IPOwners Quarterly™ - June 2022

IPOwners Quarterly ™ JUNE 30, 2022

TABLE OF CONTENTS

IPO QUARTERLY WELCOME ........................................................................................................................................... 1 Q2 2022 U.S. INTELLECTUAL PROPERTY POLICY DEVELOPMENTS ................................................................................ 3 RECENT IP CASE LAW ROUNDUP ................................................................................................................................... 7 BRAZILIAN CENTRAL GOVERNMENT IS SENTENCED TO SECURE RESOURCES FOR THE BRAZILIAN PATENT AND TRADEMARK OFFICE..................................................................................................................................................... 11 WOMEN IN IP COMMITTEE CORNER: DIVERSITY IN THE EUROPEAN INNOVATION INDUSTRY AND IP PROFESSION WHITEPAPER: THE PATH TO IMPROVING THE STATE OF DIVERSITY IN THE EUROPEAN IP PROFESSION................... 12 DIVERSITY AND INCLUSION COMMITTEE CORNER ...................................................................................................... 17 50-YEAR HISTORY OF INTELLECTUAL PROPERTY OWNERS ASSOCIATION – PART II, IMPROVING U.S. IP LAWS AND POLICIES ....................................................................................................................................................................... 19 JOIN IN THE IPO 50 TH ANNIVERSARY CELEBRATION .................................................................................................... 24 IPO MENTORING PROGRAM NOW INCLUDES LAW FIRMS.......................................................................................... 25 IPO COMMITTEE LAUNCHES VERSION 2.0 OF CHIEF IP COUNSEL RESOURCE............................................................. 26 JOIN A FOUNDATION COMMITTEE .............................................................................................................................. 27 JOIN IPO IN LOS ANGELES, CALIFORNIA FOR THE 2022 IPO ANNUAL MEETING!........................................................ 29

IPO QUARTERLY WELCOME

By Jessica Landacre , IPO Executive Director

This year we celebrate IPO’s 50th anniversary. How time flies! In 1972, IPO was founded by 7 companies who came together to promote the value of the patent system for incentivizing innovation in the U.S. Fifty years later, the current 50-member board of directors continues to drive our mission of promoting high quality and enforceable intellectual property rights and predictable legal systems for all industries and technologies to achieve the global acceleration of innovation, creativity, and investment necessary to improve lives. While IPO’s mission and vision are not that different from where we started 50 years ago, so much has changed in a relatively short period of time. Notwithstanding the pandemic, IPO members push ahead and continue to make progress in new ways.

IPO is now a “big tent” organization with a global agenda. Shaping the Future of IP and Fostering Diverse Engagement are core tenants of IPO’s

strategic plan, and our member services reflect these priorities. The IPO community is larger and more diverse than it has ever been and serves as a training ground for new leaders. The IPO Education Foundation is reaching beyond IPO’s membership with its Stroke of Genius® podcast, telling inspiring stories about and for inventors from underserved communities. The Foundation is also providing

