The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 29 June 2007

Friday follies

IPKat team blogger Jeremy has just acquired some new colleagues. According to yesterday's Legal Week, Holborn-based law firm Olswang (where he spends two days a week) has taken over a five-strong intellectual property team from Kilpatrick Stockton, led by high-profile department head Helen Newman (right). Olswang's IP department now has 14 partners, 34 additional fee earners and 0.4 Kats. Helen has acted for BACARDI and MARTINI, but is reputed to have acted for some non-alcoholic clients too ...

Writing in the UK Intellectual Property Office newsletter Insight, Miles Rees, Business Development Manager of the UK-IPO, says: "IP is the glue that holds innovation together". No stranger to the art of the metaphor, the IPKat nonetheless wonders whether this is the right one. The functionality of glue lies in its ability to gum things up, which (a cynic might say) makes it an apt IP metaphor for a civil servant to choose. The IPKat prefers oil: IP is the lubricant that enables innovators, investors, manufacturers and consumers to rub along without too much friction - it being competition law that provides the glue. Merpel says, how about some other metaphors, based on IP being like blood, milk, whisky, Sunny Delight or any other liquid you care to name?

Chef Sues Over Intellectual Property (the Menu), runs the title of a story in the New York Times dug up by the diligent Miri Frankel. The story relates how successul restaurateuse Rebecca Charles - who opened the Pearl Oyster Bar in the West Village a decade ago - has had to accommodate herself to the arrival of a string of restaurants she considers “knockoffs” of her own. She is now suing the proprietor of Ed's Lobster Bar for theft of her intellectual property. The report, with unconscious irony, says Ms Charles' Pearl Oyster Bar was itself inspired by the Swan Oyster Depot in San Francisco, adding:

"My restaurant is a personal reflection of me, my experience, my family. That restaurant is me".
'nuff said.

EPLA or bust? Robin Jacob speaks out

EPLAW, the European Patent Lawyers Association, was formed in 2001 "with a view to promote the equitable and efficacious handling of patent disputes in Europe and to strengthen the links between lawyers having relevant litigious experience in patent law in Europe". The Association held a conference this week in Munich. Among the speakers was Lord Justice Jacob, who gave a paper entitled "The Judge’s Perspective", the subject of the perspective being the resolution of Europe's horrendous patent litigation problems.

It is rare for the IPKat to post an entire document of this length; it is even rarer for the Kat to withhold his comments. However, he thinks that this paper is an excellent summary of the live issues faced by patent litigants and of the way an experienced appellate and trial judge, and former advocate, envisages how they can be dealt with; on this basis he doesn't want to distract readers by interposing his own observations - though IPKat comments will doubtless follow in the near future. In the meantime, readers are highly welcome to post their own comments below.

Since Sir Robin has kindly permitted the IPKat to post his paper in full., here it is:

Is there a single “Judge’s perspective"?

The uninformed outsider might think, from general belief, that there is basically just one big legal divide in Europe: that between the common law and the so-called “continental” traditions. Not so. European Patent Judges come from a wide variety of very different legal traditions. Civil procedures are very different, one from another, not just as between the common law countries but right across Europe. The very legal cultures of different European countries are different one from another. Our legal professions are organised differently. And all this is even before you take into account language differences.

So you might expect the answer – no, there is no single Judge’s perspective. And that is what I would have expected too – until I came to know and respect my fellow patent judges in Europe. The EPO set up the biannual meeting of patent judges. I have been to most since I became a Judge in 1993. More recently the EPO has also jointly, with the European Patent Lawyers’ Association, sponsored conferences of judges and practitioners in Venice.

Much has come of this. I believe that those judges who frequently decide patent cases, whether they are full career judges or those, like myself, who became judges after a long career as a patent lawyer, have come to realise that we can not only work together but would like to do so – to produce a more harmonised and efficient and decisive system for Europe.

Our co-operation in Venice to produce draft principles for the rules of a new EPLA Court demonstrates that this can be achieved.

We are, uniformly or almost uniformly of the view that the way forward is EPLA and not via some sort of EU Court. I will explain why below.

The users’ perspective

The users’ perspective is not a politician's. An English poet, Alexander Pope, once wrote:

“For forms of government let fool’s contest,
What’s best administered is best.”

That is the view of the users. What they want is a simple, cheap and predictable system. That is why the EPO opposition system as it stands at present is failing the users. That is the reason why you do not hear industry saying: “please attach a patent court to the EU judicial system.”

Right: Sir Robin, at a recent IP event in Central London

I will be frank: I do not think the EU court is a suitable place for patents to go. There is no need, and no point, save one for politicians, not users. Unless there is an EU proposal which achieves all of the key requirement, the thing will not work. The key requirements are:

(a) Keep the ECJ out of substantive patent law – it not suited for this (and probably does not want it);
(b) Speed (another reason for (a) – the ECJ has so much work it could not produce results quickly – yet industry needs to know where it stands and cannot wait years for an answer;
(c) Cheap as possible language regime – one in practice designed for the case in hand
(d) Experienced patent judge on the panel
(e) Local presence
(f) No possibility of forum shopping
(g) An effective way of dealing with technical understanding and dispute.

How we got here

The European Patent System is unfinished business. That business started in the Council of Europe in the 1950s. By 1963 the outline of what was to become the EPO was well in place – but there was nothing about a judicial system.

Time after time proposals were put forward – the 1975 CPC, the 1988 revision, various proposals from the Commission, the more recent “common political approach.” None were based on the proposition we should look for what industry wants. None were based on the use of existing judges. All were essentially theoretical. Above all none of these ideas were practical. So they all failed – as will all other similar ideas.

The problem

The problem is the patchwork nature of the existing system – with various results from various countries at disparate speeds. And the corresponding need to draft a patent for use everywhere and to take advice in lots of countries. Not good for a common market. Only last Friday I handed down a judgment agreeing with the judge below, who had disagreed with a German infringement court. I agreed with a French court in Rennes (Pozzoli v BDMO SA ([2007] EWCA Civ 588). The German validity court has yet to decide the case. Appeals lie in all the jurisdictions, save probably the UK where, unless the House of Lords decides to take the case which is very unlikely, it is over.

Why did the patentee have to sue in three jurisdictions? It is not good for Europe. In some cases market conditions are such that winning in one is enough to win for the whole of Europe because it is not possible to isolate sales in a particular country.

It is important here to recognise that cases are not certain. Yes we all try to reach the “right” result. But in reality there is no so such absolute thing. Most cases we do not see are predictable – if the alleged infringement is bang with the claim or the invention is clearly disclosed in a prior document there is no problem – and there is unlikely to be any litigation. But what judges normally get are the cases which could go either way. Different answers are possible – and all the more so if you use different methods of evidence gathering. What is needed is one result – reached by as good a practicable method as can be devised. And reached soon – it is generally better for commerce to have an early “wrong” answer than a much later “right” one.

Possible solutions

1. Stay as we are
2. Stay as we are but allow cross-border actions
3. An EU solution

Why staying as we are will not do

I have already described the current situation. Most of industry is agreed that it is far from good for European industry. Note that I put that way. It would not matter if it worked well enough for industry’s needs, no matter how untidy it might look to civil servants and politicians.

But there is no point in changing unless we can produce something better.

