Alibaba tries to use blockchain to combat against IPRs infringements

blockchain-3277335_960_720WIPR reports about a new patent application filed by one of the biggest online retailer Alibaba in the US. This patent concerns a blockchain technology that allows government agencies or authorised parties to freeze accounts in Alibaba for which there are suspicious for an infringement of intellectual property rights.

This will facilitate the enforcement of IPRs which is a challenge in the digital era.

According to the article, Alibaba possesses more than 10% of all patents related to blockchain technology in the world for the last year. This technology is deemed as a potentially effective tool for combating against online IPRs infringements.

 

Advertisements

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

The EU Court gave clarifications for obtaining an SPC

Large-3x5-FT-European-Union-EU-Flag-Brand-90-150cm-Wave-Euro-Flag-of-Europe-superThe European Court ruled in the case C‑121/17, Teva UK Lt v Generics (UK) Ltd, which concerns the following:

Gilead is a pharmaceutical company which markets an antiretroviral medicinal product indicated for the treatment of persons infected with HIV, under the name TRUVADA. That medicinal product contains two active ingredients, tenofovir disoproxil (‘TD’) and emtricitabine, which have a combined effect for that treatment. It was granted a marketing authorisation (‘MA’) on 21 November 2005 by the European Medicines Agency (EMA).

Gilead is the holder of the European patent (UK) EP 0 915 894 (‘the basic patent at issue’). The patent application, filed on 25 July 1997, had a priority date, for the purposes of Article 88 of the EPC, of 26 July 1996. That patent was granted by the European Patent Office (EPO) on 14 May 2003 and expired on 24 July 2017. The description of the invention contained in that patent indicates that the patent covers, in general terms, a series of molecules which are helpful in the therapeutic treatment of a number of viral infections in humans and animals, in particular HIV.

That description gives a series of pharmaceutical formulae which may be envisaged for the compounds claimed, without referring specifically to individual compounds or to any particular use for those compounds. Claim 25 of the basic patent at issue expressly mentions TD as one of the claimed compounds.

That description also mentions the fact that those compounds may, if necessary, be associated with ‘other therapeutic ingredients’. The words ‘other therapeutic ingredients’, however, are neither defined nor explained in the basic patent at issue.

In that regard, claim 27 of the basic patent at issue states:

‘A pharmaceutical composition comprising a compound according to any one of claims 1-25 together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients.’

In 2008, Gilead obtained an SPC on the basis of claim 27 of the basic patent at issue and the MA (‘the SPC at issue’). That SPC relates to a ‘composition containing [TD], optionally in the form of a pharmaceutically acceptable salt, hydrate, tautomer or solvate, together with Emtricitabine’.

The order for reference states that there is no evidence that at the priority date of the basic patent at issue, emtricitabine was an effective agent known to the person skilled in the art for the treatment of HIV in humans. The EMA did not approve emtricitabine until 2003.

The applicants in the main proceedings, who intend to market generic versions of TRUVADA on the UK market, brought an action before the referring court, the High Court of Justice (England & Wales), Chancery Division (Patents Court), seeking to challenge the validity of the SPC at issue.

In support of their action, the applicants in the main proceedings submit that the SPC does not meet the condition laid down in Article 3(a) of Regulation No 469/2009. They point out that to meet the requirement in that provision, the product in question must, in accordance with the judgment of 24 November 2011, Medeva (C‑322/10, EU:C:2011:773), be ‘specified in the wording of the claims’. Where there is a functional definition in the relevant claim relating to the product, that claim must ‘relate, implicitly but necessarily and specifically’ to that product, in accordance with the terms used by the Court in the judgment of 12 December 2013, Eli Lilly and Company (C‑493/12, EU:C:2013:835). The applicants in the main proceedings submit that emtricitabine is not specified in the wording of claim 27 of the basic patent at issue and that the expression ‘other therapeutic ingredients’ used in that claim does not specify any active ingredient, whether structurally or functionally. The TD/emtricitabine combination cannot therefore be considered to be protected by a basic patent in force, within the meaning of Article 3(a) of Regulation No 469/2009.

By contrast, Gilead contends in essence that, in order to check whether Article 3(a) of Regulation No 469/2009 is satisfied, it is necessary and sufficient that the product in question falls within the extent of the protection conferred under at least one claim of the basic patent. It submits that the expression ‘other therapeutic ingredients’ used in claim 27 of the basic patent at issue relates implicitly but necessarily to emtricitabine, in accordance with the judgment of 12 December 2013, Eli Lilly and Company (C‑493/12, EU:C:2013:835). The TD/emtricitabine combination therefore, it argues, satisfies the condition laid down in that article.

The referring court takes the view that, notwithstanding the judgments delivered by the Court on interpretation of Article 3(a) of Regulation No 469/2009, the meaning to be given to that provision remains unclear.