scholarships to students and mentoring young adults interested in STEM at underserved elementary schools. IPO Committees and the IPO Board of Directors are engaged in cross-industry collaboration on key policy issues to improve the IP system. Most recently we have been working with House and Senate offices on Capitol Hill to provide balanced feedback on PTAB reform. We are steadily making progress on all our strategic objectives. As we transition into the 2 nd half of 2022, we are excited to see many of you in person in Los Angeles, California for the IPO Annual Meeting. The connections made at the Spring Summit in San Diego in March of this year were just the beginning of a return to normalcy and reminded us of the unique value of the IPO community. It is satisfying to witness in person the types of connections made through participation in IPO, whether for benchmarking and best practices, mentorship and sponsorship, or friendships. These connections now extend beyond the U.S. In June, our European Practice Committee held its annual conference in Germany and boasted record attendance! We are hoping this is an indicator that we can expect an exceptional reunion of IPO members in September for the Annual Meeting on the West Coast. The first half of 2022 brought a return to growth in membership and our community. In 2019, before the pandemic, new members joined IPO at a record pace. Not surprisingly, that pace slowed over the last two years as uncertainty gripped the world. However, I am happy to report that to date, new members joining IPO has increased 50%. Even better, our existing members are seeing the value in IPO and renewing at an impressive 93%, which is a 10-year high. This association belongs to our members, and we know the quality of your experience largely depends on who is present. Thank you for your continued support! This issue of the IPOwners Quarterly will review activity in the policy world, both in the U.S. and abroad, as well as highlight some of the terrific work our members are doing. For example, IPO’s Corporate IP Management and Operations Committee just released version 2.0 of its Chief IP Counsel in a Box. We are delighted to be cooperating with WIPO to promote this valuable resource around the world. Visit https://www.ipoef.org/resources/ to view a new page highlighting partnerships and resources available to inventors and IP professionals. Stay tuned as we add new resources to this page.

I hope you enjoy this second quarter edition of the Quarterly . As always, we invite your feedback so that we can deliver the services that enrich your IPO experience.

Q2 2022 U.S. INTELLECTUAL PROPERTY POLICY DEVELOPMENTS

By Samantha Aguayo , IPO Deputy Executive Director & Chief Policy Counsel

In the second quarter of this year, U.S. IP policy has heated up. At the beginning of the quarter, Kathi Vidal was confirmed as the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Director Vidal hit the ground running, announcing several new interim policies, a vision and mission statement for the Office, and updated guidance on several aspects of inter partes review and post grant review proceedings. We are delighted to welcome Director Vidal as a keynote speaker at the IPO Annual Meeting in Los Angeles later this year. USPTO post grant proceedings also have continued to receive attention from the U.S. Congress, with a new bill introduced by Senate IP Subcommittee leaders and hearings held by both the Senate and House IP Subcommittees in June. More detail about these developments, and more, is discussed below.

Perhaps the most anticipated development of this quarter was the World Trade Organization’s announcement that its 12th Ministerial Conference in Geneva resulted in negotiated outcomes on several trade initiatives, including a Ministerial Decision on the Agreement on Trade-Related Aspects of Intellectual Property Rights . The decision includes that, “[n]otwithstanding the provision of patent rights under its domestic legislation, an eligible Member may limit the rights provided for under Article 28.1 of the TRIPS Agreement by authorizing the use of the subject matter of a patent required for the production and supply of COVID-19 vaccines without the consent of the right holder to the extent necessary to address the COVID- 19 pandemic” and that “[n]o later than six months from the date of this Decision, Members will decide on its extension to cover the production and supply of COVID- 19 diagnostics and therapeutics.” For over eighteen months, IPO has engaged on this issue, including leading the development of joint IP association statements on TRIPS waiver proposals in March of 2021 and in March of this year. Points emphasized have included that IP rights have fueled the innovation that has allowed the world to combat COVID-19 and that the evidence demonstrates that there is not a vaccine supply problem. IPO will continue to defend the merits of the IP system in this and other contexts. As always, IPO remains committed to providing members real-time updates about policy issues in the IPO Daily News ™ and in -depth analysis in future issues of the Quarterly .

NEW USPTO DIRECTOR

Director Vidal gave remarks during her first Patent Public Advisory Committee meeting in May, explaining that patent quality “is job number one.” The Office is working with IPO and AIPLA to develop an examiner training program to give examiners insight into “how their examinat ion prosecution record

