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The Telegraph today reports on the British government’s 'impact assessment document' which examines the likely effects of The Digital Economy Bill ('championed by Lord Mandelson'). Also see the IPKat's earlier report here.
The IPKat, Merpel and the AmeriKat (not to mention Annsley, Birgit, David, Jeremy and Mark) wish all their readers a peaceful, pleasant and prosperous season of winter festivities and look forward to continuing to serve them with lots of exciting IP news, information and comment in the coming year.
them more palatable to the more sophisticated tastes of the 21st century child. According to this article in The Guardian, this is an exercise in 'democratising' what is seen as a posh-to-middle-class brand. The IPKat speculates that the made-over Jemima Puddle-Duck might look something like the picture on the left.
The most recent issue of the UK Intellectual Property Office's Insight carries a fascinating short piece entitled "Patent infringement clearance: What? When? How?" [Whatever happened to 'Why?', wonders the Kat]. The piece, by Ian Hartwell of the Centre for IP Policy and Management, Bournemouth Business School, reports the findings of a survey of UK and German engineering companies. It goes as follows:
"[If you have the good fortune to work for a large patent-owning member of a cartel which has been sanctified by the name of a 'standards setting organisation', you can start cooking your Christmas goose now. If not, read on ...] How much effort should a company invest in trying to avoid patents belonging to its competitors? Should the IP manager investigate competitor patents at an early stage in the product development project and risk wasted effort if the product design subsequently changes? Or wait until the product has been developed before searching for blocking patents? Faced with a blocking patent, should the IP manager try to invalidate, design around or seek a licence? And how much money to spend - there is no point carrying out comprehensive clearance if it leaves no money to bring the product to market. [The range of options is more subtle in reality, since IP managers are constantly able to reassess their position in relation to each piece of information, or response from a third party patentee, as they receive it.]Fumbling around on his browser, the IPKat hasn't been able to track down the full research report, to which the Insight article offers no link. He hopes that it will be available soon, since he thought this to be one of the most refreshingly practical and valuable bits of contemporary empirical IP research that he has seen for a while.
With a view to providing IP managers with more guidance on how to deal with these pressing issues, a survey has recently been completed by Ian Hartwell of CIPPM Bournemouth, himself a former IP manager for Cambridge-based companies Xaar and Cambridge Display Technology and now a consulting European Patent Attorney with Maguire Boss. The study was supported by the Research Fund of the European Patent Office [Well done, EPO: money well spent!].
What?
Based on confidential interviews with the IP departments of ten UK and German companies in the automotive industry [A small and highly-focused sample, in an industry where players and fields of technology are relatively easy to identify: it will be good to run this research again an a less homogenous sector, such as industrial software applications], the survey revealed wide variations in practice. For example, forty percent of the companies surveyed did not consider it necessary to monitor new patent publications in their area of technology. Of those companies that did monitor, most delegated the task to technologists [Do patent attorneys count as 'technologists' for this purpose, wonders the Kat].
Patent office search reports are another source of patent publications and, although the primary purpose of such reports is the assessment of patentability, a majority of IP managers indicated that they also reviewed the claims of any patent documents cited in the report for relevance to the company’s new product development (NPD) plans.
When?
IP managers or professional searchers also carried out dedicated searches for third party patents relevant to a company’s NPD plans. Most dedicated searches were carried out mid-way through a development project, although a smaller number of companies carried out searches at the initial "ideation" stage [Presumably, midway is the point at which the NPD has got to the stage at which the searching is less speculative and more focused].
How?
Where a problematic patent was identified, the preferred action of most companies was to carry out searches to discover earlier publications that might put the validity of the patent in doubt. Only if this was not successful would most companies try to change the design of their product to avoid the patent. Seeking a licence to the patent was a measure of last resort for most of the companies surveyed [This is really sad. It generally costs less to seek a licence, and the nuclear option of going for invalidity remains available if no licence is forthcoming].
However, the survey revealed that, even if relevant earlier publications are found, this does not necessarily lead to the problematic patent being revoked. One tactic, known as "umbrella protection", is for an IP manager to seek a free licence from the patent proprietor in return for not seeking revocation of the patent. Since this free licence is not granted to other companies, the IP manager also gets the exclusionary benefit ("shelters under the umbrella") of the patent [Unless, presumably, another prospective infringer develops a product that cuts across the earlier patent's claims too?].
Commercial approaches
The full survey report paints a picture of an industry where, as a result of swingeing financial penalties for stopping automotive production lines, court injunctions are infrequent and licences are typically available [This makes it look as though the system is working quite well, then]. Consequently, few companies feel the need to pursue a policy of "never knowingly infringing a valid patent", employing more nuanced, "commercial" approaches instead".
If you were thinking of sending your friends at the United Kingdom's Intellectual Property Office a Christmas present, take note: says the IPO:"Please note that our Office at 21 Bloomsbury Street will be closed on 24 December 2009. You will still be able to leave documents (in sealed packages) with the security guard.
This is not an excluded day and as such anything received on 24 December 2009 will get that filing date".
The IPKat has just learned that the World Intellectual Property Organization (WIPO) is conducting a survey to find out how the Lisbon System (based on the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958) might be improved, for the System to become more attractive for users and prospective new members. European trade mark representative organisation MARQUES is preparing a paper to be submitted to WIPO and asks it members to submit any relevant suggestions (not just legal or administrative ones) for its improvement by email here by not later than 15 January 2o1o. If you're not a MARQUES member but still want to comment, you can out more about the survey here.
A keen reader has written in to ask the IPKat the following question: "Are there any jurisdictions in which the co-owner of a patent can license the use of that patent without the consent of the other co-owner(s)?" The Kat knows a fair bit, but he's not that knowledgeable. Suspecting that there may not be many such jurisdictions, he throws the question open to his readers in the hope that they can help him compile a little list. If you know of any such jurisdictions, please post the relevant data below.
