Influencing the influencers – ensuring social media is upfront on endorsements

Last year, the Global IP & Technology Law Blog covered the investigation by the Competition and Markets Authority (CMA) into commercially driven posts on social media, the results of which were published last week.

Following the investigation (which considered potential breaches of the Consumer Protection from Unfair Trading Regulations 2008), a number of prominent online influencers have provided the CMA with undertakings that they will ensure that their posts will make clear where they have received any payment or incentive to promote or endorse a particular product. The celebrities giving undertakings to ensure that their future social media postings are not misleading included Alexa Chung, Mario Falcone, Jim Chapman, Ellie Goulding, Rita Ora and Zoe Sugg (‘Zoella’).

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Modernising and harmonising… the Trade Mark Regulations 2018

On the 14 January 2019, the Trade Marks Regulations 2018 (the Regulations) came into force in the UK, amending provisions in the Trade Mark Act 1994 and the Trade Mark Rules 2008, bringing UK trade mark law in line with that of the EU. The Regulations introduce changes to elements of the application process, disputes and trade mark management, and seek to both harmonise and modernise trade mark laws.

The Regulations have amended the rules around what can be registered as a trade mark (which may now include smells, movement and sounds, amongst other things) and introduce useful mechanisms by which owners can challenge counterfeit products more robustly. The Regulations also provide some wider ownership rights relating to collective trade marks and additional ways for licensors to enforce their rights.

Anti-counterfeiting operations plan to tackle intellectual property crime

Counterfeit goods now account for up to 2.5% of world trade and 5% of imports in the EU and are a significant problem for many industries in a rapidly evolving digital world. As businesses are aware, tackling IP infringements in counterfeit goods by law enforcement alone is not always effective. Therefore, it will be welcome news that there is a growing package of alternative measures available in order to improve the enforcement of IP rights against counterfeit goods. Continue Reading

A Private Sale is Still a Sale – SCOTUS Affirms the Federal Circuit for a Change

The Federal Circuit Court of Appeals has been a consistent punching bag for the Supreme Court over the past ten or so years.  The high court has repeatedly reversed the Federal Circuit in key decisions such as Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (patentable subject matter), TC Heartland LLC v. Kraft Foods Group Brands LLC, (venue in patent infringement cases), SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC (laches), and Impression Products, Inc. v. Lexmark Int’l, Inc. (exhaustion).  In what will be scrutinized as a potential turning of the tide, on January 22, 2019, the Court unanimously affirmed the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharma. USA, Inc., a closely watched appeal regarding the parameters of the on-sale bar under 35 U.S.C. § 102(a). Continue Reading

France’s new investment control in the cybersecurity and technology sectors

Decree No. 2058-1057 of November 29 2018 on foreign investments subject to prior approval

France, who in recent years has been relatively open to overseas investors, has extended its control over foreign investment into certain ‘sensitive’ industries, particularly the IT, cybersecurity, communication and technology sectors.

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New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an intermediate step to determine whether a judicial exception is integrated into a practical application of the judicial exception. Continue Reading

USPTO Issues New Guidance on Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) has announced revised guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for evaluating subject matter eligibility of patent claims. The new guidance, published in the Federal Register on January 7, 2019, and effective immediately for all applications, is intended to help Examiners determine whether a proposed patent claim is directed to an abstract idea. Continue Reading

New Requirements for Foreign Companies filing Trademark Appeals in China

The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have the Chairperson of the Board sign such documents. But recent cases show that the practice of the Beijing IP Court has changed, and more formal requirements appear to be necessary to lodge an appeal successfully.

In recent administrative proceedings concerning the appeal of trademark rejection or invalidation decisions, the Beijing IP Court has indicated the appeal would likely be rejected if the appellant did not provide legalized evidence – such as the company Bylaws or relevant laws and statutes – to show the signatory’s power to sign the documents.  This new procedural standard presents a challenge to the right holder and risks rejection of these kind of appeals.

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USPTO Issues New Guidance on Computer-Implemented Means-Plus-Function Claim Terms

On January 4, 2019, the United States Patent and Trademark Office (USPTO) announced new guidelines for “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.” These guidelines, published in the Federal Register on January 7, 2019, take immediate effect and apply to all pending applications and issued patents.

While nothing in these guidelines appears to alter the current framework for analyzing computer-implemented means-plus-function claim terms, the guidelines nonetheless provide both patent prosecutors and patent litigators with a helpful reminder of certain additional considerations encountered when a patent claims software or other computer-implemented function. This is both useful and important because software is frequently and most easily described in terms of a goal or objective to be implemented on a computer, and so software claims raise particular problems with respect to the written description, enablement, and definiteness requirements of 35 U.S.C. § 112. Continue Reading

Paying “Large Entity” U.S. Patent Office Fees as an Insurance Policy

You are the CEO of a startup company with lots of inventive ideas, and the company is applying for patents. Patent counsel tells you there are fees to pay to the US Patent and Trademark Office (USPTO) in connection with the company’s patents, and that the fees depend on whether your company is a “large” entity, a “small” entity, or a “micro” entity. Micro entity fees are minimal but rarely apply. But small entity fees may apply, and are usually half of those for a large entity.

Which fees can you pay? Which fees should you pay? Continue Reading

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