is used after a patent is granted —and on techniques to improve the clarity of that record.” More information about the partnership will be shared as it develops. Director Vidal has taken several actions concerning the Patent Trial and Appeal Board. She announced that the Office will publish a Request for Comments in the Federal Register about the interim Director review process for reviewing PTAB decisions, which was put in place shortly after the Supreme Court’s Arthrex decision. She “strongly encourage[d] parties to provide a priority -ranked list of issues being raised.” A USPTO press release provides a list of “[i]ssues that may warrant review by the Director,” such as “[i]ssues that involve an intervening change in the law or USPTO procedures or guidance.” The USPTO will keep the interim review process in place while it seeks and considers stakeholder input. In early June , Director Vidal issued guidance to the Patent Trial and Appeal Board clarifying the extent to which applicant admitted prior art (AAPA) can be used in IPR proceedings under 35 U.S.C. § 311. In a message announcing the updated guidance , she explained that consistent with the Federal Circuit’s 2022 Qualcomm v. Apple decision, “AAPA does not improperly form the ‘basis’ of an IPR under § 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications.” The guidance gives numerous examples of appropriate uses of AAPA in IPR proceedings. Later in June, Director Vidal issued an “Interim Procedure for Discretionary Denials in AIA Post -Grant Proceedings with Parallel District Court Litigation” to members of the Patent Trial and Appeal Board. This interim guidance clarifies how the PTAB should apply the factors outlined in the precedential Apple Inc. v. Fintiv, Inc. opinion concerning when panels should deny to institute petitions for IPR or PGR based on parallel civil litigation or ITC proceedings. Spec ifically, the guidance indicates that “the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. When applying factor two, PTAB will consider the speed with which the district court case may come to trial and be resolved and weigh this factor against exercising discretion to deny institution if the median time-to-trial is around the same time or after the projected statu tory deadline for the PTAB’s final written decision.” The guidance indicates PTAB “ retains the right to deny institution for other reasons under 35 U.S.C. §§ 314(a), 324(a), and 325(d).” On the same day, the USPTO published the results of a study that considered denials of IPR and PGR petitions under Fintiv from Q2 of fiscal year 2019 through Q1 of fiscal year 2022. The study “reveals a sharp overall decline” in denials over that period and found that parallel litigation was raised in about 40% of PTAB cases after the Fintiv decision was designated precedential, that denials under Fintiv peaked in Q2 of fiscal year 2021, and that PTAB has not issued a Fintiv denial based on litigation in W.D. Tex. since August 2021.

CONGRESSIONAL PTAB REFORM

Last September Senator Patrick Leahy (D-VT), Chair of the Senate Judiciary Subcommittee on Intellectual Property, introduced the “Restoring the America Invents Act.” Following several months of discussions, on June 16 Senator Leahy and Subcommittee Ranking Member Thom Tillis (R-NC), along with Senator John Cornyn (R-TX), introduced the Patent Trial and Appeal Board (PTAB) Reform Act of 2022. The bill is intended to promote “predictability, certainty, and fairness at the PTAB.” The bill addresses serial petitions, prohibits the USPTO from considering parallel civil litigation or ITC investigations in