Why cross border injunctions will not do

As is well-known the Dutch courts started this practice of enforcing patents granted in other countries. The Court of Justice put an end to it (or virtually so) with Gat v Luk. I am glad, for I do not think cross-border assertion of IP rights is appropriate:

(1) It leads and led to forum shopping of the worst kind – people 10 years ago were in practice saying “let this go to Holland”, they have the kort geding and are pro-plaintiff. Jan Brinkof, when still a judge, described some Dutch lawyers, then drumming up business around the world, as “Rambo lawyers.”
(2) It actually represents an interference by the courts of one state in what is the affair of another state. This has profound implications. Many would say it is no business of foreign courts to make orders closing down factories in my country.

Recently a number of academic lawyers in Europe, partly based around some, but not all, at the Max Plank Institute, have proposed an amendment to the Recognition and Enforcement of Judgments Regulation so as to allow cross-border jurisdiction in patents. Similarly, in Voda v Cordis, academics in the US urged the Court of Appeals for the Federal Circuit to decide that US courts had “long-arm” jurisdiction over foreign, including European patents. I am afraid they are wrong. It is all part of the keep things tidy approach which ignores, because it has no or little experience of, the practical implications.

Why an EU solution is neither necessary or desirable

As I have said attempts to go this way are very old – never driven by industry. What are the problems?

(1) Language – Any system which requires use of many languages will not do
(2) Unsuitability of procedure. The EU courts are essentially structured to deal with questions of law. Fact finding and deeply technical questions are not readily bolted on to it.
(3) This has proved to be so in the case of trade marks. With the greatest of respect the ECJ and the courts of first instance have not done well in trade marks. Things are much too slow; there is much uncertainty. Being blunt: if this is what the system produces for trade marks who would give patents to it? I wish to make it clear that this is not a general criticism of the ECJ. When it comes to most other fields, it is my experience that it produces clear and helpful judgements – for example its VAT judgments in my opinion are better and clearer than those in my own country!
(4) Delay. You only have to look at how long things take to realise that adding more work for the court will not help.
(5) Inexperienced patent Judges. This is important. It is a basic EU rule that you cannot be a national judge and an EU judge at the same time. Unless that rule is changed it will not be practicable to use the developed expertise of the national patent judges of those European countries which experienced patent judges. Who would trust their litigation to inexperienced judges? – none save those who have rotten cases.
(6) Inflexibility – a seat in Luxembourg is not appropriate for a Europe wide jurisdiction of this sort – and the court would necessarily have all the bureaucracy which goes with being attached to a much larger system.

I pause to note that it is primarily those countries with little or no experience of patent litigation which favour the ECJ route. And even there, in my experience, their judges do not agree. You will know that at the Venice meetings the judges have been virtually overwhelming in their support for EPLA – a support reinforced at the last Patent Judges’ Symposium in Thessaloniki.

EPLA – Is there a legal objection?

From time to time it is suggested that EPLA is not legally possible because it is incompatible with the laws of the EU. I have not been able to see why. What business is of the EU how member states decide their patent cases? True it is that sometimes some questions of EU law will arise (e.g. where a question about the Enforcement Directive, or a defence based on breach of EU competition is raised) but provided the court concerned (a) must apply EU law and (b) can refer questions of EU law to the ECJ, what is the problem?

My answer is there is none. This has been established already by the decision of the ECJ in Dior v Evora Case C-337/95. This concerned the supra-national Benelux Court. This is a court for the three Benelux countries. It takes references on trade marks from the national courts of any of the three countries. The Court of Justice in Dior said:

[21] There is no good reason why such a court, common to a number of Member States, should not be able to submit questions to this Court, in the same way as courts or tribunals of any of those Member States.

That would just what the EPLA court could do. Note that the Court’s decision is not based on any special recognition of the Benelux Court in the Treaty.

Recently there was an interim legal opinion for the Parliament suggesting EPLA was not lawful. I decided to ask the recently retired AG Sir Francis Jacobs about it. He put me in touch with Professor Arnull, a well-known expert. We wrote a joint paper, now published as [200] EIPR 209. He wrote most of it, but I helped with some of the ideas. Professor Sir Francis Jacobs has informally told me he agrees.

This is very important. It means that the EPLA system is available to those countries which wish to use it. It will have to apply EU law and will be able to refer questions to the ECJ. The debate about whether we should go ahead is political, not legal.

I would add two points. First it is being said that also that there is a problem because there is “mixed competence”. I have yet to see any justification for this. Second, there may be a problem in including non-EU countries within EPLA. There may be force in this – a court with a Swiss judge in it could have difficulty in applying EU law or making a reference to the ECJ. But there must be a way round this, probably by a separate Treaty.

Why EPLA is the way forward

1. It would use experienced judges – and they would be able to share experience with less experienced judges
2. It would be possible to be entirely flexible about language. Translation costs would only be incurred where necessary.
3. It would have a local presence
4. By changing the constitutions of the courts so that the judges kept meeting and working with different judges uniformity would be achieved. And the parties could not forum shop.
5. It would be speedy – see the Venice principles with the objective of a determination at first instance in a year

Of course there would be problems and important matters of detail to be settled. But that is where attention should focus.

If we do not do something soon in Europe, our competitors will pass us readily by. China has created a working patent system over the last 20 years. There is more patent litigation there than in any other country, nearly all Chinese v Chinese. It works fast and with reasoned judgments. Japan has recently re-organised its patent litigation system. I suspect India will do so soon – there is talk of it now. It is no good Europe remaining inward looking, putting perceived national interest, or the interests of lawyers or translators first. We have the opportunity to create a patent litigation system for Europe which will take the best bits of different national traditions – to create a first class system. We should get down to it.

Apply to join EPLAW here

Wikis are coming; Surgical patents - help please; Schwibbert - Katja rides to the rescue

Intellectual property wikis are the future, the IPKat is convinced. He feels that the versatility, speed and potential for development that wikis offer is far in excess of anything that many paper-based and even conventional online IP law products can offer.

Right: some things you can do with your law books once wikis have replaced them

Examples you can sample include Martin Farley's IPDailyUpdate and David Pearce's ukpatents wiki. If you'd like to join IPKat team blogger Jeremy, together with Martin, at 4.45pm (for a prompt 5pm start) till 6pm on Tuesday 10 July, for a chat about how wikis work, how easy it is to contribute to them and how great their potential can be, email Jeremy here and let him know. No previous knowledge or experience is needed: just an open mind and a willingness to use it. A venue in the Holborn area of London is being arranged and there is absolutely no charge for attending. See you there?

IPKat co-blogger Jeremy is currently involved in a little research project that requires, as a first step, the compilation of a bibliography consisting of (i) books, (ii) articles, (iii) decisions of national/regional courts and (iv) decisions of patent-granting authorities on the (non)patentability of methods of treatment by surgery, therapy or diagnosis as performed on the human or animal body - all of which are excluded from patentability under Article 52 of the European Patent Convention ... except when, it seems, when they are not.

Left: the IPKat and Merpel need to know - should their diagnostic techniques be patentable, and might they run the risk of infringing third party patents when they practise their life-saving arts? (poster available here)

He welcomes any suggestions of relevant and significant materials that he should take into account: just email him here, please, if you can recommend anything to add to his list.

The IPKat's friend Katja Weckström, from the University of Turku (right), has taken the trouble to send him this note on the Advocate General's Opinion in Case C-20/05 Schwibbert (noted here by the IPKat). She writes:

"The Italian copyright law no. 633 of 1941 created the public authority SIAE, a collective society. The same law penalises advertising and copying of copyright material, as well as requiring that the SIAE mark be affixed to products containing copyright material. By later amendment the duty to affix the SIAE mark was extended to other media. Criminal sanctions for breach of the duty are provided for in Law 121/87, Article 171 ter (c), which provide for imprisonment from 3 months to 3 years, and fines from 500,000 ITL to 6 million ITL.

