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, 30 May 2008

USPTO dumbs down even further?

The IPKat doesn't often comment on goings-on across the pond, as others are usually able to do it much better, but this little story from Greg Aharonian's Patnews email earlier today amused and astonished him so much he thought it would be worth forwarding to the IPKat's readers too.

(right: how USPTO examiners look to the rest of the world)

A few weeks ago, Nokia's US representative received an Office Action on one of their patent applications, titled "Multiple antenna portable handheld electronic device", application number 10/982,469, published as 2006/0099993, filed in November 2004. So far, so normal.

The patent examiner (a primary examiner, not a newbie), obviously under the impression that he had uncovered a killer piece of prior art, cited this published US application against most of the claims, finding that these claims were not novel. The remaining claims were, the examiner alleged, not inventive over the same document.

Alert IPKat readers might notice the little flaw in the US examiner's argument.

While he has the IPKat's readers' attention, Greg would also like to point out that a transcript of the in re Bilski hearing before the CAFC is available here.

What's happening at WIPO?

The IPKat was intrigued to read earlier this week (see here, here and here) of mysterious goings-on at WIPO, involving the apparent removal of diplomatic immunity from a number of employees and police investigators entering WIPO headquarters in Geneva to take DNA samples.

All this apparently has something to do with an alleged smear campaign relating to the director general elect, Francis Gurry. Whether it also has anything to do with the various allegations (still unproven either way) against the current head Kamil Idris, is unknown. More than this, the IPKat would not like to comment. What he would, however, like to know is why Intellectual Property Watch, which is usually the closest to WIPO goings-on, has so far said nothing about it.

Friday fustigations

The IPKat's 'Forthcoming Events' feature, in the left-hand side-bar of his front page, is well worth keeping an eye on: there's always something fascinating in the pipeline. So don't forget to check it out!

strong>Are you a non-UK solo IP practitioner? If so, the SOLO IP weblog would like to hear from you. The UK-based solo IP practitioners are networking very well with each other now, but after their most successful and exciting foray into foreign parts, when they attended the INTA Meeting in Berlin earlier this month, they discovered how many solo IP practitioners there were from other countries--and how much they all had in common.

Right: every solo practitioner is a bit of a one-man band (illustration here from Freaker's Ball)

Please feel free to share your experiences and your thoughts with SOLO IP, particularly if you'd like to post the occasional article. If SOLO IP's for you, contact Barbara Cookson or Shireen Smith.

Last year the IPKat backed the call by his fellow bloggers at SpicyIP to support its petition to the Prime Minister of India, requesting the creation of an electronic database covering full patent information and thereby increasing transparency at the Indian Patent Office. The Indian government has responded positively to this request and hopes to have the database fully functional during the year 2009 (it's partially operational already: you can check it out here). The IPKat and Merpel congratulate Shamnad Basheer and his colleagues at SpicyIP for all their campaigning, which shows how the power of the weblog may be brought to bear; they also congratulate the Indian government for their constructive response.

The increasingly enjoyable WIPO Magazine carries an item that surprised the IPKat, supplied to WIPO by the Kat's friends Franck Soutoul and Jean-Philippe Bresson (INLEX, Paris), contributors to the IP Talk legal newsletter, via a recommendation from Jack McVooty. Apparently

"A publishing company had brought an infringement case against some magazines which had reproduced photographs for which the plaintiff had earlier acquired copyright ownership from paparazzi photographers. On December 5, 2007, the Paris Court of Appeal denied the claim and ruled that copyright protection does not apply to paparazzi pictures.

Right: after years of disappointment, Cyril had to concede that he just didn't have the instincts of a perfect paparazzo ...

Article L. 112-2 of the French Intellectual Property Code includes photographs amongst artistic works liable to enjoy copyright protection as long as they are original. The judge looked at whether the pictures in this case should be considered original artistic works. He found the work of the paparazzi to be passive and focused only on material aspects. The lack of any artistry in the composition of the photograph, the angle of the camera or the choice of the moment was also brought to bear in the consideration of originality. Some economic considerations also weighed in the balance.

To consider Paparazzi photographers as technical persons rather than artistic creators from a copyright perspective makes good sense. This decision does not however definitively exclude paparazzi pictures from copyright protection in France. The reasoning of the Court leaves the door open for French copyright protection to be given to photographs which demonstrate an artistic effect".

