But life isn’t fair….

Anyone who negotiates contracts for a living has their own personal war stories of dealing with other parties whose significant negotiating leverage meant they ended up accepting terms which in an ideal world they wouldn’t. But could having the upper hand and using that to extract the best possible deal come back to haunt you? A recent Court of Appeal decision suggests not.

The basic facts of Times Travel (UK) Ltd v Pakistan International Airlines Corporation [2019] EWVA Civ 828 are straightforward: Times Travel was a ticketing agency whose business was almost entirely based on sales of tickets for Pakistan International Airlines (PIA); PIA got into a dispute with Times Travel (and other ticketing agencies) over unpaid commission and during that dispute terminated its contact with Times Travel in accordance with its terms, offering a new contract in its place on less favourable terms and in particular, a requirement that Times Travel waive its claim for unpaid historic commission.

Times Travel took the new contract but subsequently sought to argue that it was still entitled to the unpaid commission because the new contract had been entered into by it under duress.

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You could be a celebrity without knowing it if you have 30,000 followers on social media

In a landmark decision, the Advertising Standards Authority (ASA) in the UK recently ruled that, for the purposes of the CAP Code at least, a social media user may be considered a celebrity where they have 30,000 followers or more.

In this case, the ASA found that an influencer breached the CAP Code when she published an Instagram post promoting an over-the-counter sleeping tablet produced by Sanofi. The caption for the post was marked ‘AD’ and included the statement:

… I tried out Phenergan Night Time… It is a pharmacy only, short term solution to insomnia for adults which works by inducing a sleepy effect thanks to its active ingredient, promethazine hydrochloride, helping you to sleep through the night. … #AD #sleep”.

Although health professionals and celebrities can advertise or endorse cosmetic products, CAP Code Rule 12.18 states that “Marketers must not use health professionals or celebrities to endorse medicines.” Continue Reading

Overcoming Rejections Based on Your Own References

 

While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.”

When making a prior art rejection in the US, a patent examiner distinguishes between prior art that is available under 35 U.S.C. § 102 (a)(1) and 35 U.S.C. § 102 (a)(2). Section 102 (a) provides as follows: Continue Reading

2019 has so far Shown a Continued State of Flux for Section 35 U.S.C. §101

Since the decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), one of the most hotly discussed topics in the US patent field has been patent eligibility under 35 U.S.C. § 101 (“§ 101”).  Certainly, countless hours have been spent debating, discussing, and arguing proper application and interpretation of § 101.  This is the result of significant uncertainty felt throughout the field with respect to application of § 101 at the USPTO and by the courts.  As 2019 has shown thus far, § 101 continues to be in a state of flux despite efforts by the USPTO and the courts to provide predictability and clarity to subject matter eligibility determinations, and thus uncertainty is likely to continue.   Continue Reading

Leading the way…

Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals.

Ron is based in our Palo Alto office and we are so pleased that his work and dedication to the practice has been recognised. Congratulations Ron!

Hungry for change: ASA and Government target junk food ads

With childhood obesity rates in the UK among some of the worst in Europe, the Government has set a national target to halve childhood obesity by 2030. Whilst the Government acknowledges that this is a multi-faceted problem, it has reported that evidence suggests that children’s exposure to advertising of products that are high in fat, salt and/or sugar (“HFSS”) contributes to their consumption patterns.

HFSS product advertising is currently subject to content and placement restrictions under the Committees of Advertising Practice (“CAP”) broadcast and non-broadcast codes of advertising (“Codes”); however, campaigners and industry bodies have raised concerns that adverts are not being targeted correctly and that the existing rules do not go far enough. The Advertising Standards Authority (“ASA”) and the Government have taken steps in recent months to address these issues, with the ASA launching a monitoring exercise on targeted ads and the Government consulting on options to reduce children’s exposure to HFSS ads. Continue Reading

Risqué Business: US Supreme Court Opens Trademark Registry to “Immoral or Scandalous” Trademarks

On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have “immoral or scandalous” content.  This decision was not unexpected, as it was presaged by the Court’s 2017 decision in Matal v. Tam, which invalidated the Lanham Act’s ban on registering trademarks that “disparage” persons. Continue Reading

What makes an Electronic Communications Service? (Part 2)

On 13 June 2019, the Court of Justice of the European Union (“CJEU“) published its ruling on the classification of Gmail in the EU following a request for a preliminary ruling from the German Courts. Gmail is a web-based email service, and is a type of “Over-The-Top” (“OTT”) service.

The CJEU determined that Gmail is not an electronic communications service (“ECS”), as defined in the Framework Directive (Directive 2002/21/EC, as amended) – i.e. a service consisting mainly or wholly of the conveyance of signals. As a result, Gmail should not be subject to various telecommunications regulatory obligations in the EU, including registration/notification (depending on the national regime), payment of administrative fees, security, and consumer protection measures such as minimum contract terms and transparency requirements. Continue Reading

Digital Copyright Directive published…and already the subject of complaint

The Directive on Copyright in the Digital Single Market (the Directive), has now been published in the Official Journal, and entered into force on Friday 7 June 2019.

EU member states have two years in which to transpose the Directive (which is now officially Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC). Continue Reading

The Government Does Not Have Standing to Challenge Patents Under the Leahy-Smith America Invents Act (AIA)

The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below.  This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States Postal Service (USPS) that the Government was a “person” eligible to petition for a covered business method (CBM) review. Continue Reading

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