Schwibbert was convicted for possession (note: no allegation of illegal copying) of CDs that lacked SIAE marking. The national court referred the question to the ECJ as to whether the national law was consistent with Articles 3 and 23-27 of the EC Treaty and directive 83/189/EEC (codified later in directives 98/34/EEC, 98/84/EEC, 98/1000/EEC and 2001/29/EEC) regarding the reporting of mandatory technical standards to the Commission.

The Advocate General first notes that the Italian law that mandates the use of the mark provides criminal sanctions for breach of the duty is unique in the EU. Most member states either only mandate the use of an equivalent mark on material containing legal copies of copyright material, and/or impose civil liability for infringement. (42)

Article 8 of Directive 98/34 provides that Member States must inform the Commission of technical standards that are required under national law. AG Trstenjak first considers whether the duty to affix the mark is a technical standard within the meaning of the directive. By reference to the court's judgment in BIC Benelux, where national law required all products to carry a product specification containing information on the environmental impact of the product, she concludes that the duty to affix the SIAE mark similarly constitutes a technical standard within the meaning of the directive, since it constitutes a threshold to the marketing of goods in the member state in question (43-46). Thus the Italian government was under a duty to report the standard to the Commission (49). From the failure of the Italian government to report to the Commission it follows that the Italian authorities cannot penalise Schwibbert for failing to comply with that duty under Italian law. (53). Under established EC law it further follows that a national court is obliged not to implement a provision which nullifies the obligation of the Member State to report to the Commission under a directive (55-56). AG Trstenjak advised the court accordingly".
Thanks so much Katja, says the IPKat, who has incidentally unearthed this excellent article, "Article 17 and the Scope of Trademark Protection Afforded under the TRIPs Agreement", written while she was at the Chicago-Kent College of Law.

Thursday, 28 June 2007

Multilingual IPKat conquers EPO

Now at last the story can be told! The IPKat has taken over the European Patent Office. IPKat team member and famed multi-blogger Jo Gibson has stormed the EPO's Munich fortress by posing as Eva Peron. Once installed, she issued the following communique (you'll find it on page 9 of the EPO's Annual Report, which you can obtain here):

(IPKat colleague Jeremy explains why this statement is reproduced here in capitals. This is because typing in upper case is like shouting, and it is well known that non-English speakers often gain an excellent comprehension of the language when you shout at them, as generations of pro-European English tourists abroad can attest. Perhaps the European Court of Justice will get the hint and publish ECJ and CFI decisions in English, printed in capitals, to save having to pay so many translators ...).

Being a cultured citoyen d'Europe, Jo is then quoted as saying the whole thing in French:
"Attendre de la propriété intellectuelle qu’elle endosse toute la charge crée l’illusion que la propriété intellectuelle dépasse de loin sa capacité à motiver et à récompenser le commerce du savoir, mais elle est en train de devenir l’instance morale, l’arbitre du développement en matière d’éthique".
Then comes the coup de grace - the same message, this time in German - which is only right and proper, since Germany has hosted the EPO for nearly 30 years:
"Wenn man dem System des geistigen Eigentums diese ganze Last aufbürdet, entsteht der Eindruck, dass geistiges Eigentum als solches viel mehr kann als durch Anreize und Lohn den geschäftlichen Umgang mit Wissen zu fördern; de facto wird es nun zum ethischen Richter, zum Schiedsrichter in Fragen der moralischen Entwicklung".
On a more serious note, Jo's point should be carefully pondered. The patent system may have been born of economic considerations but that does not make patent protection the exclusive property of the economist: moral and ethical dilemmas, many of them more finely poised than we may care to admit, do not disappear just because you can't find them in the annual accounts. Likewise, the patent system addresses technical advances but that does not make it the private domain of the technologist, for much the same reasons. If the patent system delivers what we ask of it, but we don't like what has been delivered, the fault lies not within the patent system but within ourselves - in our capacity to design a system that protects and incentivises innovations with ambivalent moral quality, and in our tolerance of such anomalies as the acceptance that an innovation is too immoral to enjoy patent protection but not so immoral as to be banned from use.

If you think the imaging order's going to hurt you, wait till the trial ...

TML Financial Solutions Ltd v More Business Ltd and others is a decision of Mr Justice Rimer in the Chancery Division (High Court, England and Wales) yesterday. It has been noted on the subscription-only LexisNexis Butterworth service but is not yet available elsewhere and - the IPKat suspects - probably won't be.

TML, a big player in the UK market for remortgage, loan and debt solutions for struggling domestic home-buyers, had a valuable database of individuals who were interested in, or had purchased, any of its financial products. In October 2006 TML's managing director agreed to front a management buy-out. At about the same time the first two defendant companies were formed, both of which were involved in the lead-generating business and were in direct competition with TML. The other five defendants were TML ex-employees, two of whose wives ran the defendant companies.

TML's managing director, suspecting that the ex-employees had gone off with the company's data and were using it for their own companies, managed to obtained a USB memory stick, the contents of which provided evidence that More Business and the other company had misappropriated TML's data and other confidential information.

Left: the Kat's favourite USB stick, available for a moderate price here

In reliance on this evidence TML obtained an order, on an application without notice (i.e. ex parte), that the various defendants (i) tell TML what documents they had in their possession or control, (ii) stop using that information, (iii) give TML all available hard copies containing that information and (iv) save any electonically stored information.

In inter partes proceedings TML sought a continuation of the order, plus an order permitting it to image any of the defendants' computers on which the documents on the USB stick had been stored. This, said TML, was to preserve evidence which would tell it exactly what confidential information the defendants had, how they had used it and what data had been deleted. The defendants yielded meekly to most of TML's demands, but objected to the imaging order saying that it would affect third parties and disrupt their business unless done at weekends.

Rimer J, unmoved by these protestations, continued the previous injunction until judgment or further order and gave TML its way on the imaging order too. The defendants could still apply to vary or discharge any part of that injunction if they wanted to, but it seemed to him that the imaging order was the proper course to take on the balance of convenience. Its execution wouldn't damage the defendants in the short term and was justified in terms of their conduct.

Right: Tiddles still can't work out which bit of the computer his new accessory plugs into

The IPKat thinks this approach is sensible, proportionate and very much in keeping with the IP Enforcement Directive 2004/48. Merpel says, computer equipment - and indeed other electronic gadgets such as mobile phones - is a real smoking gun in any sort of infringement proceedings these days, which is why it's so important to gain and retain access to it.

More on USB sticks here
Good and bad memories here
A la Recherche de Temps Perdu here

Brown's New Cabinet - Purnell Gets Culture

Gordon Brown has just announced his new cabinet, which includes James Purnell (at left) as Secretary of State for Culture, Media and Sport. Purnell takes over from Tessa Jowell (who now has the Olympics).

Before his promotion, Purnell was nevertheless a frequent speaker on copyright, known for his enthusiasm for the topic. He has described his desire to make Britain the world's "creative hub," but his faith in stronger copyright to do so has unsettled many in the creative industries. Purnell has been identified as supporting extensions to term of protection for sound recordings, which has led many to criticise his alliances with big music business.

Purnell says he is "delighted and honoured" at the promotion.

Schwibbert in Luxembourg: time to learn Slovenian?

