Congratulations Jeremy Phillips!

Jeremy Phillips, the founder of the IP Finance Blog among many other blogs, was awarded the David Goldring Volunteer Award from Marques.  The Marques website describes the award:

David Goldring was instrumental in the launch of MARQUES, having been involved from the very start and participating in the steering committee that discussed the setting up of an association of trade mark owners in 1984.

A UK and European trade mark attorney, he held a law degree from University College, London and originally worked in-house for Allied Lyons, an FMCG company.

In 1991, he became head of UK operations for the Novagraaf Group (J.E. Evans-Jackson & Co) and in 2010, he set up his own firm, Oakleigh IP Services.

David joined the MARQUES Council in 1996 and in June 2003 was appointed Treasurer. He played a pivotal role not just in managing the Association’s finances and budget, but also in planning and researching the Annual Conferences. David was instrumental in almost all aspects of the development of MARQUES and the recognition which MARQUES enjoys today is traceable to his guidance.

David’s attendance and participation at MARQUES was exceptional, only missing one Annual Conference in thirty years. A very down-to-earth man, David particularly enjoyed engaging in debates with established friends and was always keen to welcome new delegates.

David sadly passed away on 28th June 2016. In honour of his dedication to MARQUES and huge contribution to the organisation over the years, the David Goldring Volunteer award was inaugurated and was presented to his wife Delia (Dee) Goldring at the Annual meeting in September 2016 in Villaitana.

Congratulations Jeremy!  We miss you and hope you are enjoying your retirement!  The Marques Class 46 blog has more information as does the JIPLP blog. 

Gaming Amazon Using Fake IP Claims for Competitive Advantage

CNBC has published an interesting article about fake IP claims on Amazon titled, "Amazon was Tricked by Fake Law Firm Into Removing a Hot Product, Costing This Seller $200,000."  The article alleges that competitors of sellers on Amazon are filing fake intellectual property complaints against sellers resulting in Amazon's immediate take-down of their product or service.  These claims appear to be timed before big sales days and at very profitable products.  Interestingly, part of the problem is that Amazon is overwhelmed with complaints and apparently doesn't have the time to review the claims carefully.  My guess is that the software Amazon uses to police and handle claims is not able to discern fake and legitimate complaints well.  Perhaps better software is the answer.  I am hopeful that some Internet companies that rely on software will hire more people instead to handle these complaints.  Because Amazon controls the platform and sellers make so much money using it, I doubt many sellers will push Amazon too hard.  Although continued complaints and lost sales may open the door for a competitor to Amazon, which may be a good thing.  

U.S. Copyright Office Releases Database Concerning Its Views

The U.S. Copyright Office has released a new publicly accessible database of information concerning copyright matters.  The database contains amicus briefs filed by the U.S. Department of Justice with Copyright Office assistance, Register of Copyright Review and Questions concerning Royalty Board decisions, filings by the Copyright Office in civil actions in which they have an interest, and Copyright Office Review Board decisions since April 2016.  The Copyright Office notice concerning the database states:

Under the Copyright Act, the Copyright Office is responsible for advising the courts on issues of copyright law. This advice manifests itself in many forms. For instance, based on advice received from the Office, the Department of Justice files briefs in federal court on behalf of the federal government on issues of copyright law. In addition, the Copyright Office issues binding opinions on questions of copyright law to the Copyright Royalty Board.

These briefs and legal opinions are valuable resources for those seeking to understand the Copyright Office’s view of copyright law. Today, for the first time, the Copyright Office has published at one place on its website an archive of these briefs and legal opinions. The Office plans to periodically update this archive with new documents and any older documents it discovers.

Gaming IP: Smart or Damaging the Entire System

Here is an interesting case of gaming the IP system.  I believe this type of tactic hurts the IP system as whole even if we may disagree about the need for reforms. 

The New York Times has an informative article titled, “How to Protect a Drug Patent?  Give It to a Native American Tribe.”  The article describes how Allergen, the pharmaceutical company:

will pay the [Native American] tribe $13.75 million. In exchange, the tribe will claim sovereign immunity as grounds to dismiss a patent challenge through a unit of the United States Patent and Trademark Office. The tribe will lease the patents back to Allergan, and will receive $15 million in annual royalties as long as the patents remain valid.

As discussed in the article, this is apparently a strategy to protect the patents from Inter Partes Review Proceedings at the United States Patent and Trademark Office.  As discussed in other posts, public universities have successfully claimed sovereign immunity under the 11^th amendment of the U.S. Constitution from IPR Proceedings.  I doubt this strategy will last long.  I can understand how Allergen may think this may play well with the public because Native American tribes will receive much needed funding, but really?  This looks very bad.  Of course, folks are going to start asking what that funding is being used for.  

