR launched its investigation because it believes India’s laws may be hurting products covered by US patent and copyright.  Specifically, the USTR takes issue with India’s practice of issuing compulsory licenses over the objections of the patent owners and the allegedly high rates of internet piracy.  Two international agreements, to which both the US and India are members, complicate the matter  The first is the TRIPS agreement, which outlines what the member countries feel are appropriate IP laws and which India appears to be in compliance with.  Second, is that as a WTO member, the US is supposed to settle this dispute in the WTO and not by taking unilateral action.

For a detailed discussion of how these agreements complicate the USTR investigation, see IP-Watch’s article, located here.

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November 13, 2014