Angry to the point of being speechless, the IPKat finds yet another European Court of Justice that is not available in English. It's the Opinion of Advocate General Verica Trstenjak (right), published this morning on the Curia website, in Case C‑20/05 Pubblico Ministero v Karl Josef Wilhelm Schwibbert. The IPKat has been able to inform readers of the questions referred for a preliminary ruling and, with the help of his friend, he has been able to give a little background to the case. But now he is stuck, because he doesn't know how Mme Trstenjak has advised the court to rule. Since the good lady is from Slovenia, it is nice to see that the nine languages in which the Opinion is available include Slovenian (even though the original text of the Opinion is French). So, for those of you who are fluent in Slovene, the news is that

"Nacionalne določbe, ki predpisujejo označevanje z razlikovalnim znakom nacionalnega organa, pristojnega za zaščito avtorskih pravic, pomenijo tehnični predpis, ki ga je treba v skladu s členom 8 Direktive Evropskega parlamenta in Sveta 98/34 z dne 22. julija 1998 o določitvi postopka za zbiranje informacij na področju tehničnih standardov in tehničnih predpisov, sporočiti Komisiji Evropskih skupnosti. Sporočiti je treba vsako razširitev področja uporabe navedene obveznosti. Nacionalno sodišče mora odkloniti uporabo določbe, glede katere ta obveznost sporočanja ni bila izpolnjena".
Babel Fish tells him it means this, having translated it from the French original:
"National provisions imposing affixing of the distinctive sign of the national organization charged to collect the royalties create a technical rule having to be communicated at Commission of the European Communities, in accordance with Article 8 of directive 98/34 of the European Parliament and the Council, of June 22, 1998, envisaging a procedure of information in the field of the standards and regulations technical. It must be proceeded to a communication with each extension of the field of application of the aforementioned obligation. It falls to the national judge to refuse to apply a provision not satisfying to this obligation of communication".
The IPKat wouldn't wish to change a word of this immortal prose, for fear of infringing Babel Fish's moral right to the integrity of his translation, though he mewses from time to time as to who is the author of the translation: Babel Fish or (as he believes) himself?

Left: recently seen in Luxembourg - a hopeful candidate for the position of judge at the European Court of Justice puts the finishing touches to his interview technique

Merpel adds, don't email the IPKat and tell him he shouldn't be so lazy and should spend his time learning another language instead. He could speak 13 official European languages and still not be able to understand this Opinion.

How to learn languages here
The Five-Minute Linguist here
Translation bloopers here, here, here, here and here

Wednesday, 27 June 2007

"They think it's all over ..."

This year's Brands Lecture, "They think it's all over", was delivered today by Martin Glenn (right) in the pleasant and congenial surroundings of the Institute of Physics, a stone's throw from London's elegant Regents Park. Although he is CEO of Birds Eye Iglo Group Ltd, Martin has more than a bird's-eye perspective on brands, having toiled for over a decade to lead Walkers potato crisps to their position of preeminence in the UK market. The Brands Lecture is one of the activities hosted by the British Brands Group, which coincidentally was able to announce the launch of its handsomely redesigned website this evening.

Below: sports stars such as Gary Lineker have come under attack from pro-health and anti-obesity groups for encouraging the consumption of products such as Walkers crisps (click here).

Speaking from a consumer brand manager's perspective, Martin outlined various malaises that have affected the brand management profession in recent times: these include the lack of a good supply of high-calibre graduate recruits, lack of confidence when responding to single-issue pressure groups and demands for regulatory reform, distrust of private equity funding, an obsession with the need to "differentiate" one's brands from others rather than focusing on how to improve the product, absence of cohesion between the parts of the marketing operation that develop products, speak to consumers and defend the brand against outside criticism, failure to embrace the need for continuity (consumers get bored with marketing ploys far more slowly than the branding team does).

Martin then called for brand managers to opt for a "balanced life style" for their brands, seeking the path that is neither short-termist, over-reacting to every challenge or opportunity, nor too long-term and change-averse. They should learn to trust consumers and to listen to them carefully. Finally, they should learn how to segment the "market" of single-interest groups and lobbyists: while all questions and criticisms must be addressed and dealt with, not all are of equal weight and some need to be dealt with more urgently than others.

The IPKat says, it was a fun event and a very instructive one; he looks forward to reading the lecture once BBG has published it. Martin fought his corner with eloquence, wit and not a little emotion. Merpel says, don't get carried away; every manager of one brand - which he fights for tooth and nail - is also the consumer of many more. As brand manager he may take a tough and unrelenting attitude against criticisms and pressure groups, but as a consumer he's more likely to want to be joining one.

European IP Teachers Network

At the end of a very busy time of moving locations (the Centre for Commercial Law Studies, has moved to a brand new location in the Queen Mary Postgraduate Law Centre, Lincoln's Inn Fields) combined with the usual hectic exam period, it was a welcome pleasure to take part in the recent European Intellectual Property Teachers Network (EIPTN) first annual workshop, hosted by Aston Business School earlier this week.

The IPKat takes a chance to visit his cousin, Aston Villa Hercules, at left

The Network has a very interesting history, starting with the UK IP Teachers Network, which met for the first time in 2000. In that first meeting, the sentiment was that these workshops would be an enjoyable social and intellectual gathering at the end of each teaching year, as distinct from the traditional summer conference. And in fact, much of that spirit of an end of academic year "get together" was enjoyed in Birmingham this week! (The IPKat parties for England, at right). Since then, the network has organised workshops on an (almost) annual basis to discuss best practices and new ideas and innovations in teaching.

But this year, it has expanded as a European-wide network, EIPTN, thanks in large part to funding from the European Patent Academy, and in recognition of the growing importance and relevance of wider European practices to our teaching programmes.

The first annual meeting of EIPTN was held at Aston Business School, 25 June 2007, co-organised by Duncan Matthews (QMIPRI) and Claire Howell (Aston Business School). The meeting was preceded by an Annual Dinner on the evening of Sunday 24th June. The annual meeting differs from conventional academic conferences, conceived as an opportunity for IP teachers to meet and exchange ideas in an informal setting, with the focus of discussion firmly on teaching issues rather than research.

The keynote speaker at the event was Stephen Rowan, Intellectual Property and Innovation Directorate, United Kingdom Intellectual Property Office, and a member of the team for the Gowers Review of Intellectual Property. In the light of the Gowers Review, Stephen Rowan's address considered whether the intellectual property system is fit for purpose in an era of globalisation, digitalisation and increasing economic specialisation.

Importantly, the Network is inspired, managed and coordinated by the individuals, rather than institutions, but a number of institutions will continue to support the initiative, including QMIPRI. The Network will soon expand to include a dedicated website and mailing list. Meanwhile, please visit for ongoing updates and information, mailing lists and details of next year's workshop.

For further information on this year's event and future meetings, contact Duncan Matthews or Claire Howell. And we'll all see you next year!

The IPKat reviews the basics

Chasm or consensus? Putting a spin on the SCCR

There is more churn in the process of polishing up the oft-neglected and little loved topic of IP protection for broadcasters, says the IPKat.

Right: in this exciting digital age, let us not forget the contribution made to broadcasting by the humble cat's whisker

The Rome Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961) has become quite topical of late, following the emergence of radically new types of communications and of content distribution over the internet, while signal piracy has been a growth area with its own momentum. This being so, WIPO reckoned it was time to review and upgrade current international standards, to ensure that elusive "appropriate balance between the different interests of all stakeholders and those of the general public" which will enable WIPO to achieve the Holy Grail of every UN agency, that of being truly all things to all men.