determining whether to institute IPR or PGR, and addresses issues raised by the Supreme Court’s Arthrex decision, among other issues. On June 22 the Senate Subcommittee on IP held a hearing titled “The Patent Trial and Appeal Board: Examining Proposals to Address Predictability, Certainty, and Fa irness” Focusing on the PTAB Reform Act. Witnesses lauded the sponsors for the iterative and collaborative process they had undertaken to draft the bill, which Tim Wilson (SAS Institute, Inc.) said was “a good framework for compromise . David Cain (GlobalFoundries) also said he supported the bill. Robert Giles (Qualcomm Incorporated, Innovation Alliance) said PTAB had urged the committee to pass the STRONGER Patents Act introduced in previous years by Senator Coons, which he said would create fairness for patent owners through provisions such as requiring petitioners to prove the unpatentability of patent claims by the clear and convincing evidence standard used in district courts rather than the lower preponderance of the evidence standard used by PTAB. Jonas Anderson (American University Washington College of Law) said he supported the bill and spoke about the “problematic state of patent litigation” that had led to 25% of U.S. cases being heard by one district court judge in 2021. Ranking Member Tillis indicated that the bill was the “beginning of a process” and encouraged stakeholders to share constructive feedback on how they felt it could be improved. Witness statements and video of the hearing are available on the committee’s website . On June 23, the House IP Subcommittee on Courts, Intellectual Property, and the Internet held its own hearing titled “The Patent Trial and Appeal Board After 10 Years: Impact on Innovation and Small Businesses” that focused on how PTAB works for small businesses. Topics discussed in witness testimony and during a lengthy question and answer session included serial challenges, high usage rates of inter partes reviews, potential use of live testimony, new guidance for discretionary denials under Fintiv , and the burden of proof, among others. Former USPTO Director David J. Kappos (Cravath, Swaine & Moore, LLP) testified that the PTAB generally had been a success and said any legislative changes should reflect that it had become the main venue for challenging patent validity. For example, he suggested that the burden of proof for proving invalidity in PTAB trials should be raised to the clear and convincing standard to align with district courts. He also suggested creating a reexamination offramp to consider claim amendments. Kirupa Pushparaj (Step) testified about the impact of PTAB on small businesses. Jonathan Rogers (Centripetal Networks, Inc.), whose company’s win in a patent infringement case had been vacated by the Federal Circuit shortly before the hearing, discussed the burden of defending patents against validity challenges multiple times in both the courts and PTAB. He urged that serial challenges should be curbed so patent owners could obtain quiet title. He agreed that the standard for proving validity should be changed to the clear and convincing standard. Joseph Matal (Haynes & Boone, LLP) said PTAB was the most technically accurate forum for reviewing patent validity given the qualifications required of administrative patent judges. Eldora Ellison (Sterne, Kessler, Goldstein, & Fox) suggested several changes based on her extensive experience as a PTAB practitioner. For example, she said PTAB judges needed appropriate resources to do their jobs well and that there was a need to increase consistency across panels, that motions to amend did not work well for patent owners, and that PTAB judges should be better equipped to judge witness credibility via live testimony. Earl ‘Eb’ Bright (ExploraMed) said changes the IPR process, had put existing patents at risk and made venture capital harder to attract. Legislative changes he suggested include creating a standing

requirement, codifying a presumption of validity, and changing the standard for proving invalidity to clear and convincing, rather than the lower preponderance of the evidence standard, to align PTAB with courts.

Witness statements and a live video of the hearing are available on the committee website.

REMEMBERING SENATOR ORRIN HATCH

Finally, the IP community came together this past quarter to remember U.S. Senator Orrin Hatch, who died on April 23, at age 88. Hatch was the longest- serving Republican in the Senate, with a 42-year tenure. For the last few years in office, he was president pro tempore of the Senate. Senator Hatch was a good friend of IPO and the intellectual property community for more than four decades. One of the most influential and knowledgeable lawmakers on IP issues, Senator Hatch was a skilled legislator who was able to obtain passage of many landmark IP bills. He viewed IP as a nonpartisan issue and worked with Republicans and Democrats alike.

Senator Hatch was best known for the Hatch-Waxman Drug Price Competition and Patent Term Res toration Act of 1984, which IPO supported. During the I980s IPO’s highest legislative priority was the Process Amendments Act of 1988, which would not have become law without leadership by Senator Hatch. The American Inventors Protection Act in 1999 was another IPO-supported measure that Senator Hatch championed. He was a warrior in the long struggle to stop diversion of U.S. Patent and Trademark fee income to unrelated government programs. He was well known in the Senate Judiciary Committee for studying the intricacies of complex IP bills and asking probing questions at committee hearings. Senator Hatch was a frequent guest at IPO’s annual National Inventor of the Year awards programs when they were held on Capitol Hill. He could speak eloquently without notes about the incentives that IP provides for creativity and innovation. A songwriter himself, he understood the value of copyright for music and other literary and artistic works. And he sponsored several important amendments to the Trademark Act. Two staff members of Senator Hatch – Randall Rader and Sharon Prost — were appointed to be judges on the U.S. Court of Appeals for the Federal Circuit.