Brought up in the common law tradition the IPKat finds it difficult to persuade himself that the sweat of the paparazzis' brows would not entitle them to copyright, however much he may dislike their professional conduct. Merpel says, but just think what a few decisions like this could do for the market for invasive photos.

Indian Supreme Court fails to hit the bottle

The IPKat has learnt from Times of India that lovers of finest Indian whisky can breath a sigh of relief. The Indian Supreme Court has ruled that Indian distiller Khoday India Ltd remains at liberty to sell its whisky under the Peter Scot name. In a case which took only 20 years to proceed through the Indian judicial system, the Scotch Whisky Association challenged the Peter Scot trade marks, which was registered in 1974. Khoday argued that because the SWA waited 13 years to challenge the trade mark, its claim was time-barred.

Reports don't make it clear whether the Supreme Court decided in Khoday's favour because consumers just wouldn't be confused, or because the SWA waited so long to bring its action. The IPKat though can see the merits of the reasoning based on lapse of time. If an IP owner knows that someone else may be infringing its IP, but stands by and watches as that someone invests extensively in a business built on that IP, it is unconscionable for the IP owner to decide to challenge the business at a much later date.

Mind your Ps and Qs -- and watch your Rs

English cases often begin with the formula "R v ...", where "R" is an abbreviation for Rex or Regina (Latin for king/queen) -- but he's found a case brought by P and Q as well as R. It's P, Q and R v Quigley [2008] EWHC 1051 (QB), a decision of Mr Justice Eady from 16 May 2008. You can read it here in full on BAILII. In brief, the anonymised applicants (P, Q and R) applied for summary judgment on their claim for a permanent injunction to stop Quigley publishing "purported information" concerning the sexual activities of P and Q (Q being P's husband and also a former director and chief executive of a company, R).

Right: taking pains to preserve their anonymity, P and Q would adopt disguises whenever they met in public

There was obviously a bit of bad feeling between the parties since Quigley used to work for R but, after his resignation, criminal proceedings had been commenced against him following allegations that he had been siphoning off R's business opportunities -- proceedings which were abandoned on account of Quigley's mental health. Quigley then brought an action for malicious prosecution against R, which was settled. Subsequently Quigley threatened to publish a novella on the internet, starring P and Q, thinly disguised, who were to be depicted as participants in various unsavoury and fictitious sexual activities. Having secured interim injunctive relief, P and Q sought to make the ban permanent on the basis that the publication of Quigley's novella would infringe their rights to privacy under the European Convention on Human Rights, Article 8.

Eady J granted the permanent injunction. In his view

* the balancing act between P and Q's rights of privacy and Quigley's right to freedom of expression under Article 10 of the same Convention was clearly in favour of restricting publication because there was no conceivable public interest in the publicising of scurrilous allegations against P and Q.

* although the threat related to imaginary activities, the publication would be likely to cause distress and embarrassment and would constitute an unacceptable intrusion into a personal and intimate area of their lives -- and very little value could be given to Quigley's freedom to do that.

* any infringement of Quigley's rights was thus necessary and proportionate, having regard to the protection gained by P and Q.

* R's application to restrain publication would be adjourned for full trial because its claim was based on contract, not breach of privacy.
The IPKat, though sympathetic with the claimants, is a little perturbed by this result. If (i) Quigley's story on the internet was true and (ii) P and Q were identified as the persons in it and (iii) their sexual activities were of a private nature, the case for injunctive relief would have been unanswerable. But here it seems to be accepted by both sides that this was a novella, which suggests a work of fiction, and the identities of P and Q were disguised: if the public were not already familiar with the sexual practices of P and Q, why should they assume that the information in the movella was true and referred to P and Q rather than just being the fruit of the apparently disturbed mind of the defendant? Merpel adds, wasn't there an ECHR case involving an artist who had depicted real people in fictional sexual positions, with the court dividing as to whether this was an infringement of Art. 8 or not? Can anyone remember?

Mind your Ps and Qs here and here
Alphabet soup here
Publish your own novella here

Who gets to kname the knut?