To this end a WIPO press release, "Negotiators Decide to Continue Discussions on Updating Protection of Broadcasting Organizations" (Geneva, 25 June 2007, PR/498/2007), was issued at the beginning of the week. It tells the IPKat that

"Member states of ... WIPO have decided that further discussions were required on various aspects of a treaty on the protection of broadcasting organizations before moving to a diplomatic conference. The decision came at the conclusion of the second special session of the Standing Committee on Copyright and Related Rights (SCCR) from June 18 to 22, 2007 which had been mandated by the WIPO General Assembly in October 2006.

In October 2006, the WIPO General Assembly called for two special sessions of the SCCR to be held in 2007 “to clarify the outstanding issues.” The General Assembly decision said that “the sessions of the SCCR should aim to agree and finalize, on a signal-based approach, the objectives, specific scope and object of protection with a view to submitting to the diplomatic conference a revised basic proposal, which will amend the agreed relevant parts of the Revised Draft Basic Proposal (document SCCR 15/2).”

In that decision the General Assembly also decided that a diplomatic conference would be held from November 19 to December 7, 2007 to conclude a treaty on the protection of traditional broadcasting organizations, including cablecasting organizations, if agreement on new text was achieved during the special sessions. The first of these sessions was held in January 2007. The discussions undertaken in the two special sessions were confined to the protection of traditional broadcasting organizations and cablecasting organizations. This followed a decision by the 14th session of the SCCR from 1 to 5 May, 2006, to examine questions of webcasting and simulcasting, on a separate track, at a later date.

At the close of the June meeting, the Committee said that the work of the past years served as a firm foundation on which to develop balanced solutions that effectively address the growing problems of broadcast signal piracy at the international level. The Committee recommended that the WIPO General Assembly take note of the current status of the work; and acknowledged that progress was made towards better understanding of the positions of the various stakeholders. It was proposed that the subject of the broadcasters treaty remain on the agenda of the SCCR, and that a diplomatic conference be convened only after agreement on objectives, specific scope and object of protection has been achieved. Delegates also applauded the commitment and guidance of the Chair of the SCCR, Mr. Jukka Liedes.

Left: machine for disseminating mixed messages

Mr. Liedes acknowledged progress made in moving the process forward and said that more time was needed to bring the negotiations to a successful conclusion. He thanked all delegations for their flexibility and constructive engagement in the discussions which, he said, were key to a successful outcome.

Mr. Michael Keplinger, WIPO Deputy Director General who oversees copyright issues said “member states expressed their strong interest in continuing to strive towards achieving the objectives of protection on a signal based approach as mandated by the WIPO General Assembly in 2006. The process to date has gone a long way in building understanding on these very technical and complex issues.” He further noted, “member states are now actively engaged in these discussions and a great deal of work has been done on these questions but a number of key issues still need to be ironed out.”

Taken at face value, this sounds quite positive. But what does it all mean? IP Justice gives quite a different account. Its heading reads "Broadcast Treaty Will Be Dead for a Long Time"; the blog adds:

"Today member states of WIPO decided that there will be neither a diplomatic conference on the proposed Broadcast Treaty, nor any more Special Sessions of the Standing Committee on Copyrights and Related Rights (SCCR).

Till the end the Chair Yukka Liedes and the WIPO Secretariat intensely tried to keep the process on a way, at last by proposing that member states may propose to the General Assembly to decide to hold two more Special Sessions of the SCCR and to postpone the Diplomatic Conference to 2008. Finally member states disagreed in all this points. No more Special Sessions will be asked for, no new time frame for a Diplomatic Conference was set and the Broadcast Treaty will only remain on the regular agenda of the SCCR. At the end India also said that there are many more very important points to discuss at the SCCR. So the Broadcast Treaty most likely will be only one of several other agenda items of the SCCR. Decision of SCCR Special 2: Changes compared to the Chair’s draft. The last decision on this will be taken by the General Assembly this year but it is very unlikely that there will be any surprise there.

That the Diplomatic Conference will be called off for this year already was clear after an informal night session when several member states proposed to call off the conference after seeing not any progress in respect of finding a consensus on a new draft proposal.

By their decision the member states ended a over nine years process which was becoming more and more a dead end. It’s a real good day for Internet-Users, Podcasters, consumers in general and in developing countries in particular. The new treaty has threaten to regulate Internet transmissions of broadcasts, to give exclusive rights for non-creative works and to protect broadcasters TPMs which has threaten not only to impose Technology Mandates but also to hinder consumers in making fair uses of broadcasts".
Could these reports both be covering the same event, the puzzled Kat wonders. Merpel adds, it's depressing how much these reports both focus on the machinery of policy review rather than on the matters of principle that are supposed to require our input.

See also Digital Media Wire, IP-Watch, Follow the Media, Hollywood Reporter and Reclaim the Media
The real Rome Convention here

Recent periodicals

Maintaining its recent record of coming out ahead of its cover date, the July 2007 issue of Sweet & Maxwell's monthly IP flagship journal, the European Intellectual Property Review, still edited by its originator Hugh Brett, has some highly timely and topical content. This issue includes

* a first-rate rant against the muddled law in the UK on the making of unjustified threats to sue for infringement of certain IP rights, by CMS Cameron McKenna's Isabel Davies and Tom Scourfield. This piece calls for a consultation and indicates that the UK IPO is in principle willing to conduct it [says the IPKat, the state of the law is such that - whether you think threats actions are an abomination or a blessing from heaven - some sort of consultation and rationalisation is long overdue];

* A clear and helpful analysis by two lawyers from the New York office of White & Case, Scott T. Weingaertner and Christopher C. Carnaval, on the no-challenge patent licence issues arising from the US Supreme Court's decision in Medimmune v Genentech;

* a review by Sally McCausland (Special Broadcasting Service), of the recent and speedily-processed Australian copyright amendment to accommodate parody, satire and "mickey-taking".

Left: an example of the tradition of good-humoured irreverence towards objects of respect and veneration, for which Australian culture is well known.

The IPKat notices that this year marks the fortieth anniversary of Hugh Brett's admission as a solicitor in England and Wales and takes this opportunity to salute him for his remarkable and continuing contribution to the living culture of intellectual property practice in the United Kingdom and beyond.

No respecter of normal conventions concerning cover dates, the Lawtext bimonthly Bio-Science Law Review has now issued Volume 8 Issue 5 for 2005-2006. This cute and hugely desirable journal's newly published features include

* A closer look by Hsu Min Chung (Boult Wade Tennant) at the UK and European law on what are now, it seems, perpetually destined to be called the Bolar provisions in patent law, covering the extent to which research and trials may be undertaken without infringing an earlier granted patent;

* Sangeeta Puran (Mayer Brown Rowe & Maw) on the status of clinical data as a subject of intellectual property rights - if, and to what extent, they are;

* Taylor Wessing's Gareth Morgan, on (i) the protection of plants through patents and plant variety rights in the European Union and (ii) the interface between those two quite different legal regimes.

Right: says the IPKat, some plants seem quite good at providing their own protection ...

Tuesday, 26 June 2007

Naloty naming competition

About a fortnight ago the IPKat posted this item concerning the Polish Naloty website, which tracks Polish police actions against computer piracy.

Right: dealing with sophisticated computer piracy, the police often find themselves under-resourced

The Kat was a little concerned about the provenance of this website, but he has since made contact with its founder, Antoni Leniek, who writes:

"I am a 23 year old student of IT at the University of Technology in Czestochowa. I'm just finishing my studies and this site is part of my engineering thesis (the subject of the thesis is "Web 2.0 - Second Generation of World Wide Web"). In Poland Web 2.0 is growing and growing day by day; however we are behind the rest of the Internet community".
Antoni is thinking it would be a good idea to take this participative website international, but he needs a good name for it. 'Naloty' means 'police raid' in Polish, but it doesn't have the resonance and appeal of a good, catchy name. Says Antoni, there's a bottle of Polish vodka for whoever can suggest a better name. The closing date for suggestions is this Friday. Please send your suggestions to the IPKat here.