RECENT IP CASE LAW ROUNDUP

By Eric Moran , McDonnell Boehnen Hulbert & Berghoff LLP and IPO Amicus Brief Committee Co-Vice Chair Paul Berghoff , McDonnell Boehnen Hulbert & Berghoff LLP

Greetings!

The most important happening in IP case law last quarter wasn’t a decision from the Supreme Court or the Federal Circuit. It was a brief, specifically an amicus brief filed by the United States in the long-simmering American Axle case. The Supreme Court had requested input from the (then) Acting Solicitor General back on May 3, 2021. More than a year later, on May 24, 2022, the U.S. finally filed its brief. (Practice tip: Though it worked out for the United States, we don’t recommend asking for a yearlong briefing schedule in any of your cases.)

The Government’s brief is remarkable in several respects beyond the time it took to file. The U.S. unambiguously states that American Axle’s claim to a method of manufacturing automobile driveshafts is patent-elig ible and that the Federal Circuit’s contrary holding “is incorrect.” The Solicitor General notes that “[h]istorically, such industrial techniques have long been viewed as paradigmatic examples of the ‘arts’ or ‘process’ that may receive patent protection if other statutory criteria are satisfied.” The brief cites the Supreme Court’s decision in Diamond v. Diehr and points to the patent-eligible claims in that case as “illustrative” of a patent - eligible “process” that includes “a mode of treatment of certa in materials to produce a given result.” The Government asks the Supreme Court to grant certiorari to clarify Section 101 law, an issue “that has fractured the Federal Circuit” and that, according to the USPTO, “has made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent- eligible.” The Solicitor General points out that “because all useful inventions that operate in the physical world depend for their efficacy on natural laws (whether known or unknown), such dependence by itself cannot render [American Axle’s] claim patent - ineligible.” The Government’s brief goes on to argue that the Supreme Court’s decisions in Mayo and Alice “did not intend to endorse a categorical rul e that conventional claim elements should be disregarded in determining whether particular claims reflect an ‘inventive concept,’ or ‘add enough’ to natural laws or phenomena, so as to warrant patent protection.” Quite the opposite, those decisions according to the Government require “holistic consideration” of claims, which “is incompatible with an approach that ignores individual claim elements that are conventional in isolation.”

Editor’s note : As this issue of the Quarterly was being finalized on June 30, the U.S. Supreme Court denied America Axle’s petition for certiorari .

Continuing with all things patent, there were no Supreme Court decisions last quarter and a handful of interesting Federal Circuit decisions but nothing major. In the latest Arthrex opinion, the Federal Circuit