China's Move Toward More Enforcement of IP

As China continues to work toward a services/innovation based economy, China has made several efforts to improve intellectual property enforcement.  Professor V.K. Unni of the Indian Institute of Management of Calcutta has authored a short, concise and interesting paper concerning intellectual property courts and enforcement in China, titled, Specialized Intellectual Property Enforcement in China: Implications for Indian Companies” in LiveLaw.in.  Professor V.K. Unni notes that, in addition to the IP specialized courts in Beijing, Shanghai and Guangzhou, China is creating “four new specialized IP Tribunals in Nanjing, Suzhou, Chengdu and Wuhan.”  He states that these tribunals will have jurisdiction that is regional and will extend beyond city limits.  Notably, he speculates that China may create a “national” appeals court similar to U.S. Court of Appeals for the Federal Circuit.  Professor V.K. Unni also states that: “It has been reported that during 2015 in the 63 IP disputes filed with the Beijing IP Court where foreigners were complainants, all the cases were won by foreigners.”  Notably, this progress is followed by the recent decisions concerning New Balance and Michael Jordan.

As reported by Bloomberg, China's Ministry of Commerce responded to Trump's action recently by stating that the U.S. should "cherish" its relationship with China and not harm the "business interests" of both countries' companies.   

The World Turns on IP: Trump, China and New Balance

As the world turns on intellectual property, Trump has refocused efforts on China and intellectual property.  He apparently leaned off China supposedly because of concerns with obtaining China’s help with North Korea.  Now he’s apparently back on track.  Interestingly, The New York Times has recently published a strongly worded Op-Ed by Dennis C. Blair (“former director of national intelligence and a former commander in chief of the United States Pacific Command”) and Keith Alexander (“former commander of the United States Cyber Command and a former director of the National Security Agency”) titled, “China’s Intellectual Property Theft Must Stop.”  The Op-Ed is strong endorsement for Trump’s focus on China’s asserted intellectual property theft.  The Op-Ed states in part:

Chinese companies, with the encouragement of official Chinese policy and often the active participation of government personnel, have been pillaging the intellectual property of American companies. All together, intellectual-property theft costs America up to $600 billion a year, the greatest transfer of wealth in history. China accounts for most of that loss.

Intellectual-property theft covers a wide spectrum: counterfeiting American fashion designs, pirating movies and video games, patent infringement and stealing proprietary technology and software. This assault saps economic growth, costs Americans jobs, weakens our military capability and undercuts a key American competitive advantage — innovation.

Chinese companies have stolen trade secrets from virtually every sector of the American economy: automobiles, auto tires, aviation, chemicals, consumer electronics, electronic trading, industrial software, biotech and pharmaceuticals. Last year U.S. Steel accused Chinese hackers of stealing trade secrets related to the production of lightweight steel, then turning them over to Chinese steel makers.

Perhaps most concerning, China has targeted the American defense industrial base. Chinese spies have gone after private defense contractors and subcontractors, national laboratories, public research universities, think tanks and the American government itself. Chinese agents have gone after the United States’ most significant weapons, such as the F-35 Lightning, the Aegis Combat System and the Patriot missile system; illegally exported unmanned underwater vehicles and thermal-imaging cameras; and stolen documents related to the B-52 bomber, the Delta IV rocket, the F-15 fighter and even the Space Shuttle.

Citation to data backing up the claims in the Op-Ed would be helpful.  It is important to remember though that back in 2015, the New York Times published another article concerning China’s new antiterrorism rules for various foreign companies doing business in China.  The upshot of the rules basically required access to computer source code as a condition to doing business in China.  Industry was objecting at that time for several reasons, including national security as well as intellectual property.  It looks like that problem has not gone away. 

On a positive note, reports from China seem to indicate an uptick in enforcement for intellectual property law theft.  I’ve heard some say this is part of China’s transition to an innovation/services based economy and that they are hard at work at changing beliefs concerning intellectual property.  Notably, New Balance recently received a $1.5 million award concerning trademark infringement from a Chinese company in Suzhou.  This is reportedly the largest award by a Chinese court against a Chinese company in favor of a foreign company.  This award follows the recent decision favoring Michael Jordan and another $500,000 award in Hangzhou concerning New Balance. 

Trump Nominates New Head of USPTO

Trump has nominated Andrei Iancu to lead the United States Patent and Trademark Office.  Mr. Iancu is managing partner of the very well respected Los Angeles based law firm Irell and Manella.  Irell and Manella is home to one of the leading intellectual property law litigators in the United States: Morgan Chu.  Here are a few observations about this pick: 1) former Chief Judge of the Federal Circuit, Randall Rader, was not chosen; 2) Andrei Iancu is based on the west coast in Los Angeles; 3) His clients are from many different industries: biotechnology companies, medical device companies, medical research institutions, computer hardware and software companies, and internet companies; 4) He's handled at least one trademark matter and appears mostly to handle patent cases; 5) He co-teaches patent law at UCLA Law School; 6) He has written a number of papers of varying length concerning patents, including inter partes review proceedings, software patentability and the Eastern District of Texas; 7) He has co-authored (with two associates) a relatively clear and balanced analysis of the pros and cons of inter-partes review proceedings; 8) He has a background in aerospace engineering; 9) He obtained over $1.6 billion in payments for his client TiVo against AT&T, Motorola, Microsoft and Cisco among others; 10) He represented Ariosa Diagnostics against Sequenom; and 11) His firm represented Trump among others involving copyright claims and The Apprentice television show.  This appears to be a strong pick by the embattled Trump Administration.