So much is going on below the border that it is sometimes easy to forget that Scotland, with its own laws and court system, has a great deal to offer the intellectual property community. The IPKat was therefore delighted to receive a mighty book, Rights of Personality in Scots Law: a comparative perspective, edited by Niall R. Whitty (a visiting professor at the University of Edinburgh) and Reinhard Zimmermann (a distinguished civil lawyer who holds posts in Hamburg and Regensburg). This tome, published earlier this year by Dundee University Press Ltd, is the fruit of a conference held in Strathclye in May 2006. It features contributions by a number of eminent scholars, drawn from several jurisdictions (both common law and civil law, plus that fascinating hybrid, South Africa). 6 of the book's 12 essays have a high-fibre Scottish content, which means that it draws the reader both inwards, into Scots law itself, and outwards into the comparative analyses. Unusually, given that the IPKat is a great IP enthusiast, he found the non-IP essays as compelling as those on his favourite patch. You can visit the book's web page here. At £40 for some 600 pages of hadback scholarship, it must be the bargain of the year.
The existence of last week's ruling of the Court of Appeal for England and Wales (Lord Neuberger of Abbotsbury MR, Jacob LJ and Richards LJ) in Dr Reddy's Laboratories (UK) Limited v Eli Lilly and Company Limited [2009] EWCA Civ 1362 has already been noted on this weblog, but not much has been said about its substance.
*Dr Reddy's first contention essentially meant that every disclosure of a chemical class disclosed every single member of that class. However, it made no sense to say that a generalised prior description disclosed each specific matter which fell within it.The IPKat thinks the Court of Appeal is dead right and welcomes its clarification of the treatment of selection patents which, when he was a kitten, seemed to him to fit most uncomfortably within the criteria of patentability once the preferred class had been identified. Merpel likes the comments made by Lord Justice Jacob on the (ir)relevance of foreign decisions, which you can find on PatLit here.
* What the court had to look for by way of anticipation was an individualised description of the later claimed compound or class of compounds -- which was not the case here.
* To avoid a finding of anticipation, a patent for a compound or sub-class had to disclose something special about the compound or sub-class. It was most unlikely that the courts of any other member of the European Patent Union would pay any attention to English pre-1977 jurisprudence such as IG Farbenindustrie AG's Patents , which the European Patent Office (EPO) itself did not apply.
* It was better to follow the EPO and deploy the objection of obviousness where a patent had in truth made no technical advance. A patent would be obvious if it was founded on no more than an arbitrary selection from a previously disclosed class of compounds. This was because, in such circumstances, the patentee would have provided no technical contribution.
* In this case, by identifying olanzapine and disclosing what it had about its properties, Eli Lilly had not made an arbitrary selection. Accordingly the inclusion of that particular compound in its research had not been an obvious step to take.
* In reaching his decision Floyd J heard evidence from numerous witnesses and was entitled to come to the conclusion which he reached.He hadn't misunderstood the evidence or argument, failed to have regard to relevant evidence, or disregarded relevant evidence.
Come to the Firecraft party -- but be sure to bring your professional representative. That's because there's a new Tribunal Practice Notice, fresh today from the United Kingdom's Intellectual Property Office. It's cutely named TPN 6/2009 Requirement to attend hearings in relation to applications for invalidation where there are grounds of invalidation under sections 5(1), 5(2), 5(3) and/or 5(4) of the trade marks act 1994 [why the initial lower case letters for what the Kat prefers to regard as the Trade Marks Act? Is this the beginning of a new trend towards informality?] -- but you can call it "TPN/2009" for short. According to the rubric,
"In William Evans and Susan Mary Evans (a partnership trading together as Firecraft) v Focal Point Fires Plc [2009] EWHC 2784 (Ch) [briefly noted here on the Class 46 weblog] Smith J, in granting summary judgment, stated:The IPKat thinks this is a good way to ensure that the party losing first time round will at least be saved the wasted expectation of success in later proceedings. Merpel disagrees: how many times since the 1994 Act came into force has re-litigation and estoppel been a problem, she mews. If it happens so rarely, why put parties to the extra expense and possible inconvenience in what should be swift, cheap and relatively simple proceedings for the sake of a might-be in the future? Tufty wonders whether there is an appeal in the offing in the Firecraft case. All the Kats in unison wonder how much consultation there was between the IPO and the trade mark professions and bodies representing trade mark owners in the UK before taking this decision.
"91. I would therefore conclude that there is nothing in those decisions which compels or leads me to conclude that my earlier analysis is incorrect. I am quite satisfied and so determine if necessary that the principles of cause of action, issue estoppel and abuse of process can apply to a second attempt to challenge the validity of a Trade Mark after invalidity proceedings. Although the Hormel case [noted here by the IPKat] dealt with an unsuccessful challenge to validity; the converse is equally true. It cannot be right to allow the Defendant to seek to re-run a successful adverse decision on validity against it."
The effect of this judgment is that an invalidation action before the registrar may give rise to res judicata and that re-litigation between the parties may be an abuse of process. In the above case a decision by a hearing officer that the registered proprietor’s trade mark should not have been registered, as use of it was liable to be prevented by the law of passing-off, gave rise to the granting of summary judgment in favour of the plaintiffs in relation to their claim of passing-off before the court. Smith J distinguishes between oppositions and applications for invalidation. (It was decided by the Court of Appeal in Special Effects Ltd v L’Oréal SA [2007] EWCA Civ 1 [on which see the IPKat here] that an opposition action before the registrar does not give rise to res judicata and that re-litigation between the parties after a decision in an opposition case would not be an abuse of process.)
Smith J's judgment has clear ramifications in relation to the effects of invalidation cases brought before the registry which include grounds under sections 5(1), 5(2), 5(3) and 5(4) of the Trade Marks Act 1994. Owing to the significant consequences that could arise in civil actions for infringement and/or passing-off subsequent to a decision of the registrar, it has been decided that invalidation actions that include grounds under sections 5(1), 5(2), 5(3) and 5(4) of the Trade Marks Act 1994 will be decided following a hearing. Rule 62(1)(c) of the Trade Marks Rules 2008 states:
"62.—(1) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of any proceedings as the registrar thinks fit, and in particular may—
(c) require a party or a party’s legal representative to attend a hearing;"
In relation to the aforementioned cases the parties or their legal representatives will be required to attend the hearing".