AUDACE attacks parallel trade regulation plans

The IPKat seems to have got himself on to the mailing list of AUDACE, the "Pan-european association of farmers and distributors of plant health products and veterinary medicines working together against dysfunctional factors adversely affecting the market". This organisation has issued a statement on the proposed Regulation of the European Parliament and of the Council concerning the placing of plant protection products on the market (COM (2006) 338 final). It reads as follows:

New Article '49a' proposed by the Council working group

On 23 May of this year the member States of the European Union, within the Council under German presidency, established a new consolidated version of the proposed regulation to replace directive 91/414/EEC, including Article 49a concerning "parallel trade" in plant protection products.

Already on 7 December 2001, during a meeting of the Standing Committee on Plant Health, the member state Germany had indicated that it would not take note of the guidance document SANCO/223/2000 rev.9 and that it wished to see parallel imports regulated through changes brought about in directive 91/414/EEC: the provisions for establishing identity of a product, the definition of the obligations of importers and Member States are not suitable to be dealt with in a guidance document.

AUDACE for its part had repeatedly and consistently, since the Corfu workshop in July, 2002 given the reasons for which, in its view,

1. The principle of free movement of the plant protection products (PPP) would be better regulated outside the directive, the aims and objectives of which are the protection of health and the environment

2. If it were to be otherwise, the modifications brought to the directive inevitably
had to conform to the principles of objectivity, necessity and proportionality and

3. decisions of refusal or withdrawals of marketing authorisation (MA) had to be notified in compliance with decision 3052 or with directive 98/34 for coherence.

The projected regulation, as amended, puts operators in a situation of total legal uncertainty incompatible with the founding principles of the treaty.

The fact that the proposal is silent on the practices of complete repackaging and double labelling, voluntarily on grounds relating to potential areas of conflict with trade mark right, leaves the professional importer in the certainty of systematic judicial harassment.

The fact that the proposal is silent on imports of PPP by users within the limits of their personal needs reinforces the deficit of national statutory regulations generally allowing for more repressive administrative practices.

The need to regulate these three practices - repackaging, double labelling, own use imports - is all the more pressing as recent community jurisprudence relating to pharmaceutical products (
Case C-348/04) makes it compulsory for the importer to give notice to the trade mark owner and, on demand, supply him with a specimen of the product before it is put on sale, in all cases including that of double labelling. This obligation had never been put into practice except in cases of total repackaging with re-application of the trade mark. Seasons and cycles are attributes of the plant protection market that make this measure particularly difficult to implement and in some cases totally impracticable.

On this account, AUDACE had, on 9 May sought, from the national competent authorities and from industry, that they agree with parallel importers on the conditions in which double labelling and repackaging could take place in accordance with industrial and commercial property rights and the preservation of their essential requirements.

AUDACE regrets the absence of any response from the industry (except for initiating legal actions based on
Case C-348/04 against importers for past imports) as it regrets its representative organisation ECPA did not think it useful to call on AUDACE to take part in the multi-stakeholder event it organised in Brussels on 7 June 2007".

The IPKat asks, to which ECPA does the last paragraph refer? He suspects it must mean the European Crop Protection Association rather than the Evangelical Christian Publishers Association or any of the other bodies that share the same acronym. Merpel says, if you don't like this AUDACE, try a different one here, here, here, here or here.

Monday, 25 June 2007

Who is Schwibbert?

In the Kat's recent post "You can SIAE that again!" he asked if anyone knew anything about the background to this Thursday's forthcoming Advocate General's Opinion in the Schwibbert case.

Right: the IPKat's trained hounds pick up the scent of the Schwibbert case ... [from Ronald Raglan's collectable Beagle Prints]

Well, his friend Alessandro - from the curious land of (see earlier post here) - has sent him some useful information. Says Alessandro (lightly edited by the IPKat):

"Mr Schwibbert is a German citizen, legal representative of an Italian company which is the defendant in a criminal action for having commercialized in Italy a CD ROM lacking the "SIAE" mark (SIAE is the "unique" Italian agency for the protection and the management of copyrights).

In fact, the Italian law n. 248/2000 punishes those who use for a commercial purposes every CD, audio and video box, DVD, etc, containing copyright materials (software, sounds, voices or images) without a "SIAE" mark. To put the SIAE mark one must pay euro 0.0310 per unit (euro 0.0181 in some exceptional cases). Now, the Italian law requires use of the SIAE mark even on blank CDs, DVDs, etc.

During the first hearing (24 April 2007) over which the Finnish Judge Allan Rosas presided), the attorney for the defendant (lawyer Andrea Sirotti Gaudenzi) asserted that the Italian law had introduced some “technical rules” in violation of the EU rules, i.e. without proceeding to the prior communication of its legislative proposal to the EU Commission.

The Commission has joined in the submission of lawyer Sirotti Gaudenzi.

On the opposite site, the Italian Government and the SIAE lawyers assert that the SIAE mark was a pre-existing practice in Italy and that, therefore, the new law “would have simply duplicated” the existing situation.

SIAE risks loss of the returns derived from the affixing of the "SIAE" mark.

Given the complexity of the case, the judgment has been referred in order to allow the Advocate General to formulate the own conclusions.

We hope for SIAE mark abolition (not only us in Italy)!!!!"
Thank you, Alessandro, says the IPKat, now we know. Merpel says, we're only hoping that the Advocate General's Opinion is easier to comprehend than was the immediate significance of the questions that were put to him.

Inventor wisdom for free

Today's Guardian has a very good (and, for a piece on intellectual property, unusually accurate) article on the new British Library "inventor in residence", Mark Sheahan. Mark, the inventor of "Squeezeopen" (examples right), will be giving free one-on-one advice to inventors at the library's business and IP centre.

One piece of advice Mark has to offer all would-be patentees is to get professional advice. The IPKat, who knows a little about the potential pitfalls of the IP system, inevitably has to agree wholeheartedly. The costs of getting a patent, if your idea really is worth protecting, are often well worth the extra money involved.

Merpel adds: whoever drafted Mark's patent applications (here and here) apparently didn't consider the possibility of the devices being made of anything other than plastic, which is a shame for trying to get those pesky work-arounds as infringements. "Beware of the tin man" indeed.

Professional standards and the individual inventor

The IPKat's friend and sole/small IP practitioner activist Barbara Cookson (Filemot), occupying a guest blog slot today, writes:

"Dennis Crouch of Patently–O draws attention to a newly disbarred US patent attorney, Michael Bender, in his post Individual inventors who will represent you now? The judgment in his appeal is here. US inventors are so frequently parted from their assets by invention promotion companies that the USPTO now has an official forum for their complaints.

Right: individual inventors are usually small, vulnerable and easy to manipulate - which is why they need special protection.

Bender had a lucrative ($30,000 a month in 1993) deal going with American Inventors Corporation (AIC). He had taken over from an attorney who settled with the USPTO for a 5 month suspension from practice for his part in AIC’s money back guarantee that promised a refund if a patent was not issued. AIC got US design patents (something like a registered design) instead of the real thing, without explaining the difference. Bender felt that he was not guilty of misconduct because, when he took over the practice, he sent the clients an engagement letter, but the US Court of Appeal did not think much of his brief discussion of the difference between design and utility patents. The judge said it was an entirely hollow and formalistic gesture. Bender was also found to have been under a conflict of interest because he was paid by AIC and there was no full disclosure of that to the clients.

