Swiss-style? Cheese, OK. Patent claims, not so much.

Not in Switzerland, but very cheesy.

This came up in a case I'm working on today, and I had to remind myself, so I figured I would share.  DISCLAIMER: I'm not a European patent attorney.  If any European patent attorneys read this, and want to correct anything I might have got wrong here, I'd be pleased to hear from them.
  
In the U.S., if you come up with a new treatment that uses an old drug, you can get a patent on a "method of treatment" that's limited to treating the particular disease in question.

European patent law prohibits "method of treatment" claims, because they're considered to incorporate the human body.  So for many years, European practitioners got around this by using something called "Swiss-style" claims.

Swiss-style claims have the form "Use of [product X] in the manufacture of a medicament for treatment of [disease Y]."  

They're apparently called "Swiss-style" because they were first permitted by the Swiss Patent Office, and not because of their cheesy goodness.

However, since 2010, Swiss-style claims have been barred by the EPO (although this rule applied only to new cases filed after the relevant decision of the Enlarged Board of Appeal), which did not claim priority to an earlier-filed case.

Since then, the preferred alternative to the Swiss-style claim has been the "second medical use" claim, which has the format: "[Product X] for use in the treatment of [disease Y]."    It's a "second" medical use claim because Product X is already known for use in treating disease X.  So by that token, if you discover the first therapeutic use of a known compound, and write the claim "Product X for use in the treatment of disease X," that would be a first medical use claim.  Which is also OK in Europe, provided the facts support the claim.

It's just a box of patents, I don't know who put it there...

Reuters is reporting that Germany is considering closing the "patent box" tax loophole (story: here).

This raises the obvious question: what?

Turns out, some countries (notably the UK and the Netherlands) offer corporate tax breaks to companies that commercialize (or, in the case of the UK, "commercialise") patented technology.  Profits on products that incorporate patented technology are subject to a corporate tax rate of 10%, rather than the current 23% (source: here).  Apparently some German companies are taking advantage of these tax breaks to move their operations out of Germany and into a "patent box" jurisdiction.

It's called the "patent" box because it doesn't apply to products covered by trademark or copyright.

I have no idea why it's called a "box."

Happy Together? Not Anymore.

According to this story in Billboard, a California judge has granted summary judgment that Sirius/XM has violated the Turtles' copyrights by broadcasting their songs without permission.

Here's the interesting part:  Sirius/XM has been broadcasting Turtles' songs for seven years without paying, and the Turtles knew about it, but didn't sue or even ask for royalties.  

At this point, I'm thinking "laches."  Laches is an equitable doctrine that bars suit where a plaintiff has "slept on his rights."  Typically, at least in patent cases, laches kicks in after six years.  So if I know that somebody's infringing my patent for six years, and I don't do anything about it, not even a nasty letter, then I'm SOL.

However, the Turtles' case wasn't brought under Federal law, because Federal copyright law doesn't apply to sound recordings made before 1972.  (Copyright law is weird).  So the case was brought under California state law.  And since they're seeking statutory damages for the infringement, the case is being brought in law, not in equity.  The result?  Laches doesn't apply.  Here's the relevant passage from the decision.

Sirius XM reasons that Flo & Eddie [the owners of the Turtles catalog] and Sirius XM have been "happy together" for years without any licensing or royalty arrangements, and Flo & Eddie cannot disrupt this practice that Sirius XM has built its "oldies" business around after Flo & Eddie had allowed it for so long.  ...It is undisputed that Flo & Eddie has been aware of Sirius XM's public performance of its sound recordings for over seven years and has never demanded payment or sued Sirius XM regarding the performances prior to this lawsuit. ...However, "the laches defense is unavailable in an action at law for damages 'even [if] combined with the cumulative remedy of declaratory relief.'"  ...This case is, in part, an action at law for damages...; therefore, before reaching the issue of prejudice, the laches defense fails because it is unavailable to Sirius XM in this action.

Slip op. at 15; cites omitted. 

Did not see that coming.

This is the kind of thing that makes people angry, but they shouldn't be.