That court states that, admittedly, it is clear from the Court’s case-law that the concept of a ‘product protected by a basic patent’ within the meaning of Article 3(a) of Regulation No 469/2009 refers to the rules governing the extent of protection, not the rules governing infringement. Furthermore, it follows from paragraph 28 of the judgment of 24 November 2011, Medeva (C‑322/10, EU:C:2011:773), that to be considered ‘protected by a basic patent’ within the meaning of that provision, the active ingredients should be specified in the wording of the claims of the patent in question.

Nevertheless, the judgments of 12 December 2013, Actavis Group PTC and Actavis UK (C‑443/12, EU:C:2013:833), of 12 December 2013, Eli Lilly and Company (C‑493/12, EU:C:2013:835), and of 12 March 2015, Actavis Group PTC and Actavis UK (C‑577/13, EU:C:2015:165) imply that the principles described in the preceding paragraph are not sufficient for the purposes of determining whether a ‘product is protected by a basic patent in force’ and that it is also necessary to take into account the ‘subject-matter of the invention covered by the patent’ or the ‘core inventive advance’ of the patent. The referring court takes the view that it is not clear from that case-law whether those requirements are relevant for the purposes of the interpretation of Article 3(a) of Regulation No 469/2009.

According to the referring court, there are also divergent decisions in a number of Member States concerning the issue, before the court in the present case, of the availability of an SPC for the TD/emtricitabine combination and, more generally, concerning the interpretation of Article 3(a) of Regulation No 469/2009.

In those circumstances, the High Court of Justice (England & Wales), Chancery Division (Patents Court) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘What are the criteria for deciding whether “the product is protected by a basic patent in force” in Article 3(a) of Regulation No 469/2009?’

The Court’s decision:

Article 3(a) of Regulation No 469/2009 of the European Parliament and of the Council of 6 May 2009, concerning the supplementary protection certificate for medicinal products, must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent:

–        the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and

–        each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.

A brief guide how you can manage your intellectual property

Albert Ferraloro (Wrays) published in Lexology an interesing and helpful brief guide what steps you can take to start managing your intellectual proerty.

The article covers some essential points in that regard such as:

– Who may create IP?

– When might IP be created?

– What steps can be taken to help identify and capture IP?

– Good business practices.

– Know the ‘IP Landscape’.

– Promoting an ‘IP culture’ in the workplace.

– What are the risks of poor IP management?

– Action items – Trade Marks Considerations.

The full article can be found here.

Brief IP news

briefs_1131. CJEU in C-395/16, Doceram vs. CeramTec, interprets the concept of technically required features of appearance excluded from protection under Community designs Regulation. For more information here.

2. Colour it mine: protecting colour trademarks. For more information here.

3.  Euro-PCT Guide: PCT procedure at the EPO. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

A European Court’s decision regarding parallel import and trademark rights

flag-2608475_960_720The European Court issued a decision on Case  C‑642/16 Junek Europ-Vertrieb GmbH v Lohmann & Rauscher International GmbH & Co. KG. The case concerns the following:

Lohmann & Rauscher International is the proprietor of the EU trademark ‘Debrisoft’, No 8852279, registered on 22 June 2010 for ‘sanitary preparations for medical purposes’, ‘plasters, materials for dressings’ and ‘dressings, medical’. It manufactures and markets, inter alia, the product ‘Debrisoft for debridement, STERILE, 10 x 10 cm, 5 pieces’, which is a dressing used for the superficial treatment of wounds.

Junek Europ-Vertrieb is a company established in Austria and markets in Germany, by way of parallel importation, sanitary preparations for medical purposes and medical dressings manufactured and exported to Austria by the applicant.

On 25 May 2012, Lohmann & Rauscher International purchased in a pharmacy in Düsseldorf a pack of ‘Debrisoft for debridement, STERILE, 10 x 10 cm, 5 pieces’ which Junek Europ-Vertrieb had previously imported from Austria. Before the sale to the pharmacy, that company had affixed on that box a label (‘the contested label’) featuring the following information: the company responsible for the importation, its address and telephone number, a barcode and a central pharmaceutical number. The label was applied neatly to an unprinted part of the box and did not conceal the mark of Lohmann & Rauscher International.

The packaging of the product had been modified as illustrated below, with the contested label located on the bottom left.

The contested label, enlarged, presents as follows:

Junek Europ-Vertrieb had not given prior notice to Lohmann & Rauscher International of the reimportation of the product concerned and also had not supplied it with the modified packaging of the product with the contested label affixed. Lohmann & Rauscher International considered that the conduct of Junek Europ-Vertrieb was an infringement of the Debrisoft mark of which it was the proprietor.

It therefore lodged an action before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), seeking, in particular, to prohibit, under threat of a penalty, Junek Europ-Vertrieb from using in the course of trade, without its agreement, that mark for the purpose of designating dressings for debridement and to order that company to recall, withdraw from the market and destroy the products concerned.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) upheld that claim.

The Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), dismissed the appeal that Junek Europ-Vertrieb had lodged against the judgment given by the Landgericht Düsseldorf (Regional Court, Düsseldorf), with the reservation that the prohibition on use of the mark at issue related to Germany only. Junek Europ-Vertrieb then lodged an appeal on a point of law before the Bundesgerichtshof (Federal Court of Justice, Germany).