Austrian news site Der Standard recently reported on the next chapter in a curious trade mark dispute between an Austrian pumpkin seed oil producer and pharmaceutical company Pfizer over the use of the mark "Styriagra" on pumpkin seed pills.
The IPKat's friend, Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB, Sweden) is known to have some strong opinions on various areas of intellectual property law (see earlier IPKat posts here, here and here). Well, now he's having another rage! This time he writes:
"The more I read about European Trade Mark Law and Unfair Competition, the more confused I get. The latest is this: I read in EU Competition Law in Context, Hart Publishing, 2009 [details here], the following:Good point, says the IPKat, if my return on investment is not diminished by another's activity, why should I worry? Merpel says, I'm not so sure the question is a valid one: a failure to obtain a maximised profit is as much a part of the 'investment climate' as the likelihood of actual damage, is it not?
Nina Korjus, réferendaire to a judge at the General Court of the European Union, has in that book an article called "Unfair Competition and Trade Marks". When it comes to ‘Dilution and free-riding’ she says that there are ‘three types of injury against which Article 5(2) of the [Trade Mark] Directive ensures such protection for the benefit of trade marks with a reputation…’ But when she analyses the LÓréal case [see earlier IPKat posts here and here], she could not find any injury; instead she gives this answer to the outcome of the case in the end of her article (p. 181):
‘Protection of trade mark rights is important not only for the right owners but also for the society as a whole. In fact, it is in the interest of countries to have the strongest possible enforcement mechanism to protect the investment climate and labour markets and also to reduce the loss of tax revenues that are directly affected by the lack of efficient protection against, inter alia, trade mark counterfeiting. Efficient protection of trade mark rights against unfair competition should thus be provided…’
But, one question is still unanswered: if there's no injury in sight, in what way is the ‘investment climate’ influenced by a free-rider?"
Have you booked yet for CLT's Annual Intellectual Property Law Round-Up conference for 2010, which will be upon us on 28 January 2010. The venue is somewhere or other in Central London and IPKat team member Jeremy will be in the chair. To be sure of your booking, or for further particulars of the star-studded programme, click here.
The 1709 Blog asks this morning whether thierry Ehrmann's Abode of Chaos, currently threatened with destruction by a French court, might be able to claim the benefit of copyright protection and, if so, what would be the scope of protection available to it. For further information click here.
The full text of the judgment isn't yet available on BAILII, but the decision of the Court of Appeal for England and Wales in Dr Reddy's Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2009] EWCA Civ 1362 is noted in this morning's Lawtel subscription service. The Court dismissed Dr Reddy's appeal against the decision of Mr Justice Floyd (noted by the IPKat here) not to revoke Eli Lilly's patent for the anti-psychotic olanzapine. Further comment on this decision will appear in due course.
If you've been following the Copenhagen climate talks last week and have been a bit confused by all the name-calling and accusations, you may not have spotted that intellectual property rights have not been explicitly mentioned in the final text of the Copenhagen Accord. For further information see this piece by Tove Iren S. Gerhardsen for the ever-vigilant Intellectual Property Watch.
• Microsoft’s Bing Attacked: Bing Information Design, a small Missouri company, filed a trade mark infringement and unfair competition lawsuit against Microsoft in a St. Louis circuit court last week. The design company offers computer-related illustrations and services and has used the name “Bing” since 2000. In May of this year, the company applied to register “Bing!” as a trade mark. The USPTO initially refused the application, giving the company six months to file supporting documentation. Microsoft, meanwhile, had applied for a trade mark two months earlier in March for the mark “Bing” (sans the exclamation mark). A Microsoft spokesperson stated that “We believe this suit to be without merit and we do not believe there is any confusion in the marketplace with regard to the complainant’s offerings and Microsoft’s Bing product.” For more information see this article in the Seattle Post Intelligencer.
• Monsanto To Let it Grow: In 2014 Monsanto’s patent for Roundup soybean seeds will expire – the first patent expiration on a widely used bioengineered crop. Last week Monsanto sent letters to seed companies and farmers saying that it would allow farmers to continue to grow the Roundup Ready 1 soybeans even after the patent expires. The letter came after previous impressions that Monsanto planned to force farmers to begin using the more expensive Roundup Ready 2 Yield which is under patent. Monsanto’s letters come as the Justice Department has launched an investigation into possible antitrust concerns in the company – concerns which the company states are baseless. The AmeriKat thanks Stephen Kissock for bringing this excellent article in the New York Times to her attention.
• Arretez! Google Loses in France: A French civil court fined Google 300,000 Euros last week for infringing copyright in books by placing them online without permission and ordered them to stop scanning French copyright books. The 2006 action was brought by publisher La Martinère on behalf of French publishers. "This should serve as a real wake-up call for Google, and will no doubt give ideas to other countries who take copyright seriously," said Yann Colin, a lawyer for the publishers. Google said that it plans to appeal the decision. For more information see this article in Bloomberg and this article in the LA Times.
• USPTO creates an App for Pending Apps: The USPTO announced last week that it in effort to reduce patent pendency and increase transparency the USPTO has created an interactive Patent Pendency Model (PPM). According to the USPTO press release, the PPM “enables users to see how both first action and overall patent pendency periods are affected by changes in staffing and filing levels.” The tool, available online, will help users estimate pendency periods using “historical data to make calculations and create graphs of predicted outcomes.” Excel spreadsheets, graphs, and patent pendency – what more could the AmeriKat want for Christmas?! To entertain your friends and family this holiday season please click here to access the PMM.