According to this story in the Hollywood Reporter, the organizers of the "Rocky 50K Fat Ass Run" have knuckled under to a threat of trademark suit from MGM and will rename their event, a race which is to roughly track Sylvester Stallone's route from "Rocky."  This article from the Philadelphia Enquirer details a reporter's efforts to figure out the "actual" route that Rocky ran in the movie, which involved a fair amount of creative filling in between scenes.  My favorite line from the article: "Nothing is more South Philly than a flaming barrel."

Now, here's the thing.  The average person reading the article about MGM squelching this cool event is going to react negatively.  Because MGM comes across like a bunch of assholes pissing on what sounds like a harmless, fun event.  But it seems pretty clear to me that the organizers screwed up by not asking permission in the first place. I bet if they had gone to MGM, and linked the run up to some worthy charity, they could have gotten a freaking sponsorship from MGM.  They might have had to drop the "fat ass" from the name of the race, which would be a loss, I grant.  But still.

Wash. Post: Rep. Wolf Asks Justice Dept. to Open Investigation into USPTO Timekeeping

According to this story in Wednesday's Washington Post, Rep. Frank Wolf (R, VA) is asking the Justice Department to open an investigation into allegations that patent examiners at the USPTO are "cheating" taxpayers by claiming to have worked hours that they did not actually work.

Frank Wolf (R, VA)

Although he represents a substantial chunk of Northern Virginia, Rep. Wolf's district does not include the USPTO, or the neighborhoods in Alexandria where most of the examiners that are based in the "home office" live.

According to the Post, 

In recent years, the patent office has addressed the vast majority of time and attendance fraud by requiring cheaters to go into counseling and occasionally suspending them, according to officials at the agency with knowledge of its employee-relations practices.

Really - "the vast majority?"  "Vast?"  How often has this happened in "recent years?"  This language certainly seems to suggest that "time and attendance fraud" is rampant at the USPTO.  And that the USPTO knows about it, as they apparently have a counseling program set up to deal with offenders.  And if, as the article suggests, this sort of thing happens all the time, shouldn't Rep. Wolf be discussing this with the USPTO, rather than the US Attorney's Office?

Thanks, Washington Post, for clearing all that up.  Sheesh.  

Creative Use of Trademark

According to a story at BET.com (link), Aussie rapper Iggy Azalea (pictured below) is trying to block release of a video that purportedly features her engaged in "relations" with rapper Jefe Wine.

Iggy

Her attorneys are apparently arguing that because "Iggy Azalea" is a registered trademark in the US, release of the video without her permission is a trademark violation.

Sure enough, she has a US registration for the "Iggy Azalea" mark (link to record in TESS).

Here's the part I don't get:  how does she get her application allowed?  Because Iggy Pop.

Original Iggy

Iggy Pop (hereinafter "Original Iggy") also has registered trademarks in the U.S. protecting his moniker (link to records in TESS).  And Original Iggy's marks are considerably senior.  As you would expect.

Likelihood of confusion?  Certainly not based on appearance. But the marks are word marks, not based on how the Iggys (Iggies?) look.  

Remember, trademarks are supposed to protect consumers.  God help you if you go to download a song from one Iggy and get a song from the other.  Because I'm guessing the respective fanbases overlap not at all.  But don't take my word for it.  Check it out below, and decide for yourself.

I think I see the problem here

An article in today's Washington Post (full article here) contains a link to the original "whistleblower" reports of examiners slacking off at the USPTO.  

One of the whistleblowers, a disgruntled SPE, is quoted as saying,

“As a government employee, I can no longer sit by and watch this problem get any worse,” the supervisor’s complaint continued. “We have lost sight that we are a government agency who works for the taxpayers. We are not accountable to the taxpayers.”

 To which I respond:  EXACTLY.

The USPTO isn't accountable to the taxpayers.  Because the taxpayers don't support the USPTO.  The USPTO runs on fees paid by patent applicants.

Let me repeat that, just so there's no misunderstanding.

TAXPAYERS DON'T SUPPORT THE USPTO.  THE EXAMINER'S SALARIES ARE PAID BY PATENT APPLICANTS.

Maybe, just maybe, if examiners had an understanding of who's really paying their salaries, patent examination would improve.

Next week, I'll address the question of whether it makes any sense to have examiners track their time, when they're on a production quota.