In The Bear that came in from the cold, the IPKat related the sad tale of a fluffy little lost bear, abandoned on the roof garden of Olswang's Berlin office with nothing but a barcode (bearcode?) and a trade mark tag to keep him warm. A prize was offered to whoever could come up with the best name for this cute little creature, and the IPKat, aided and abetted by Merpel and Tufty, has been considering the best entries.

Right: this poor bear must roam the wilds in search of food and happiness, having failed to gain admission to any German zoo. Next year he will be too big to sit his Eisbärjungesaufnahmeprüfung (polar bear cub entrance examination)

Disappointingly there was no entry from Craig Smith (Freehills), who has already won two IPKat competitions over the past few years and who, like all great antipodeans, has a truly competitive streak. Knowing his success in these matters, the IPKat suspects that he may already have a cupboard (or should that be cub-board) full of the little fellas, trophy bears from previous competitions. Merpel says, there may be a gender issue here too: usually most entrants in IPKat competitions are male, but this time it was the women who provided the bulk of the name suggestions.

Geographical allusions to Berlin were suggested in the form of Bearlin (or, with umlaut, Bärlin). The bear's diminutive character and sweet disposition were also recalled, through such notions as Cutie Paws and -- these being diminutive Bulgarian terms for a little bear --Mecho or Mechentze (who said he had to have an English name, or a German one). One contestant suggested: "If a little cat is a kitten, maybe a miniature Knut could be called a Knutten". Indeed!

Other aspirants took note of the INTA background to the bear-lost-and-found saga. For example we were offered Binta ('B', for 'bear' + INTA) and Outa (since the bear wasn't registered for the Meeting. Also hypothesised was Intapol: the cub was found during INTA, looks like a POL(ar bear) and might help, support and assist some diligent IP lawyers in their international pursuit of IP fraudsters, etc.

But the wackiest, most devious suggestion -- and the winning one -- comes from Bernadett Keczer (Lovells), who says: "I would name it Sir Arthur Kingsley - Arthur alluding to Arctus and Kingsley to its being on the top of the food chain". Congratulations, Bernadett. Your bear will be posted off to you next week, by which time the IPKat should have found a Post Office in England that hasn't yet been closed down.

Thanks, all of you who entered -- even those who didn't abide by the rules (though Frozen Steiff has a merit all of its own ...)

Thursday, 29 May 2008

Is Barbie just a brat? Does the UK IPO hold the key?

Hello Dolly

The BBC (and lots of others) report that the trial which says the makers of Barbie, Mattel, take on MGA, the makers of the Bratz dolls in the US. The claim isn't that the Bratz are too similar to Barbie. Instead, it's that Mattel actually owns the rights to the Bratz dolls because their designer was working for Mattel at the time the dolls were thought up and then defected to MGA.

The IPKat notes that this one's a jury trial, just to add that little wildcard factor.

Does this describe a key?

The UKIPO thinks it does (see decision here). According to Mr Hearing Officer Pike, "In relation to the goods in question [“Metal keys, metal key blanks, metal locks (other than electric)”] it is my view that this mark will be perceived as no more than an outline of a key." The Hearing Officer drew attention to the fact that shops which offered a range of goods (rather than being specialist key cutters) might need to use such images to draw attention to the fact that they also cut keys.

The IPKat reckons that this is one of the relatively rare decisions where the need to keep certain marks free under s.3(1)(c) has actually made a difference. He's not sure though. Will consumers really see this as the outline of a key? Even if they do, isn't it just a part of a key, which gives it a sort of abstract quality?

It's safer to stick to the Scotch

A discreet little bird with an inquiring mind has emailed this item to the IPKat, who is busily mulling its deeper implications:

"In Scotland, business customers of water services can choose the supplier of some billing and ancillary services (although the water comes from, and sewage goes to, the same old Scottish Water).

If you visit you will see that it seems to be a Scottish Government website that explains the system and lists the current suppliers of services in that market: Aquavitae, Business Stream (part of Scottish Water), Osprey Water (part of Anglian Water) and Satec.