affirmed a decision by the Commissioner for Patents that denied Arthrex’s request for rehearing of the Board’s decision canceling Arthrex’s claims. Arthrex argued that Commissioner Hirshfeld , who was performing the functions and duties of USPTO Director while the office was vacant, was not a presidentially appointed, Senate-confirmed officer, and therefore his decision violated the Appointments Clause and the Federal Vacancies Reform Act. In an opinion authored by Chief Judge Moore and joined by Judges Reyna and Chen, the Federal Circuit disagreed, noting that Supreme Court precedent permits a so- called inferior officer to “perform the functions and duties of an absent presidentially appointed, Senate- confirmed officer on a temporary acting basis.” If you ever needed definitive proof of the panel-dependent nature of outcomes at the Federal Circuit, Novartis v. Accord is it. In response to a petition for panel rehearing, a reconstituted panel reversed the original judgment in favor of Novartis, reaching the opposite conclusion from the original panel. The original panel, in an opinion written by Judge O’Malley and joined by Judge Linn (with Chief Judge Moore dissenting), had upheld the district court ’s finding that Novartis’s claims satisfied the written description requirement. However, by the time the petition for rehearing was considered, Judge O’Malley had retired, and Judge Hughes had taken her place. This time around, the new panel, in an opinion authored by Chief Judge Moore and joined by Judge Hughes (with Judge Linn now dissenting), reversed the original judgment and found that the negative limitation in Novartis’s claims was unsupported by the specification. The facts didn’t change, the law didn’t change, only the judges on the panel did! In Niazi Licensing v. St. Jude , the Federal Circuit reversed the district court’s holding that the claim terms “resilient” and “pliable” were indefinite. In an opinion by Judge Stoll with Judges Taranto an d Bryson, the panel pointed to the examples of resilient materials and pliable materials discussed in the specification and concluded that, taken as a whole, the specification provided “objective boundaries by which a skilled artisan could determine the sc ope of the claims.” In Auris Health v. Intuitive Surgical , the majority opinion (authored by Judge Prost with Judge Dyk) vacated and remanded a PTAB decision finding a failure to prove obviousness based on a lack of a motivation to combine references. The majority decision noted that though “evidence of industry skepticism may play a role in an obviousness inquiry,” it “cannot, standing alone,” preclude a motivation finding. The majority also noted that evidence of skepticism “must be specific to the inve ntion, not generic to the field.” Judge Reyna dissented. In perhaps its most interesting decision, the Federal Circuit vacated and remanded a $2 billion jury verdict in Centripetal Networks v. Cisco because the wife of the district court judge (Judge Henry Morgan from E.D. Virginia) owned some Cisco stock. In an opinion authored by Judge Dyk (with Judges Taranto and Cunningham), the panel held this was an abuse of discretion, even though the district court had upheld the jury’s verdict against Cisco and even though the stock was held in a blind trust. As noted by the panel, absent full divestment of the stock, continued ownership risked “undermining the public’s confidence in the judicial process.” Turning to non-patent IP cases, Tiger Lily Ventures Ltd. v. Barclays Capital Inc. involved the fate of the LEHMAN BROTHERS trademarks following its 2008 bankruptcy filing. Immediately after its famous filing, Lehman Brothers sold businesses and assets to Barclays, including all its LEHMAN BROTHERS marks. Despite Barclays licensing rights to the marks back to Lehman Brothers, Barclays allowed prior LEHMAN BROTHERS registrations to expire. Lehman Brothers continued to use the marks, however, in numerous public-facing transactions, filings, and operations related to its winding up. This Federal Circuit opinion

