European Patents – do applicants have to amend the description to match the allowed claims? Finally there is a referral to the Enlarged Board of Appeal (G1/25) to sort out this conflict between the EPO guidance and the Board of Appeal.
The Unified Patent Court (UPC) Court of Appeal decided in XSYS v Esko (UPC_CoA_156/2025) that the UPC has jurisdiction over alleged patent infringements that occurred before the UPC Agreement entered into force (1 June 2023) and even during periods when a European patent was opted-out, provided the opt-out is later withdrawn. IPKat
The European Commission has confirmed the official withdrawal of legislative draft proposals that would have increased EU regulatory oversight over both standard-essential patent (SEP) licensing and civil liability of artificial intelligence (AI) products and services.
The Tokyo District Court granted its first injunction (against Google’s Pixel 7) for SEP infringement in the Pantech v Google case, a landmark decision with implications for licensing practices and future litigation.
The Trump administration is reportedly considering a “patent tax” that would replace the current flat-fee maintenance structure with a percentage-based tax on patent value (between 1% and 5% annually). This potential shift, could significantly increase costs for certain patent holders and make the US an anomaly among major patent systems.
The USPTO’s denial of inter partes review (IPR) petitions under “settled expectations” doctrine extends to patents in force for only six years.
Rubik’s Cube owner (Spin Master Toys), loses 3D trade marks in dispute at the EU General Court as they cover functional features of the product (Spin Master Toys UK v. EUIPO – Verdes Innovations).
EPO enlarged board of appeal rules that non-reproducible commercial products are prior art when assessing novelty and inventive step. A product put on the market before the filing date of a European patent application cannot be excluded from the state of the art solely because its composition or internal structure could not be analysed and reproduced by the skilled person before that date. Technical information about a product made available to the public before the filing date forms part of the state of the art, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date. EPO | IPKat
USPTO creates ‘settled expectations’ block to starting IPR proceedings and SAP challenges it. This allows discretionary denial of inter partes review (IPR) petitions for patents older than seven years. Patently’O | Jones Day | Patently’O (on SAP challenge)
European General Court denies application for colour trade mark registration – despite assistance from INTA and MARQUES. Yet again we see that it’s hard to get a non-traditional trade mark registration in the EU. IPKat | Arochi Linder
UK Supreme Court to hear appeal in Tesla Avanci 5G FRAND case. It’s been a while since the UK Supreme court has reviewed a FRAND case and Tesla is trying to make new law here with its supra-FRAND request to set a new global rate for the licence. (FRAND = Fair, Reasonable, And Non-Discriminatory). IAM | UK Supreme Court | IP Fray
20,000 AI-generated music tracks are uploaded daily to platforms like Deezer, doubling in just two months. IP Close Up
EPO Enlarged Board of Appeal clarifies claim construction – yes you do need to consult the specification to interpret the claims: IPKat; Cooley; Pinsent Masons
Meta wins summary judgment win in AI training copyright lawsuit – but still plenty of room for copyright owners to prevail in the coming AI battles. (This and the recent Anthropic judgment both state the AI training as argued in these particular cases was not copyright infringement.): TechCrunch; Copyright Lately; Engadget;
US Government intervenes in patent infringement case supporting an injunction in favour of a non-practicing entity. This may lead back to the days of preliminary injunctions for patent owners… (Radian Memory Systems, LLC v. Samsung Electronics Co. (Civil Action No. 2:24-cv-1073)): IPWatchDog; IAM Patent;
Denmark contemplates copyright protection for facial features to allow people to protect their own likeness: Gizmodo; TechSpot;
Trink Tank tried to pre-empt a claim for trade mark infringement and ended up being out-maneuvered and it cost them a lot more money. Take some time to think through your strategy and ‘lean in’ to the dispute to resolve it. (Do we have a good case or not, and if not, how can we settle this in a reasonable way.) It’s often a bad idea to create a separate dispute that will complicate things and may blow up in your face.
In a typical start to a trade mark dispute, Bickford and Trink Tank’s lawyers exchanged correspondence about trade mark infringement by Trink Tank of Bickford’s ‘Spritz’ mark. Bickford threatened the usual consequence that they would commence proceedings in the Federal Court if the requested undertakings were not given.
In an unusual turn of events, Trink Tank’s response was to file a ‘pre-emptive’ application for unjustified threats before a different court – the Federal Circuit and Family Court of Australia (FCFCoA). Six days later, Bickford commenced proceedings in the Federal Court for trade mark infringement (as they had threatened).
This judgment deals with the fall out when each party asked the Federal court to allow their own proceedings to continue, and that the other should be dismissed.
Bickford won, the FCFCoA case (started by Trink Tank) was transferred to the Federal Court. However, the Federal Court case (commenced by Bickford) was dismissed as there is a statutory bar to commencing proceedings in the Federal Court if there is already a case before the FCFCoA (and within its jurisdiction).