On Friday, after one of the most hectic pre-holiday weeks she has endured and only three hours of sleep, the Amerikat pushed herself out of bed at 4am to peer outside at the blustery snowflakes dancing their way around the streetlights. Where on any other day the crystalline structures may have induced a feeling of warm holiday spirit, today she only saw them as the last hurdle between her and her flight home. It is safe to say that the holiday spirit, like Bob Dylan, was not in her heart – she was ‘bah-ing’ at the snow, “humbug-ing” at the novice travellers delaying the security queue ("Yes M’aam you do have to take off your solid steel belt to go through the metal detector …") and generally tutting at any reindeer sweater that she was presented with. Exhausted and crabby (should that be tabby?), she boarded her flight to Dallas with only a small hope that it would take off on time. However, a true Christmas commuter miracle occurred: the Boeing 777’s wheels were up on the dot at 10:15am, she had three spare seats to herself, and she slept for an undisturbed five hours. Bounding off the plane in a disgustingly sunny Dallas/Fort Worth, the AmeriKat was now infused with holiday cheer. Back at home and gazing at the twinkle lights glittering her house, the AmeriKat would like to wish you and yours a very happy festive season! Happy Holidays!!! [Says the IPKat, the AmeriKat has been given a week off next week on account of her good behaviour, but he expects her back for the following week, under pain of exile ... to the dog-house!]
Such a move, of course, puts the administration at odds with many US industries including software manufacturers and motion picture associations who have opposed the treaty. Where these industry players are supporting another treaty, the Anti-Counterfeiting and Trade Agreement (ACTA) which would greatly strengthen their copyright protection, the WIPO Treaty would be in effect weakening some of this protection. Comments in response to the US Copyright Office’s Notice of Inquiry regarding the WIPO Treaty were received on 12 November 2009. Steven Metalitz, speaking on behalf of industries including the Motion Picture Association of American and RIAA stated in their Initial Comment that, in referring to the WIPO Treaty:“... among the strategies least likely to advance the goal of increased access by the blind and visually impaired is the path down which the draft treaty points: to begin to dismantle the existing global treaty structure of copyright law, through the adoption of an international instrument at odds with existing, longstanding and well-settled norms."The AmeriKat suggests you read this letter for an entertaining engagement of the US industries with international copyright treaties, specifically Berne’s Three Step test – which as we all know, is not always the most harmonious of unions.
“In reviewing the initial comments, we are concerned that some of the comments are simply stating opposition to a large agenda of limitations and exceptions. We believe this is an unproductive approach to solving what is a discrete, long-standing problem that affects a group that needs and deserves the protections of the international community.”Despite industry concerns Justin Hughes, a Department of Commerce senior adviser, told WIPO on Tuesday that:
“We recognize that some in the international copyright community believe that any international consensus on substantive limitations and exceptions to copyright law would weaken international copyright law. The United States does not share that point of view.”Some people may think that, for a group of US industries that may benefit from one of the most severe copyright protection agreements in modern copyright law (ACTA), it seems to be a pretty a petty harsh stance to be balking at a proposed limited exception to aid dissemination of copyright works for the benefit of the blind and visually-disabled.
That (es)citalopram patent again. Following the IPKat's earlier post on the German Bundesgerichtshof decision on Lundbeck's escitalopram patent, the Kat's plea for an English translation of the German original has been kindly answered by German IP practice Hoffmann Eitle. You can now access the pdf of the translation here.
References to the ECJ. The 1709 Blog records two copyright disputes that have generated references to the Court of Justice of the European Union for a preliminary ruling. They relate to (i) Case C-387/09, which raises various issues relating to 'fair compensation' under the InfoSoc Directive and (ii) Case C-393/09 on whether a graphic user interface ("gui") falls within the scope of a computer program under the Software Directive and, if so, is copyright infringed when it's broadcast to TV viewers who can see it but can't interact with it. The SPC Blog has picked up a reference generated by a dispute over supplementary protection certificates for patents: it's Case C-427/09, a reference from the Court of Appeal, England and Wales, in Generics (UK) v Synaptech (noted here).
Read with the IPKat. The IPKat has just received Release 31 of Sweet & Maxwell's loose-leaf European Patent Decisions, which updates the work to November 2009. If you're a subscriber, check your incoming mail and make sure that yours has arrived too. Also just out is the fifth edition of the Butterworths E-Commerce and Information Technology Law Handbook, of which IPKat team member Jeremy is Consultant Editor. The book was published so swiftly that it came out ahead of its own web page, but if you liked the previous editions so much that you want to buy it on trust, the ISBN is 9781405750295 and the publisher's customer services phone number is +44(0)845 3701234. And here's a book which meets a long-felt need, one which has no current competitors: it's Peter W. Hansen's tome, Intellectual Property Law and Practice of the United Arab Emirates, published from Oxford University Press's New York desk. At US$225 it's fairly priced, given the relatively small and specialist market. Full details available here.
In June of this year the IPKat commented on the Australian decision in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd, where the owners of the trade mark MALTESERS in respect of those tasty little items of confection that kiddies sometimes float in their cold drinks to annoy their parents failed to persuade the tribunal that the defendants' Malt Balls would be confused with them. Well, thanks to Robert Cooper (Mallesons), the Kat can inform his readers that the members of the Full Court of the Federal Court weren't confused either, since they unanimously dismissed the appeal. You can read a short note to this effect on the Mallesons website here. Anyway, the term Malt Balls is descriptive, said the Court. A little like Fur Balls, thinks Merpel.
The IPKat's attention was attracted this morning to the Commission Decision of 17 December 2009 authorising a health claim on the effect of water-soluble tomato concentrate on platelet aggregation and granting the protection of proprietary data under Regulation (EC) No 1924/2006 of the European Parliament and of the Council, which was published this morning on the Official Journal's website. By Article 2 of this Decision,
"The scientific data and other information included in the studies identified in the Annex to this Decision shall be restricted for use for the benefit of the applicant for a period of 5 years from the date of authorisation under the conditions laid down in Article 21(1) of Regulation (EC) No 1924/2006.".This Decision follows an application by Provexis Natural Products Ltd, submitted nearly a year ago in relation to a health claim relating to the effects of water-soluble tomato concentrate (WSTC) I and II on the blood platelet activity in healthy people. The claim consisted of the immediately forgettable phrase ‘Helps to maintain a healthy blood flow and benefits circulation’.