Divorce these actions from the criminality of AIC and it doesn’t seem that different from the activities of many agents worldwide, does it? But the chances of running into trouble in England are pretty remote. By contrast to the US, acting for another to procure patents is not a reserved legal activity. Anybody can do it. Notionally the UK IPO can refuse to deal with an agent for misconduct but it’s not known that it ever has. The power to do so rests with the Secretary of State under the
The Patent Agents (Non-Recognition of Certain Agents by Comptroller) Rules 1990. The Legal Services Bill is all about professional regulation in the legal sector but, since it only deals with reserved legal activity, the independent inventor needs to look after himself in that area.

Now the responsible practitioner likes a fancy title like Solicitor or Patent Attorney, and for that he does need to submit to regulation. In my opinion, trying to make money from your ideas is a risk business and an independent inventor must take his risks just like any other entrepreneur. Selecting advisers you can trust is just another risk and, as a rule of thumb, anyone who offers to take your money up front for vague promises of jam tomorrow needs to be treated with caution whether he’s called an invention promoter or an independent financial adviser. Wouldn’t you agree, Merpel?

For those wanting to call themselves Solicitor and get into the commoditised legal services business this is a more serious issue. From 1 July the Solicitors Regulation Authority (
SRA) has a lovely new code of conduct which would shred Bender on as many counts as the USPTO did. So the individual inventor who wants this US level of protection should only consult a solicitor, but not any solicitor, as the majority would be obliged to turn such a client down for lack of resources and/or competence under rule 2(1)(b)".

More on American Inventors Corporation here

Dealing with technical prejudice - and spurious TRIPs points

The Court of Appeal for England and Wales has firmly squashed the somehow alarming notion that an automatic right appeal against the revocation or cancellation of a patent was guaranteed in all countries that are Members of TRIPs (the Agreement on Trade-related Aspects of Intellectual Property). It did so in Pozzoli SPA v BDMO SA and others [2007] EWCA Civ 588 (available here in full on BAILII), a ruling on Friday 22 June 2007. The Court consisted of Lords Justices Mummery, Keene and Jacob - the last-named of whom delivered the judgment of the court.

Pozzoli patented a form of packaging for multiple CDs (a 'container for a plurality of discs, particularly compact discs'). The invention involved partially overlapping discs, with offset axes, so that the discs were physically separated. The prior art included a 'two-to-one tray' (this being a tray with recesses for accommodating two CDs side by side). While a tray made to accommodate one CD was virtually square, a tray made to accommodate two had dimensions in the ratio two-to-one, with the result that the two-to-one container was higher than that for a single CD. Pozzoli's design enabled two or more CDs to be packaged in a container of reduced height.

When Pozzoli sued for patent infringement; the defendants said the patent was invalid since the idea of overlapping the CDs in order to reduce the height of the container was obvious to anyone skilled in the art. Not so, said Pozzoli: the industry was prejudiced against overlapping CDs. At the trial, Mr Justice Lewison held that no long-felt demand for a container of intermediate height had previously remained unsatisfied by reason of prejudice: the invention was obvious and the patent invalid. Pozzoli appealed.

The Court of Appeal dismissed the appeal. First, the Court stated that the test for inventive step needed tidying up and clarifying - presumably in the wake of all the recent cases in which the test of inventive step has been tidied up and clarified.

Thus the required approach as to whether an invention is obvious starts with the following steps: (i) identify the notional 'person skilled in the art'; (ii) identify the relevant common general knowledge of that person; (iii) identify the inventive concept of the disputed claim or - if that couldn't readily be done - try construing it. The crucial issue, the court emphasised, was to discover the difference between what the patent claimed and the prior art.

At this point, the court's advice became more generalised and more reminiscent of homespun philosophy than hard and fast rules to be applied by patent examiners and lower courts. Thus don't worry if disagreement about the inventive concept of a claim gets too involved: if it does, just forget it and simply work on the features of the claim. Sometimes you don't need to get bogged down in finer points of construction since, even without them, the inventive concept was fairly apparent. In yet other cases, even trying to identify the inventive concept was an impractical exercise. In any event, the court said, identification of the concept was not the place where one took into account the prior art.

After all this, one must still identify what, if any, differences existed between the state of the art and the inventive concept of the claim. Only once reaching this point does it become necessary to consider whether those differences constituted steps which would have been obvious to the person skilled in the art, or whether they would have required any degree of invention.

The Court of Appeal then considered the relevance of the "technical prejudice" argument to a finding that there was an inventive step. It correctly observed that the prejudice that a particular idea would not work or was impractical was as much a part of the state of the art as any other part of the state of the art and, if that prejudice were shown to exist, the prior art would be viewed through the eyes of the person skilled in the art who shared that prejudice. A patentee who had shown that, contrary to the mistaken prejudice, the idea would work or be practical had shown something new. His contribution was novel and non-obvious and he deserved his patent. Where, however, the patent merely covered an old idea that was thought not to work or which was seen as being impractical but did not explain how or why, contrary to the prejudice, it did work or was practical, things were different. Such a patent contributed nothing to human knowledge and could not be justified. In thist case the notional person skilled in the art was someone who might wish to package discs, or make or design packaging for them. Such a person would know about common forms of packaging CDs, including the two-to-one tray. This being so, Lewison J was entitled to reject the suggestion that there was a prejudice in the industry against overlapping CDs.

The IPKat says, the bit I liked best about the decision comes right at the start: it's the argument that TRIPs requires an automatic right of appeal against the revocation or invalidity of a patent:

"Mr Mellor QC for Pozzoli, initially raised a point about the TRIPs Agreement, (Annex 1(C)) to the Treaty establishing the World Trade Organisation made at the Uruguay Round of the GATT talks in April 1994. He submitted that the effect of TRIPs is that we must give permission – even if there is no real prospect of success (the criteria for permission provided by CPR 52.3(6)(a)). It was a startling proposition, one which called for no reply and with which I can deal briefly.

The argument ran like this:

(i) Art. 32 of TRIPS provides: "An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available".
(ii) This means that a full judicial hearing on the merits is called for. A preliminary screening system for weeding out cases with no real prospect of success as now provided by the Rules will not suffice for this purpose.
(iii) Although TRIPs is an international Treaty and so does not itself form part of UK law, wherever it is possible for our courts to act so that the UK is not in breach of an international Treaty, they should do so. [I add that TRIPs is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972 (by virtue of SI 1995 No. 265) and so falls to be construed as it would be construed by the ECJ. That involves a purposive and teleological rather than literalist approach].
(iv) Thus the other possible ground for granting permission to appeal, namely "some other compelling reason" (CPR 52.3(6)(b)) is brought into play. The compelling reason is that if permission is not given, the UK will be in breach of its Treaty obligations.

A major flaw in the argument is simple: a decision by a Court of Appeal judge or judges (whether made on the papers or following an oral argument or both) as to whether or not to grant permission to appeal from an order for revocation is a judicial decision. It is a "judicial review" as called for by Art. 32. Nothing in TRIPs requires a member state to provide that its courts of appeal should hear cases which have been judicially determined to have no real prospect of success.

