A new decade is upon us, and its first two months have veered between ordinary and chaotic. Somewhere in the middle of that spectrum lie a handful of developments relevant to the field of Intellectual Property.
Right now, it is not clear if IP's changes will materialize at blistering speed or a more measured pace, but 2020 is set to feature several key IP law trends.
Diagnostic patents will stay status quo in American IP law, for now
The 2010s were a curious decade for IP cases in the highest court of the U.S. Numerous decisions, including Alice Corp. v CLS Bank and Mayo Collaborative Services v. Prometheus Labs added knottier caveats to the already complex, but, up to that point, well-established - spiderweb of American IP law. Recently, the Supreme Court declined a case that could have shook up IP regulations:
- In Athena Diagnostics v. Mayo Collaborative Services, Athena tried to protect its new method for diagnosing a chronic autoimmune disease from alleged infringement by Mayo (the same firm that took Prometheus to court in 2012 over a similar issue).
- The precedent cited by Mayo established that processes contingent on "laws of nature" could not be patented. Since the Athena method involved detecting a naturally occurring molecule, it fell under that purview.
- The Federal Circuit (and its Court of Appeals) took Mayo's side, so Athena filed a petition for writ of certiorari to the Supreme Court on October 1, 2019.
- On January 13, 2020, the Court denied Athena's request - contrary to the expectations of many in the IP law community - so Mayo's precedent stands. Anyone working in medicine or throughout the life sciences will continue to be frustrated in their efforts to patent similar techniques.
After the Supreme Court denied Athena's petition to have its new method for diagnosing a chronic autoimmune disease protected, anyone working in medicine will continue to be frustrated in their efforts to similar patent techniques.
But the Supreme Court is not done handling IP cases by a long shot. The justices are currently hearing Romag Fasteners v. Fossil, in which the plaintiff argues Fossil infringed on its profits when it used counterfeit Romag magnetic snaps in its handbags. Since the current court leans in a fairly traditionalist direction (given its inflexibility in a case like Athena), the judges are most likely to side with the plaintiff. Bold changes to American IP law will probably be seen in Congress before they surface in the court system.
Domain names could be better protected
On the other hand, the Supreme Court seems entirely more willing to debate the validity of domain names receiving protections under the same criteria that give trademarks their status as registered IP.
The U.S. Patent and Trademark Office (USPTO) denied Booking.com's trademark application in 2017, arguing that "Booking.com" was too generic to a trademark under similar patent criteria. The business first disputed this right before the Eastern District Court of Virginia (E.D. Va.), which ruled in the company's favor. Then, the USPTO brought the matter to the Fourth Circuit Court of Appeals. When that body backed up the E.D. Va. decision, the government petitioned for and received Supreme Court certiorari. Oral arguments for USPTO v. Booking.com BV will begin March 23.
Precedent exists that should give Booking.com hope. For example, "weather.com" is a USPTO-registered trademark of The Weather Channel, and Ancenstry.com enjoys the same protections. Both those names are "generic" by any objective standard, so why not for the travel site? Yet, no matter what happens with the ruling, it might encourage companies to be more creative with domain names to avoid the issue altogether.
The case USPTO v. Booking.com BV will determine whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark. (Source: SCOTUS)
APAC-area IP surge will continue
The World Intellectual Property Organization (WIPO) released its World Intellectual Property Indicators (WIPI) report in late 2019. Among many other insights, it revealed more than half of 2018's patent filings came from China, amounting to 1.54 million applications. Japan and South Korea were not far behind, with about 313,000 and 209,000, respectively.
Combine this with other recent developments, like China adopting numerous new IP protections and working to resolve its tariff-fueled trade dispute with the U.S. What do you get? Clear indicators that China aims to step forward as one of the world's hotbeds for invention, with its neighbors keeping their already-strong positions in that hierarchy.
The EU and UK have separated, but the latter must nonetheless follow the former's regulations until a "transition period" ends December 31. The gap exists for the parties to devise a mutually beneficial trade deal. UK Prime Minister Boris Johnson asserts this is eminently possible, while European Commission President Ursula von der Leyen is more skeptical. We have put together a brief guide to cover all notable changes that Brexit will have on IP rights holders and the steps patents and trademark applicants may need to take to ensure nothing goes awry with their IPRs.
Whether there is a deal or not, IP protections will remain in place for both regions: The UK Intellectual Property Office will "clone" all existing EU trademarks held by British inventors and likely approve its pending trademark applications. However, in the interest of being safe rather than sorry, applicants waiting for approval from the UKIPO or the European Union Intellectual Property Office (EUIPO) should probably file a matching request in the opposite office. With trademark and IP law professionals certified to handle such matters, Dennemeyer could well be such applicants' best place to turn.