Regulation 1924/2006 of 20 December 2006 on nutrition and health claims made on foods, in effectively conferring protection on data relating to health claims, is part of the vast and growing body of European intellectual property law and, a little embarrassed, the Kat must confess that he missed it at the time of its passage. He wonders whether his readers, through their commercial activities or academic pursuits, have any experiences or insights as to the working of this Regulation and as to how it compares with the provisions relating to data exclusivity in the pharmaceutical sector.
A tricky issue relating to the protection of rights in confidentiality versus freedom of speech was the subject of a lengthy and somewhat repetitive decision of the European Court of Human Rights (Judge Garlicki presiding, Judges Bratza, Bonello, Mijovic, Bjorgvinsson, Bianku and Poalelungi, and L Early) this Tuesday in Financial Times Ltd and others v United Kingdom (App. No. 821/03). * Even though the disclosure order had not been enforced, that had not removed the harm since, however unlikely such a course of action appeared, the order remained capable of being enforced. It followed that that order constituted an interference with the newspapers' right to freedom of expression.* On the basis that there was such an interference, it was next necessary to examine whether the interference was justified under Article 10(2).* The interference was one which was 'prescribed by law' within the meaning of Article 10(2). It was intended to protect the rights of others and to prevent the disclosure of information received in confidence, both of which were legitimate aims.* Since the aims of the interference were themselves legitimate, it next had to be asked whether that interference was necessary in a democratic society.* Freedom of expression was one of the essential foundations of a democratic society and the safeguards guaranteed to the press were particularly important. Further, protection of journalistic sources was one of the basic conditions for press freedom. Without such protection, sources might be deterred from assisting the press in informing the public on matters of public interest. As a result, the vital 'public watchdog' role of the press might be undermined and the ability of the press to provide accurate and reliable reporting might be adversely affected.* Having regard to the importance of the protection of journalistic sources for press freedom in a democratic society and the potentially chilling effect that an order for disclosure of a source had on the exercise of that freedom, such a measure could not be compatible with Article 10 unless it was convincingly justified by an overriding requirement in the public interest.* It was for the national authorities to assess in the first place whether there was a 'pressing social need' for the restriction and, in making their assessment, they enjoy a certain margin of appreciation. However in this case the national margin of appreciation was circumscribed by the interest of democratic society in ensuring and maintaining a free press. That interest would weigh heavily in the balance in determining whether the restriction was proportionate to the legitimate aim pursued.* Limitations on the confidentiality of journalistic sources called for the most careful scrutiny by the Court, whose role was not to take the place of the national authorities but rather to review the case as a whole, in the light of Article 10, and consider whether the decision taken by the national authorities fell within their margin of appreciation. The Court thus had to look at the interference and determine whether the reasons adduced by the national authorities to justify it were 'relevant and sufficient'.* Article 10 protected a journalist's right, and duty, to impart information on matters of public interest so long as he was acting in good faith in order to provide accurate and reliable information in accordance with the ethics of journalism.* Disclosure orders had a detrimental impact not only on the source in question, whose identity might be revealed, but also on the newspaper against which the order was directed, whose reputation might be negatively affected in the eyes of future potential sources by the disclosure, and on the members of the public, who had an interest in receiving information imparted through anonymous sources and who were also potential sources themselves.* The public perception of the principle of non-disclosure of sources might suffer no real damage where it was overridden in circumstances where a source was clearly acting in bad faith with a harmful purpose and disclosed intentionally falsified information. However, the courts should be slow to assume, in the absence of compelling evidence, that those factors were present in any particular case.* Given the multiple interests in play, the conduct of the source could never be decisive in determining whether a disclosure order ought to be made but would merely operate as one, albeit important, factor to be taken into consideration in carrying out the balancing exercise required under Article 10(2).
Thanks to the European Patent Office's presence on Twitter the IPKat can inform his readers of the latest version of things-to-come regarding the Community patent. According to the EPO webpage headed "EU Council agrees on next steps regarding the Community patent (EU patent)" the Kat-- who has not visited this topic since 5 December -- learns as follows:
"At the last [probably not the last, but certainly the latest] Competitiveness Council on 4 December 2009, Ministers reached agreement on a number of key elements constituting the future EU patent system.
Ministers agreed on:
* a draft Regulation on the EU patent - General approach;
* a set of conclusions on the features of the envisaged unified patent litigation system
* the arrangements related to the renewal fees and their distribution for the EU patent
* a system of Enhanced Partnership between the EPO and central industrial property offices.
The substance of the agreed package as set out above comprises neither the translation arrangements for the EU patent [that information could be inferred from the use above of the word 'agreement' ...] nor the details of the EPC revision necessary to accommodate the EU patent [The IPKat feels tempted, when the time comes, to run a competition to see who can offer the most succinct and elegant revision; he's sure his readers could do a great job of it].
With the entry into force of the Lisbon Treaty, the European Union replaced and succeeded the European Community and has been endowed with legal personality. Therefore, the Community patent is now called the "EU patent" and the "European and Community Patents Court (ECPC)" has been renamed the "European and European Union Patents Court (EEUPC)" [Ugh. The IPKat hopes the EU never renames him].
The European Patent Office supports the creation of an EU patent and the establishment of a ... EEUPC, and sees the decisions taken at the recent Competitiveness Council as a promising step forward, although it remains difficult to assess when this will translate into an operational system [Another translation problem, but less politically loaded than the usual one].
Draft Regulation on the EU patent - General approach
The draft Regulation on the EU patent mainly deals with post grant issues, eg. the effects of the EU patent, compulsory licences, or the lapse and invalidity of the EU patent. The translation arrangements are no longer part of it. As a next step, the European Parliament will now have the opportunity to debate the EU Patent Regulation via the co-decision procedure (now referred to as "ordinary legislative procedure" under the Lisbon Treaty).
The basic concept underlying the future EU patent system is that the EU accedes to the European Patent Convention (EPC) and that the EPO grants EU patents. Such patents will be European patents having unitary effect in the territory of the European Union [That's the easy bit].