I discovered that site from strange-looking Google Adwords adverts when looking for contact details for one of these companies. It seems that

* if you search for "Aquavitae" your search will generate a advert headed "Aquavitae Water".
* if you search for "Business Stream" your search will generate a advert headed "Business Stream" (sometimes alongside a legitimate Business Stream advert).
* if you search for "Osprey Water" you won't generate a advert.
* if you search for "Satec", you'll generate a advert headed "SATEC".

All these adverts seem to link to the front page of, which is several clicks away from details of any of the suppliers [three clicks, the IPKat thinks], and gives no particular prominence to any supplier.

I am no trade mark expert, but I thought I had vaguely understood Mr Spicy and the change in Google policy on trade mark-triggered adverts, and this seems to fall on the wrong side of them. Google (or the Scottish Government agency which presumably wrote the adverts) is using the trading name of the three companies (at least one of which has applied for trade mark registration: 2471871); and the use made of these names does not seem fair (or whatever the technical term is) given that the purpose is to make the user click on a link to a page which advertises competitors' services as much as the company he was searching for".

The IPKat would not wish to make any profound statement as to what the recent High Court decision in Mr Spicy positively says -- or, rather, denies -- about liability for trade mark infringement (see here for IPKat post on that case), but he's not clear whether the website's use of the trade marks of water services suppliers would be regarded as falling outside the spirit/scope of Google's revised policy anyway, the use in question being done for descriptive and/or informational and not competitive purposes.

Right: "One of Scotland's most famous stretches of water: That's a fine Ness you've got me into ...!"

But Merpel says, that's not the point -- if you see a search result boldly headed "Aquavitae Water", wouldn't you think it was something to do with Aquavitae Water rather than a site that also linked to that company's competitors? And why should I have to end up with Scotland on Tap when all I wanted was a bit of Aquavitae?

Which Kat do you agree with?

Today's the day

Today's the day we begin to put the world right, it seems. The IPKat is delighted to learn that João Tiago Silveira (right), the Portuguese Secretary of State for Justice, will be in Brussels today to participate in the Competitiveness Council. João is going to take the opportunity to request, under "Any Other Business" in the Competitiveness Council agenda, that the Commission comply with the Council Conclusions of May 2007: immediately to propose a reduction of the fees related to the application, registration and renewal of Community trade marks.

CTM fees have become an increasingly important matter for Portuguese as well as European SMEs, since all will benefit considerably from the proposed reduction of fees. Applications for registration of Community trade marks made by Portuguese nationals rose a remarkable 21.2% from 2006 to 2007. The present unjustifiable high fees have given OHIM an unwanted surplus of more than 300 million euros, a pile of money that is growing at the rate of one million euros per week. OHIM has itself called for fees for Community trade marks to be reduced for the benefit of traders and ordinary consumers in the Community.

How to pronounce João (for English-speakers) here, here and here
How to rob Community trade mark applicants here

"Strategies to Improve Patenting and Enforcement"

The IPKat thanks Nick Cunningham (Wragge) for sending him this report on the recent AIPPI UK talk, "Strategies to Improve Patenting and Enforcement", which was prepared by Shauna Garvey (Bristows).

Right: strategies, once the province of the military, are now a matter of immediate concern for the IP community

Nick writes:

"At an AIPPI UK talk hosted by Bristows, Mark Schankerman, Professor of Economics at the London School of Economics, spoke to a capacity audience on “Strategies to Improve Patenting and Enforcement: the impact of patent thickets, renewal fees and litigation insurance”. Professor Schankerman, a noted and long-standing commentator on the economics of patents, is a Research Director of the Programme on Productivity, Innovation and Intellectual Property Rights at the LSE Centre for Economic Performance, a Research Fellow at CEPR, and a Director at LECG.

The seminar began with an analysis of the rapid increase in the number of patent applications over the past few decades. While this trend might reflect growth in innovation, Professor Schankerman noted concerns that increased patenting could impede rather than incentivise innovative activity. Reasons advanced for this included the creation of patent thickets (where fragmented intellectual property rights require the securing of licence agreements from many patentees, inflating the costs of innovation), a corresponding increase in the cost of enforcing patents, and the problems caused by patent trolls.

Professor Schankerman discussed potential strategies to address these issues, motivated by the basic objectives of maintaining innovation incentives, preserving effective competition among innovators, and using market-based solutions.