It may well be there is another flaw which may bring in the ECJ approach to construction to get a sensible result. Consider a case where a national Supreme Court, contrary to all decisions below, for the first time holds a patent invalid. Does Art.32 really require that there be a means of judicial review of this? Mr Mellor was forced to so submit. He postulated that the way round this would be for the Supreme Court having reached the decision that the patent is invalid to remit the case to the lower court so that it would be that court which actually revoked the patent so that there could be an appeal to the Supreme Court all over, thus complying with the Art. 32 requirement of a judicial review. Keene LJ aptly described this as a "dog's breakfast" solution.

The problem would not arise if one read Art. 32 as applying only to administrative or political decisions. Mr Mellor sought to rebut such a reading by reference to other provisions of the Treaty. These were Art.62.3 (requiring that certain "final administrative decisions [which include revocation of a patent] shall be subject to review by a judicial or quasi-judicial authority.") and Art. 41(4) (providing that "parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions, and … of at least the legal aspects of initial judicial decisions on the merits of the case"). Mr Mellor submitted that Art. 32, in referring to "any decision to revoke" must include judicial decisions to revoke, not merely administrative or other decisions because these other Articles recognise the distinction between administrative and judicial decisions.

If right, his submission means the Treaty requires the "dog's breakfast" solution or something similar. I doubt that, but it is not necessary to go into this further. The major flaw I have spelt out is quite enough to dispose of the TRIPs point here. It would be daft to require the grant of permission to appeal in a case where a court of appeal had judicially determined that the appeal had no real prospects of success".

European Patent Office guidelines on overcoming technical prejudice here
Pride and Prejudice here

Sunday, 24 June 2007

Biomedical innovation in Jordan; More on Macrossan, by Macrossan

Now here's something to get you thinking: it's Intellectual Property Management in Bio-Medical Innovation in Jordan, a research paper by the IPKat's friend Roya Ghafele together with Michael P. Ryan. This project - effectively a healthcheck on the legal, techno and commercial dimensions to the encouragement of primary biomedical research - was supported by the World Intellectual Property Organization.

Right: Petra, part of Jordan's rich and varied past. But Jordan, like many countries with a long history, would like to be known for its future too ...

However, the views contained within it are in no sense official. On local IP practice, the authors have this to say:

"The intellectual property bar, in general, lacks world-class expertise, so that most international IP management is carried out by local managers with developed countries IP counsel, sometimes with a local Jordanian agent as an intermediary. The problems appear to be of education and of market opportunities. Internationally-educated IP attorneys are valued; locally-educated attorneys generally are considered technically deficient due to language inadequacies and insufficient experience due to the sparse IP activity going on in Jordan. This problem will likely go away as the local market for IP management grows and talented young Jordanian attorneys increasingly seek specialized education and experience in developed countries Nevertheless, it is a problem and reform of the local education system could help".
There are a couple of significant points here, says the IPKat: (i) a good IP practitioner really does need the skills of the Renaissance Man - legal qualifications are only a first step; a command not only of foreign languages but of technical terminology and fundamental scientific concepts is needed to; (ii) "if you haven't got the experience, you don't have the ability - but if you don't have the ability, we can't risk letting you loose without the experience". Jordan is not alone in facing this problem, which must be solved before local practitioners in any small and developing jurisdiction can make a truly useful contribution. Experience is something you can't buy and you can't inherit: now that we have recognised the need to move towards equality of opportunity in terms of education, we must also recognise the need for equality of opportunity in terms of gaining experience, once the necessary educational criteria have been satisfied. Merpel says, there's a jolly good little bibliography at the end of this report.

This report is not available online but the authors would like it to be more widely read. If you'd like to see it, email the IPKat here and let him know.

Inventor, litigator and agitator Neal Macrossan has left a new comment on the IPKat's post earlier this week entitled "EPO: please stop asking questions". He queries:
"What about a second appeal by me to the House of Lords following the precedent set by Buttes Gas v Hammer [1982] AC 888 (see here), with the House of Lords granting me leave to appeal and then choosing to follow the European Patent Officeapproach (particularly now that the Technical Appeal Board has asserted in T 154/04 has asserted, in robust terms, their view that Jacob LJ was quite wrong, and given detail as to how they think he got it so wrong)?".
Well, says the IPKat, no-one ever died of a question - so would anyone like to answer it?

Friday, 22 June 2007

Friday footlings

Last week the IPKat's weblog received a very gratifying 6,773 casual visits, in addition to its 1,048 regular email readers and (vast hordes of?) unknown RSS ones. That's our best performance for a single week since the Kat started keeping records. Thanks, all of you, for your continued support.

Have you voted yet for the next Director-General of the World Intellectual Property Organization? The poll (see left-hand side panel at the to of the IPKat's current page) closes next Thursday. Right now, the Cat in the Hat is in the lead; James Bond and Asterix are slugging it out for second place, but Tintin - still lying fourth - can never be underestimated. Squeaky-clean candidates Snow White and Mickey Mouse have not yet attracted widespread support, which raises questions as to how viable they are when they don't have the backing of the powerful Disney publicity machine. Meanwhile, poor Shamu's campaign seems to be dead in the water ...

Left: Tintin and Snowy rush to do some late campaigning in their author's Belgian heartland - but will Compu-Mark and Bureau Gevers respond to their call?

Cashing in on a luxury lifestyle? This article by Clare Matheson from the BBC's Business pages, was drawn to his attention by his friend Jim Davies (consultant to Bell Dening). The article explains that the Dominion Group has launched the Chic investment fund, which will enable investors to grab a slice over 60 businesses which between them own over 2,300 brands including Miu Miu, Stella McCartney and Ralph Lauren.

Right: a ladies' shiu from Miu Miu

Says Dominion chief executive Alex Bell:

"I was looking for an investor prospectus that was really good and solid and that people could understand, and interesting to both guys and girls".
The market for upmarket big brand goods is pretty buoyant right now: according to a recent study it rose 9% in 2006 and forecasts predict further growth of 7.5% this year and 8% in 2008. Competitors have however voiced concerns over how robust the fund may turn out to be.

The IPKat thinks the Chic fund is a great idea. You can spend a fortune on a fashion brand article and then watch it depreciate or fall apart - but if you are effectively buying shares in the brand, you can at least have a prospect of your investment appreciating. Says Merpel, I'm waiting for an investment in cat brands: Jaguar, Puma, Lynx, Hello Kitty ... .

Dangers of mechanical investment decision-making, by a real Kat, here

Gill Grassie (Maclay Murray Spens) was quick off the mark with this item from The Scotsman on the propensity of Kwik-Fit fitters to listen to the radio at full blast while testing car exhausts, fitting tyres and doing other things that Kwik-Fit fitters like to do. The Performing Right Society says this constitutes a performance in public, for which an annual £30,000 licence is needed. The PRS seeks £200,000 damages before the Court of Session, Edinburgh.

Various preliminary issues were discussed in court yesterday, including whether Kwik-Fit workshops are public and whether the company is not liable for its employees' practices since it has adopted a policy of banning radios in the workplace - even if the rule is often ignored by the workers. The IPKat recalls a Finnish Supreme Court majority decision, Teosto v A Taxi Driver [2004] ECDR 3, in which the playing of music by a taxi driver in the course of taking a customer to his destination constituted a performance in public, even though the passenger generally had no say in the choice of music - or whether the taxi driver might be kind enough to turn it off: might the same approach be adopted here, he wonders? Merpel says, if your exhaust is too noisy you can go to Kwik-Fit and get a silencer (left) fitted, so why can't they fit silencers to their radios?

The Kwik-Fit song here
Slow-Slow-Kwik-Kwik-Slow here

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