resulted from appeals from the TTAB’s decision sustaining two oppositions filed by Barclays against Tiger Lily’s applications for the LEHMAN BROTHERS mark and dismissing Tiger Lily’s opposition to Barclay’s new application for that mark. In particular, the Federal Circuit agreed with the Board that Barclays did not abandon its rights in the mark by allowing its prior registrations to expire. Further, the court held that Lehman Brothers’ continued u se of the mark was sufficient to avoid a finding of nonuse, the first element in a claim for abandonment. In Bluetooth SIG Inc. v. FCA US LLC , a trademark infringement action, the Ninth Circuit heard an interlocutory appeal on the scope of the first sale doctrine, under which trademark rights are exhausted upon the first authorized sale of a trademarked product. The lower court granted partial summary judgment to SIG, the owner of Bluetooth trademarks, reasoning that the first sale doctrine is unavailable to FCA as a defense because FCA’s conduct went beyond resales when FCA manufactured vehicles containing Bluetooth-equipped stereo head units. In its per curiam opinion, the Ninth Circuit held that the first sale doctrine applies “when a mark is used to ref er to a component incorporated into a new end product.” Accordingly, the Ninth Circuit vacated the lower court’s grant of summary judgment on the first sale issue. Staying in the Ninth Circuit, in AK Futures LLC v. Boyd Street Distro, LLC , the court interpreted the Farm Act in relation to AK Futures’ CAKE -branded e-cigarette and vaping products containing delta-8 tetrahydrocannabinol (THC) derived from hemp. Delta-8 THC is a psychoactive compound occurring naturally in the cannabis plant in low amounts, while a different compound — delta-9 THC — is the main psychoactive component of marijuana. Here, the appeal centered on whether AK Futures could own valid trademarks for its CAKE products, which hinged on whether delta-8 THC products, and therefore the marks ass ociated with them, were lawful. The court turned to the “clear statutory text” of the Farm Act, which differentiates between varieties of the same plant, marijuana (illegal) from hemp (legal), based on the concentration of delta-9 THC. Finding that AK Futu res’ delta -8 products allegedly contained no more than 0.3% delta-9 THC, the court held the CAKE products legal and eligible for trademark protection and upheld the preliminary injunction against Boyd Street for selling alleged counterfeit products. In Diesel S.p.A. v. Diesel Power Gear, LLC , the Southern District of New York found that a prior default judgment entered by the TTAB precluded relitigation of trademark infringement claims in district court. In 2015, defendant filed a first application to register the DIESEL POWER GEAR mark. Plaintiff opposed based on a likelihood of confusion and dilution with its DIESEL marks, and when defendant failed to respond, the TTAB entered judgment against defendant. In response to defendant’s second application for and continued use of the DIESEL POWER GEAR mark, plaintiff brought this action. In granting plaintiff’s motion for summary judgment on trademark infringement and dilution, the district court concluded that prior TTAB determinations, including default judgments, can have res judicata effect, and, here, found that the prior default judgment involved the same claims as the present suit and acts as a final judgment on the merits. Therapeutics MD, Inc. v. Evofem Biosciences, Inc. involved a trademark dispute between two prescription medical products for sexually active women: plaintiff’s IMVEXXY product (a vaginal insert for treating menopause- caused vaginal pain during intercourse) and defendant’s PHEXXI product (a vaginal gel for the prevention of pregnancy). In denying defendant’s motion for summary judgment in part, the Southern District of Florida found the marks similar despite the PHEXXI mark passing the FDA’s Proprietary Name Review, which found “sufficient differences” between the marks. Interestingly, t he court gave little weight to the FDA’s Phonetic Orthographic Computer Analysis (POCA) score of 59% for

the PHEXXI/IMVEXXY name pair, which was lower than the threshold score of 70% for “high similarity,” finding that 59% might still be high enough to establish a likelihood of confusion for trademark infringement claims. The court also found sufficient overlap between customers of the two products as they are both marketed to and prescribed by OB/GYNs and used by sexually active women. Accordingly, the court concluded that a reasonable jury could find a likelihood of consumer confusion. Girl Scouts of the United States of America v. Boy Scouts of America involved a bitter battle between two longstanding non- profit organizations over the terms “SCOUT,” “SCOUTS,” and “SCOUTING” (“the Scout Terms”). The Southern District of New York granted Boy Scouts’ motion for summary judgment and dismissed Girl Scouts’ claims that the Boy Scouts’ use of the Scout Terms, undifferentiated by gender, is likely to cause confusion. The court first concluded that despite the valid “GIRL SCOUTS” mark, Girl Scouts did not have valid trademarks in the Scout Terms, which the court found to be generic or descriptive terms without secondary meaning associated exclusively with Girl Scouts. The court further held that Girl Scouts did not have a public use argument because Girl Scouts had refrained from or actively discouraged the public ’s use of the word “scout” unaccompanied by “girl.”

We hope to see all of you in September at IPO’s Annual Meeting in LA.

BRAZILIAN CENTRAL GOVERNMENT IS SENTENCED TO SECURE RESOURCES FOR THE BRAZILIAN PATENT AND TRADEMARK OFFICE

By Luiz Edgard Montaury Pimenta , Senior Partner Montaury Pimenta, Machado & Vieira de Mello

The 31st Federal Court of Rio de Janeiro, on April 12, after weighing all the interests at stake, upheld the ABPI - Brazilian Intellectual Property Association requests in a public civil action, which aims to secure resources for the BPTO to properly comply with its activities of examining and granting patent and trademark rights.