Revision of the EPC
On the basis of this concept, a revision of the EPC is necessary to put up the EU patent and to allow the EU to accede to the EPC. Issues such as the voting rights of the EU, the establishment of a Select Committee of the Administrative Council or the parallel designation of both the EU and its Member States in a European patent application will also have to be regulated in the EPC. The outcome of a EU patent related revision conference (Revision Act) will then have to be ratified by all EPC Contracting States (36 at present). ... the EPC 2000, which was revised in November 2000 at a Diplomatic Conference comprising only a fraction of the present EPC Contracting States, only entered into force on 13 December 2007, which gives an idea of the time-frame for the realisation of the present endeavour should it finally come to pass [Not sure: the delay here struck the Kat as being the consequence of low-priority apathy rather than high-priority vigour. Different considerations surely apply now.].
Translation arrangements
The Lisbon Treaty (Article 118 TFEU) has provided a new, specific legal basis for the creation of unitary intellectual property titles within the European Union. ... unanimity is still required for deciding on the language arrangements of such titles (and consultation of the European Parliament), all the other aspects thereof shall now be decided upon by qualified majority under the ordinary legislative procedure (co-decision procedure).
... the EU Council conclusions now propose that the translation arrangements for the future EU patent be dealt with in a separate Regulation. This obviously aims at focusing the future discussions on the language regime. As a next step, the European Commission will have to elaborate a proposal for a Regulation on the translation arrangements. It is unclear whether under Spanish EU Presidency a proposal will be presented [The Spanish have been characterised both as a block on progress and as valiant fighters for the protection of the interests of a large Spanish-speaking non-EU interest]. The future translation arrangements would have to be adopted by the Council acting unanimously [Good news for the Maltese?].
According to the EU Council conclusions, it is foreseen that that the EU Patent Regulation comes into force together with the separate regulation on the translation arrangements for the EU [... or not at all?].
The Council Conclusions in detail
Renewal feesTFEU here
.. Select Committee of the Administrative Council should, once the Regulation on the EU patent enters into force, fix both the exact level of the renewal fees and the distribution key for their allocation. It is foreseen that the EPO retains 50% of the renewal fee income.
Enhanced Partnership
... the Enhanced Partnership ... should enable the Office to make regular use, where appropriate, of the result of any patent search carried out by a central industrial property office of the EPC contracting states on a national patent application, the priority of which is claimed in a subsequent filing of a European patent application. Such utilisation should be carried out in accordance with the already established utilisation scheme of the European Patent Network (EPN) among the EPC states. The Enhanced Partnership should be based on a European Standard for Searches (ESS), containing criteria for ensuring quality which are based on the agreed quality systems of the EPN. In addition to searches, the ESS should include standards on inter alia training, tools, feedback and assessment.
Main features of the ... EEUPC
The EEUPC would be established by a "mixed agreement"" (i.e. the competence to negotiate and conclude the envisaged agreement would be shared by the EU and its Member States) between, on the one side, the EU and its Member States and, on the other side, non-Member States which are Contracting States of the EPC.
The envisaged international treaty would establish a patent court system which has exclusive jurisdiction in respect of infringement and validity issues concerning European and EU patents. The EEUPC would comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance would comprise a central division, as well as local and regional divisions in the contracting states to the agreement.
There are many outstanding issues regarding the unified patent litigation system which remain in dispute, such as the composition of the panels, the competence of the divisions of the Court of First Instance, the notion of technical judges, or the language arrangements.
In June 2009, the Council submitted a Request to the European Court of Justice (ECJ) on the compatibility of the draft Agreement with the EU Treaties. The judicial review of the ECJ takes place before the conclusion of the agreement and is given in the form of an opinion. The opinion is expected at the earliest by summer 2010 [This is useful information. The Kats have taken turns to look for it almost daily since they learned of the Request] ..."
Some people have unkindly suggested that the harmonised IP laws of the European Union bear the same relationship to real law as the paintings of Salvador Dalí occupy with regard to reality. 1. Can France, subsequent to [Directive 2001/84 on the resale right for the benefit of the author of an original work of art], retain a resale right allowed only to the heirs to the exclusion of legatees or successors in title?
2. Do the transitional provisions of Article 8(2) and (3) of [Directive 2001/84/EC] of 27 September 2001 allow France to have a derogation?
"Directive 2001/84/EC of the European Parliament and of the Council on the resale right for the benefit of the author of an original work of art does not preclude a national rule under which, after the author’s death, entitlement to the resale right passes only to heirs at law, to the exclusion of legatees or successors in title".Regarding the first question, the Advocate General concluded that the Directive does not define ‘those entitled under’ the artist after his or her death, but leaves that definition to national law and, by implication, to national succession law. Since differences between national legal systems which cannot be expected to affect the functioning of the internal market may be left intact, there is no uniform category of ‘those entitled’: Member States can therefore adopt or maintain any definition which cannot be expected to have such an effect. If this analysis is correct, the second question doesn't need an answer. In any event, (i) the derogations in Article 8 are expressly available to Member States which did not apply the resale right on 13 October 2001 and France, which did apply the resale right on that date, cannot benefit from them, and (ii) those derogations only allow Member States not to apply the resale right for the benefit of those entitled under the artist; they do not concern the question of application to only a restricted group of beneficiaries.
Not content with solving all known legal, economic, social and cultural issues arising out of intellectual property rights, the World Intellectual Property Organization (WIPO) is now tackling climate change. According to today's press release ("WIPO Outlines How It Can Help Meet the Challenges of Climate Change"):"WIPO Director General Francis Gurry participated on December 16, 2009 in a series of events related to international climate talks in Copenhagen and outlined how WIPO can contribute to international efforts to mitigate climate change. Mr Gurry underlined that policies that stimulate the creation and diffusion of technology are key elements in developing an effective and practical global response to the threats posed by climate change [This statement is true, but in a way so is its opposite. The same policies have stimulated the technologies that caused the threats in the first place]. He said judicious use of the intellectual property (IP) system can make a positive contribution in crafting the many and diverse technological solutions needed to attenuate the impacts of climate change [so long as those solutions aren't business methods or other excluded patentable subject matter ...].The IPKat is pleased to see WIPO taking the initiative and advocating the positive uses to which IP can be directed. This is much better than waiting to defend the usual assaults from well-meaning but often
Speaking at a side event on the theme “International Cooperation on Technology Transfer: Time for Action,” Mr. Gurry said achieving a transformation from a carbon-based society to a carbon-free one is a complex and unprecedented task that will require innovative and complementary approaches to technology policy [WIPO has already implemented a shift to a less carbon-dependent policy, by cutting Merpel off its list of Christmas card recipients].