According to the referring court, the outcome of the dispute before it depends on whether the principles developed by the Court in respect of parallel imports of pharmaceutical products, according to which prior notice and the supply of a packaging specimen on demand by the trade mark proprietor are conditions for exhaustion of the rights conferred by its trade mark, also apply to the parallel importation of medical devices.

First, the referring court states that, according to the case-law of the Court, it is the repackaging of the trade-marked pharmaceutical products in itself which is prejudicial to the specific subject matter of the mark, which is to guarantee the origin of the product that it identifies. It refers, in particular, to the judgments of 23 April 2002, Boehringer Ingelheim and Others (C‑143/00, EU:C:2002:246), and of 26 April 2007, Boehringer Ingelheim and Others (C‑348/04, EU:C:2007:249), according to which the Court held that the repackaging of a pharmaceutical product by a third party without the permission of the proprietor gives rise to real risks for the guarantee of origin and that affixing a new label to the packaging also constitutes repackaging.

Second, it is clear from the case-law of the Court that the trade mark proprietor’s opposition to commercialisation of repackaged pharmaceutical products under Article 13(2) of Regulation No 207/2009, which is a derogation from the free movement of goods, cannot, however, be accepted if the proprietor’s exercise of that right constitutes a disguised restriction on trade between Member States within the meaning of Article 36 TFEU (judgments of 11 July 1996, Bristol-Myers Squibb and Others, C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282, and of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249). It follows that the proprietor of a mark may oppose a modification which involves any repackaging of a pharmaceutical product bearing its mark, which, by its very nature, creates real risks for the guarantee of origin of the pharmaceutical product, unless five conditions are met, namely:

–  it is established that the use of the trade mark rights by the proprietor thereof to oppose the marketing of the relabelled products under that trade mark would contribute to the artificial partitioning of the markets between Member States;

–  it is shown that the repackaging cannot affect the original condition of the product inside the packaging;

–  the new packaging states clearly who repackaged the product and the name of the manufacturer;

–   the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its owner; thus, the packaging must not be defective, of poor quality, or untidy; and

–   the importer gives notice to the trade mark proprietor before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.

Secondly, the application of those principles is not restricted to cases of the parallel importation of pharmaceutical products. Thus, in its judgment of 11 November 1997, Loendersloot (C‑349/95, EU:C:1997:530), the Court held that the criteria relating to the repackaging of pharmaceutical products could also, in principle, apply to parallel trade of alcoholic beverages. In addition, it notes that the conditions for the exhaustion of the rights conferred by a mark that are applicable depends on the relevant legitimate interests of the proprietor of the mark in the given case, having regard to the particular nature of the product.

Thirdly, the referring court considers that there was relabelling in the present case. Agreeing with the appellate court, it considers that the contested label affixed by Junek Europ-Vertrieb includes important information in the language of the importing country and that that label could give rise to the suspicion on the part of the consumer that the product which is offered to them was the object, at an earlier stage of its marketing, to interference by a third party, without the authorisation of the proprietor of the mark, which affects the original condition of the product.

Fourthly, as regards the question of whether the principles developed by the Court in respect of the parallel importation of pharmaceutical products apply without restriction to the parallel importation of medical devices, the referring court notes that even though medicinal devices are not, as is the case for pharmaceutical products, subject to authorisation procedures, nevertheless, the conformity assessment procedure necessary for them to be allowed onto the market makes them, from the point of view of both manufacturers and consumers, particularly sensitive products for which the guarantee of origin provided by the mark covering the product, owing to the high degree of responsibility of the manufacturer, has particular importance.

It adds that medical devices, just like pharmaceutical products, are products that have a direct connection with health. Since customers particularly value and pay attention to their own health, it was not necessary, according to the referring court, to call in question the appellate court’s finding that medical devices, as well as pharmaceuticals, are particularly sensitive products for which the guarantee of origin provided by the mark affixed to the product is of particular importance because of the high degree of responsibility of the manufacturer.

In those circumstances the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings before it and to refer the following question to the Court for a preliminary ruling:

‘Must Article 13(2) of Regulation […] No 207/2009 be interpreted as meaning that the proprietor of the mark can oppose further commercialisation of a medical device imported from another Member State in its original internal and external packaging, to which the importer has affixed an additional external label, unless

–  it is established that reliance on trade-mark rights by the proprietor in order to oppose the marketing of the overstickered product under that trade mark would contribute to an artificial partitioning of the markets between Member States;

–  it is shown that the new labelling cannot adversely affect the original condition of the product inside the packaging;

–  the packaging states clearly who overstickered the product and the name of the manufacturer;

–  the presentation of the overstickered product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the label must not be defective, of poor quality, or untidy; and

–  the importer gives notice to the trade mark proprietor before the overstickered product is placed on the market, and, on demand, provides him with a specimen of that product?’

The Court decision:

Article 13(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that the proprietor of a mark cannot oppose the further commercialisation, by a parallel importer, of a medical device in its original internal and external packaging where an additional label, such as that at issue in the case in the main proceedings, has been added by the importer, which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device bearing the mark.