How did Bickford get to move the case to the Federal Court? As it happens, Bickford had already commenced proceedings in the Federal Court against a third party (Noot) for infringement of the same trade mark and that proceedings was held to be ‘Associated’ with the dispute with Trink Tank.
So Bickford has its Federal Court proceedings against Trink Tank (which, having been started by Trink Tank in the FCFCoA only involves an allegation of unjustified threats of trade mark infringement). Presumably Bickford will cross-claim for trade mark infringement in which case the Federal Court has already ordered Trink Tank to pay indemnity costs (ie full solicitor-client costs) thrown away as a result.
The long-awaited Anthropic “Claude” AI training, copyright fair use judgment has just been issued in the Northern District of California, USA. Here are some important takeaways for business owners:
It goes without saying that you should respect copyright and lawfully acquire any copyrighted material for all uses, especially for building data libraries. Piracy is a significant legal risk.
Training AI models on copyrighted material can be considered “transformative fair use” (and therefore not infringe copyright), particularly if the outputs do not reproduce the original works. While training may be fair use, mechanisms to prevent infringing outputs from the LLM are critical to ensure there is no reproduction.
Different stages of data handling (acquisition, storage, processing, training) may be subject to separate fair use analyses. A transformative end-use does not justify infringing acts earlier in the process.
Ensure robust internal controls and record-keeping for data acquisition and usage, as transparency is critical in litigation. Anthropic’s resistance to providing information about what specific copies were used for training LLMs, including clawing back a spreadsheet, was held against it by the court.
Interestingly, the court held that the potential for LLMs to generate new works that compete with authors’ works (e.g., alternative summaries or narratives) is not the “kind of competitive or creative displacement that concerns the Copyright Act.” The Act aims to advance original authorship, not shield authors from competition.
Nike settles trade mark dispute with “Shoe Surgeon” Dominic Ciambrone over his high end customised shoes. He’s apparently allowed limited customization with removal of any Nike IP. StupidDope; SGB Media; hypebeast;
USPTO (Acting) Director comes up with a new way to deny Inter Partes Review of patents (in this case filed by iRythmn) – you waited too long. This is the first time that “settled expectations” has been used to support a discretionary denial. Don’t wait too long to file your IPR (Inter Partes Review) at the USPTO. Morgan Lewis; Volpe Koenig; IPWatchDog;
$218 million patent infringement verdict against PNC overturned by the US CAFC (Court of Appeals for the Federal Circuit) and the patentee (USAA) had their patents revoked. The patent claims were criticized by the judges for covering only routine and well-known steps taken when depositing checks and falling within the realm of abstract ideas. BankingDive; IPWatchDog; The National Law Review
A few handy reminders for business owners from a recent Australian Federal Court decision on costs.
Trade Mark Protection is Crucial: Ensure your trade marks are robustly maintained and defended. In this case, Mercato Centrale had one of Caporaso’s trade marks cancelled. This ultimately led to the dismissal of Caporaso’s infringement claim regarding that mark.
Strategic Litigation Involves Counter-Claims: If facing a claim, consider offensive, cross-claims as part of your response. Mercato Centrale’s cross-claim was a key factor. They sought cancellation of Caporaso’s trademark which led to success in defending against the infringement action.
Abandoning part of your case: Pursuing part of your case for too long when they are unlikely to succeed can be risky. If you abandon them late in the trial, for example after significant evidence has been adduced (eg, after cross-examination of a key witness), it can be considered “wasteful of costs.” This may lead to a higher proportion of costs being awarded against you. Caporaso abandoned claims under the Australian Consumer Law (ACL). It also abandoned claims of passing off and against the second respondent personally. This contributed to it paying higher costs.
Scope of Evidence: Be mindful of the resources expended on issues where you might not succeed. Some of Mercato Centrale’s failed arguments consumed a significant portion of evidence. This was a key consideration when costs were awarded.
Costs Generally “Follow the Event,” but Discretion Applies: The general rule is that the losing party pays the winning party’s costs. However, courts have a wide discretion to apportion costs. This means that even if you “win” the overall case, you may not recover all of your costs. This is particularly true if you were unsuccessful on “discrete issues.” It is also relevant if your conduct led to wasted costs.
Justification for Legal Expenses: The necessity of certain legal expenses, such as briefing multiple Senior Counsel, will be reviewed during the cost assessment process (“taxation of costs”). Ensure your legal strategy is proportionate and necessary to avoid unnecessary expenses that may not be recoverable.
Separate Consideration for Different Parties: Costs for different parties, even if they are on the same side, might be considered and awarded separately, especially if one party was not involved in all aspects of the litigation (e.g., appeals or cross-claims).