Intellectual property (IP), he said, has an important role to play in technology policy - encouraging investment in the creation of environment-friendly technologies and their rapid dissemination are major policy objectives to which priority must be given. In both cases, the IP system, and in particular patents, are fundamentally important in that they provide a stimulus for investment in green innovation and contribute to a rapid – and global – diffusion of new technologies and knowledge [This is important: the impending death of a planet is a stimulus to survive through change, but IP is a stimulus to invest while there's still time].
Green innovation requires significant private investment. An effective patent system provides an incentive for businesses to make such an investment by making an invention a tradable good which can be licensed or assigned creating opportunities for technology partnerships and commercial return. Effective patent protection can thus spur international technology transfer from the private sector [The IPKat remains amazed at how poor, overall, has been the apparent record of the public sector in investing in the critical technologies over the years].
Mr. Gurry said the patent system provides the most comprehensive public repository of information on the latest technologies – as all patent documents are published and freely available to the public [It's good to remind people of this]. This information contains knowledge that already exists and which can support the development of new technologies or help to identify technologies that are off-patent or no longer protected and therefore freely available for use or adaptation. It is necessary to ensure that this information is widely disseminated for instance through tools and services that enhance access to up-to-date information on relevant technologies through patent information resources. ...".
ill-informed critics who view the innovation process with a degree of hindsight that makes it difficult for them to see how risky it can be to develop any new product or process.
Star Wars is a science fiction movie franchise which is famous for its sequels. The IPKat notes, however, that life has a funny habit of imitating art. Accordingly, when Mr Justice Mann delivered his blockbusting 280-paragraph judgment in Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd [2008] EWHC 1878 (Ch) in July 2008, it was almost inevitable that the dark forces which brought this legal battle from the US courts to the Chancery Division for England and Wales would launch a further sequel before the Court of Appeal -- whose judgment was handed down today.The Court of Appeal (Lords Justices Rix, Jacob -- who gave the judgment to which all three judges contributed -- and Patten) dismissed Lucasfilm's appeal but allowed Ainsworth's in part. As the final paragraph of the 53-page decision conccludes:* while there were no hard and fast rules for determining whether an object was a sculpture for the purposes of copyright law, various factors must be considered. These included the normal understanding of the word "sculpture" and the fact that it was part of the essence of a sculpture that it should have a visual appeal in the sense that it could be enjoyed for that purpose alone. It did not matter that the object in question had some other use. Even so, none of the items of uniform in this case were "sculptures" since they lacked the necessary quality of artistic creation.
* the objects in dispute were not works of artistic craftsmanship since it was no part of their purpose that they should in any way appeal as a piece of art [This conclusion was not the subject of appeal, much to the disappointment of the IPKat who never tires of reading judicial pronouncements on this point]. Even if the copyright in the designs vested in the claimants, section 51(1) of the Copyright Designs and Patents Act 1988 barred any copyright claim since it provided that "It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design".* it was well established that a foreign judgment against an individual would be enforced by the English courts if that individual had manifested a sufficient physical presence in the foreign court to justify the conclusion that he had rendered himself amenable to that foreign court, or that he owed some form of allegiance necessary to make it right that he be treated as amenable. Enforceability of a foreign judgment could not be established merely by showing that the individual was trading into that foreign country by remote means such as the internet, no matter how extensive the trading. This being so, the judgment of the US court was not enforceable against Ainsworth.
* there was no absolute bar against an English court hearing an action to enforce a foreign copyright in respect of infringements that took place abroad. The English courts could, and in appropriate cases should, determine at least the question of infringement of foreign copyright. In this case, the court should exercise that jurisdiction. The factual issues in the US action were essentially the same as those arising in the UK, the only specifically US copyright law issue being whether Ainsworth could raise a "functional/utilitarian objects" defence. On the evidence, that defence was bound to fail.
"There was no copyright in any sculpture. Nor could it enforce its US judgment. Mr Ainsworth’s cross-appeal, on the other hand, partly succeeds and partly fails. It succeeds to the extent that we reject the judge’s direct enforcement of US copyright. In the circumstances, there is no financial remedy for Lucasfilm to compensate it for the modicum of selling which Mr Ainsworth has managed to achieve into the US: but Mr Ainsworth is aware that were he to seek any further selling into the US, he would be in breach of its copyright laws".Paragraphs 18 to 98 provide a lucid if lengthy summary of (among other things) the history of the interplay of copyright and design concepts in the protection of designs, sculptures and mass-produced objects incorporating aesthetic designs, as well as the mysteries of sections 51 and 52 of the Copyright, Designs and Patents Act 1988 and the limiting of copyright protection where design law applies.
"184. Mann J thought there was international jurisdiction. He said:The IPKat wonders whether we have heard the last of this dispute. Given the importance of the principle at stake, the uncertainty surrounding it and the fact that the Supreme Court's judges have not yet been given the chance to relive the fond memories of Star Wars within the sternly objective confines of judicial analysis, he thinks there may be room for another sequel ...
[266] I am therefore prepared to conclude that an English court can, and in an appropriate case should, determine at least questions of infringement of foreign copyright cases. Those cases will include cases where subsistence is not in issue. I would not, however, hold that questions of subsistence can never be decided here. In land cases incidental questions of title can apparently now be considered. I can see no reason why the same should not apply to copyright.