For decades, the BPTO has not received adequate resources from the Federal Government to carry out its tasks. By this very recent court ruling, accepting the ABPI’s arguments, the BPTO must present, within 90 days, an updated and detailed diagnosis of the Agency’s operation; measures to be progressively adopted to improve its activities and a detailed planning for its adoption, as well as its respective budget forecast until 2024. The Federal Government, on the other hand, was ordered to allocate to the BPTO the necessary funds for the execution of the adequate planning, transferring them in accordance with the respective schedule approved in the court decision compliance phase. According to attorney Luiz Edgard Montaury Pimenta, partner at Montaury Pimenta, Machado & Vieira Mello, former president of ABPI and in charge for the civil action at the time of its filing with the courts, the budget cut suffered by the BPTO threatened not only its proper functioning, but also that of the industrial property system in the country: “The BPTO is a surplus body and should retain its revenue to cover ex penses and ensure the investments it needs to better serve its users. It is necessary to understand the importance of the Industrial Property sector in the country, and the resources necessary for the BPTO to perform its function of protecting the industrial property system, according to our Constitution. ” The trial court decision was extremely well grounded. The appeals filed are basically reproducing what has already been argued by the Defendants, so no new arguments have been brought to the court of appeals. Although there is a chance that this case be brought to the higher courts for a final decision, as soon as it becomes final and enforceable, the industrial property system in Brazil will have a great opportunity to improve its activities and consequently enable the BPTO to provide its services at a level similar to the ones provided by the top IP offices around the world.

WOMEN IN IP COMMITTEE CORNER: DIVERSITY IN THE EUROPEAN INNOVATION INDUSTRY AND IP PROFESSION WHITEPAPER: THE PATH TO IMPROVING THE STATE OF DIVERSITY IN THE EUROPEAN IP PROFESSION

What motivated you to contribute to the Whitepaper? SF: “Whilst I’ve been very active for the past few years in driving for improved equality, diversity and inclusion amongst those working in the Intellectual Property space (Patent and Trade Mark attorneys, IP solicitors, IP paralegals and the like) the area of diversity in inventors was one I had read a little about, but hadn’t had much involvement in . When I heard that there was a cross committee group at IPO preparing a whitepaper looking into this very issue it gave me the “in” I needed to shine a light on this new area.” - Susi Fish MB: “I was very in terested in working on this whitepaper because I have been very involved in the development of IPO’s Diversity in Innovation Toolkit for the last several years. Working with a great group of IP professionals to see where we are today and how we can improve diversity in the IP profession is a natural fit to the work being done to improve the diversity among inventors.” - Michelle Bugbee Quotes from authors: Cass Dottridge (Cargill), Anna Leathley (Carpmaels), James Signor (Leydig), Hsu Min Chung (HGF), Susi Fish (BWT), Michelle Bugbee (Eastman Chemical Company, Michele Fil (Siemens Energy)

Claudia Stangle, Laura Schaefer, and James Signor of Leydig, Voit, and Mayer attending the IPO Spring Summit in San Diego in March 2022

Addressing the Disparities of Diversity in Inventorship and the IP profession in Europe:

When IPO Diversity & Inclusion (D&I) Committee member Claudia Stangle of Leydig, Voit, and Mayer was asked about diversity metrics in her own firm, her curiosity about >Page 1 Page 2 Page 3 Page 4 Page 5 Page 6 Page 7 Page 8 Page 9 Page 10 Page 11 Page 12 Page 13 Page 14 Page 15 Page 16 Page 17 Page 18 Page 19 Page 20 Page 21 Page 22 Page 23 Page 24 Page 25 Page 26 Page 27 Page 28 Page 29

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