Factors Influencing Cost Apportionment: Courts may apportion costs based on issues such as:
- the degree of success on “discrete disputed issues”;
- unmeritorious objections or issues;
- whether issues are “clearly dominant or separable” and involve different factual inquiries; and
- the extent of abandoned claims and associated wasted costs
Read the case at: Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (No 3) FCA 624
Be proactive in managing your brands, especially when entering and operating in new markets, even if online. Be quick to identify and avoid or address potential conflicts as the expense and time needed to fix will increase over time.
Some key insights from the recent Australian Consumer Law case: Jacksons Drawing Supplies Pty Ltd v Jackson’s Art Supplies Ltd [2025] FCA 530
When entering a new country conduct searches and check and choose your brand carefully. The court found that the similarity between “Jacksons” / “Jacksons Drawing Supplies” (JDS) and “Jackson’s” / “Jackson’s Art” / “Jackson’s Art Supplies” (JAS) was obvious and a significant factor in the potential for consumer confusion.
Reputation in a new country from your online presence is great, but it also creates liability under local consumer law. Even small amounts of sales, over a sustained period will be enough to do this. Website features that are targeted to a particular country can contribute to misleading conduct if consumers mistake who you are by assuming your business is from that country. (Local domain names, use of local currency, local contact details can all contribute to this.) But they are only a problem when your brand is similar to a pre-established brand in that country. (So, again, do the search and check first, and file a trade mark application as well.)
Consumer Protection focuses on the effect of your conduct, not whether you intended to be misleading. The relevant consumers include a range of individuals with varying levels of knowledge and sophistication regarding the market and businesses within it. You should not assume that consumers will engage in detailed analysis of your website or marketing materials, or that they are aware of subtle differences in branding or business models.
You can use statements to counter potentially misleading representations – but make them prominent. Don’t bury them in the footer or elsewhere on the site.
If you delay in enforcing your rights, you may not obtain the remedies you would otherwise deserve. Actively manage your brands, monitor for infringements and be proactive about resolving them. You may not be able to fully stop the infringer (ie obtain a complete injunction) if you wait too long. Time and a greater reputation by the infringer hurt you commercially but will also hurt your chances of getting an injunction. Being unaware of the existence of the infringer may not be enough if the court decides that you could have easily discovered their conduct, for example from a simple web search.
Surprisingly, evidence that actual consumers were confused is not always required in such cases. However, it will make a difference to your case, particularly if the misled consumers are also called as witnesses.
There can be a lot of uncertainty in deciding whether to commence patent infringement proceedings. They are expensive, and you want to get this decision right.
A key factor is often a lack of detailed understanding of the alleged infringing product or process. The patent owner has to figure out a way to reduce uncertainty in light of this.
Courts around the world have mechanisms to allow potential applicants (plaintiffs) to obtain information in order to make this type of assessment. Seeking Preliminary Discovery and Notices to Produce are two examples before the Australian Federal Court.
In a recent case (Oxford Nanopore Technologies Plc v MGI Australia Pty Ltd [2025] FCA 572), the proposed Applicant (Plaintiff) sought Preliminary Discovery (this application is yet to be heard) and also filed a Notice to Produce certain documents. This decision dealt with the Notice to Produce and denied an Order for Production of documents in category 1 (Not justified by reference to the factual issues which have been identified by MGI) and category 3 (documents recording or evidencing a delegation of authority to start proceedings are beside the point).
While each party will no doubt take away some tactical benefits from this case, sometimes it may be better to write to the alleged infringer, ask them to provide evidence of non infringement, and if it is insufficient, simply sue them.
Here’s an update on what’s been happening in the world of IP lately:
Silfab acquires EnPV’s solar panel patent portfolio including the Self-Aligned Back Contact (SABC) technology and an associated trade mark. PV Tech, Solar Quarter, Technology News,
South Korean Supreme Court held that SK Bioscience’s export of its 13 valent pneumococcal vaccine does not infringe Pfizer’s Prevnar 13 patent. SK still can’t launch in South Korea itself until 2027 due to an earlier infringement judgment. ThePharmaLetter, Fiercepharma, KIPOST, FirstWordPharma
Temu joins the International Anti-Counterfeiting Coalition (IACC) to crack down on sale of counterfeit goods online. Retail Insider, RetailBoss, Technext,
US Federal Circuit clarifies trademark doctrine of foreign equivalents – “would a purchaser with ordinary sensibilities translate the word based on the context in which the mark is used?”: IPWatchDog; Intellectual Property & Technology, Justia, Bloomberg,
Google has copyright claims dismissed in textbook piracy case – but trademark case to continue based on ads: Plagiarism Today; Publishers Lunch; PYMNTS; TorrentFreak;
Moderna wins COVID vaccine patent case against Alnylam with a non infringement finding in US Court of Appeals for the Federal Circuit. A key issue was Alnylam’s definition (lexicography) in the patent specification: PatentlyO; Life Sciences Intellectual Property Review; Reuters; Bloomberg;
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