185. He recognised that there may be cases where there were public policy reasons why they should not be heard here. He resolved that problem by saying it could all be dealt with by the application of forum non conveniens. With respect we do not agree. We think there are real problems if this doctrine comes into play. Take this case. Mr Ainsworth sold a small amount to the US. Should jurisdiction be assumed here because he did not go to the enormous expense of going to the US to defend himself there? We do not see why. Other cases could be much more complicated. Suppose for instance there are competing parallel cases in several countries. Who is to decide which cases proceeds and the others not (or do they run in parallel)? The problems are potentially much more complex than the sort of case involving a claim on a contract where the issue is whether the case should be held in one jurisdiction or another. In the case of the international enforcement of copyright many jurisdictions could be involved at the same time and there could be a mass of disputes in different courts about where a case should be heard".
The European Union has ratified the misnamed “Internet Treaties” - the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) - which establish the basic standards of protection for copyright and related rights in the digital environment. The IPKat looks forward to real internet treaties, which deal with matters of liability, jurisdiction, cloud computing and the parameters of infringement full-on.
"... this convenient volume updates its coverage of Danish intellectual property law, with continued emphasis on developments and trends connected with electronic and broadband media and the process of internationalisation in this burgeoning area of business and economic law. It provides a clear overview of the field, and, at the same time, offers practical guidance on which sound preliminary decisions may be based. The author expertly discusses all legally salient facets of the protection of copyrights, patents, trademarks, trade names, trade secrets and confidential information, utility models, industrial designs, chips, and plant varieties. Due attention is paid to the weight given in Denmark to the ownership and transfer of intellectual property rights, registration procedures, limitations and exemptions, and remedies for infringement. For a broad, reliable understanding of Danish intellectual property law, this new edition of Intellectual Property Law in Denmark is the ideal quick reference book for both practitioners and students".
"Exploring the Reform Agenda: An Expert Taskforce on Global Knowledge GovernanceThe global intellectual property (IP) rules that govern trade in knowledge-related goods and services have become a source of profound tension. These tensions over global knowledge governance have fundamental implications for our response to some of the most pressing global challenges of our time – from climate change to human health and the eradication of poverty. To illuminate the core principles and challenges at stake, and amidst continuing calls for reform of processes and institutions through which these rules are created and applied, GEG has convened an Expert Taskforce on Global Knowledge Governance".
The IPKat warmly salutes the World Intellectual Property Organization's decision to place the whole of the inaugural issue of The WIPO Journal online for the delectation of interested readers and, presumably, to act as bait for prospective subscribers. You can see all 154 pages of this new journal here.
The IPKat seems to somehow have missed the latest installment in the series "is Lundbeck's escitalopram patent valid?" (it should be properly called by now "are the SPCs based on that patent valid?", as the patent term has expired). As previously reported, the product claims of this patent had been declared invalid by Mr Justice Kitchin at the High Court in a judgment of 4 May 2007. The method claims were deemed valid. The Dutch first instance court had invalidated all the claims of the Dutch part of the patent in a judgment of 8 May 2009 for lack of inventive step.
Here's a little news of enlightened self-interest. The World Intellectual Property Organization has happily announced that Italy has given it an extra-budgetary contribution of €1 million, to cement good relations between the UN agency and the home of some of the world's tastiest geographical indications. Fortunately there are no strings attached to this gift, which is said to reflect "... Italy’s commitment to consolidating and reinforcing its contribution to the activities of WIPO since the establishment of a funds-in-trust (FIT) program in 2007 to cover IP-related activities in developing countries and countries in transition".It's not clear to the IPKat whether Italy counts as "developing" or merely "in transition, but
"Part of the funds announced by Italy will support the development of a Global IP-Based Entrepreneurship Program, an interdisciplinary pilot training program which would initially be hosted by an Italian University. The program will rely on the case studies of successful use of the IP system by SMEs in the OECD countries, notably Italy".
As of Thursday 10 December, the .eu domain has become available not only to those of use who use conventional Latin letters but to those who employ Greek and Cyrillic. According to OHIM we can now expect to see such truly (non)harmonised domains as www. διαδίκτυο.eu or www.роуминг.eu -- though many of us would prefer to click on them rather than sit there saying, "Ctrl Alt and er, ... what?" all the time.If you know the answer, please don't email -- just post it below.1. AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle);
2. ECTA (European Community Trademark Association);
3. FICPI (Fédération Internationale des Conseillers en Propriété Industrielle);
4. INTA (International Trademark Association);
5. Union of European Practitioners in Intellectual Property.
copied its 2008 Dove TV ads. Mars claims the Bliss ads (right) use the Dove ads “image of a silky scarf-like image, a pillow shapeemerging from a pool of chocolate, a series of laudatory words displayed in a distinctive white and gold cursive script…[and] an image of the head and shoulders of a smiling woman with long brown hair.” Sounds like every chocolate ad the AmeriKat has ever seen. Mars is also claiming that two former Mars employees who worked on the Dove advertising campaign were hired by Hershey to create their Bliss commercials. For further information see this article in Bloomberg.
Google and Microsoft sued to the same tune – Last week a small music label, Blues Destiny Records, filed a copyright infringement suit in Florida against Google and Microsoft for allegedly “facilitating and enabling” the illegal distribution of their copyright songs. Blues Destiny claims that Germany-based file sharing service, RapidShare, benefits from ad relationships with Microsoft and Google.The claim states that “RapidShare generates revenue by selling subscriptions for its high-speed download services, and through advertising dollars generated by its advertising partnerships with Google and Microsoft. RapidShare's business success is accomplished only with the knowing assistance of these two top search engines - Google and Microsoft's Bing (see above photo)." Blues Destiny claim that RapidShare is able to “achieve consistent prominent ranking in search engine results” due to the links with Microsoft and Google. Because of the ‘knowing’ element claimed in the suit, Blues Destiny alleges that the defendants cannot avail themselves under the US copyright law which exempt companies from liability for merely linking to infringing content if they are unaware of this and do not receive financial benefit. The AmeriKat believes it is unlikely that this suit will gather much speed given the difficulties of proving the ‘knowing’ factor with internet hyperlinks. For further information please see this article in the Examiner.
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