Patent screening processes could be divided into two categories: ex ante screening (undertaken by the patent office examiner) and ex post screening. The talk focused on the latter, and in particular on two particular forms of ex post screening, the first being litigation by private parties, and the second, somewhat surprisingly, being the level of renewal fees. Recent econometric research demonstrated that the decision to renew a patent is sensitive to economic considerations, including renewal fees, the size of the market, and the threat of litigation. Professor Schankerman postulated that governments could use renewal fees as an active instrument of patent policy to increase the effectiveness of ex post screening. Raising renewal fees could, for instance help to dramatically reduce the number of patents ascribed a low value by their proprietors, and act to deter patent trolls.

He also reported research that demonstrates patent renewal fees can be used to improve the innovation incentives generated by patent rights. Professor Schankerman set out an analysis of renewal fees as a tax on the property right conferred by a patent, and proposed that the effective tax rate be adjusted to provide socially optimal incentives. His analysis suggests that existing renewal fees impose a highly regressive tax on patents, and suggested that renewal fees should be very substantially increased, especially in later years, to make the effective taxation rate progressive.

The heterogeneity of patent litigation was next discussed. Research suggests that litigation is not randomly distributed across technology areas, and that the fraction of patents litigated across the lifetime of the patent varies in accordance with the characteristics of the patent holder. Individuals and small firm patentees were found to have much higher average litigation rates than both US domestic stock-exchange listed firms and foreign firms patenting in the US. By comparison, post-suit settlement rates were shown to be almost identical for all types of patent-holders.

Reasons behind these trends were suggested, but the take-home message was that these differences in litigation exposure for different types of patentees underscore the importance of developing ways to create a more level playing field for patent litigation, in particular through the use of market-based patent litigation insurance. Currently, the take-up rate of such insurance is low, particularly among smaller businesses, and presumably due to the cost of it. Professor Schankerman suggested that the adoption of a rationalised risk model by insurance companies, incorporating his empirical findings about the factors that influence litigation risk, would significantly reduce the cost of such insurance for smaller firms, ultimately providing them with increased bargaining power in the settlement of disputes. The seminar ended with a lively and thought provoking question and answer session.

Wrapping up the session and offering a vote of thanks to the speaker, AIPPI UK President Trevor Cook noted that intellectual property lawyers have not been used to analysing the IP system in economic terms, but that increasingly an economic analysis of the system is likely to become an important part of the IP lawyer’s toolkit.

The full text of Professor Schankerman’s talk, and a report on AIPPI UK’s other seminar this month (“Community Designs - a Silver Bullet or a Rubber Dagger?” Henry Carr QC and Dr Henning Hartwig, 7 May at Linklaters) are available on the AIPPI UK website".

The IPKat notes all of this with interest. It seems to him that, to date, insurance -- in the form in which it has been commercially available to small and medium sized enterprises -- has been peculiarly ill-equipped to do the job it is supposed to do best: there must be plenty of scope for innovation in IP insurance, and also in terms of mutual insurance, that can make policies more attractive and affordable to those who might be expected to benefit from them. Merpel adds, as for patent renewal fees, their adjustment will presumably affect the behaviour of the small fry far more than that of the big battalions -- but it's not the tiddlers that create the thickets and do the trolling, is it?

Wednesday, 28 May 2008

EP Divisionals - a reminder

Providing us with a further example of just how glacially the EPO moves, issue 5 of the Official EPO Journal has just been published, including the partially conjoined Enlarged Board of Appeal decision of G 1/05 & G 1/06. Every European patent attorney will already be familiar with this decision, as it first came out about a year ago, but it has taken this long for it to appear in proper official form, and in all three official languages of the EPO.

(Right: the EPO, pictured yesterday)

The effect of the decision was to bring back a certain degree of sanity to the EPO approach regarding divisional applications, after an apparently rogue Board of Appeal (in T 39/03) took the preliminary view that a divisional application containing subject matter not found in its parent application would be invalid on filing, and could not therefore be amended to correct this defect. This, of course, went against any sensible interpretation of Article 76 EPC taken until that time, causing much annoyance and confusion among patent attorneys, who had to then make doubly sure that any divisional applications they filed definitely had no added subject matter, just in case the decision was upheld by the Enlarged Board. The result was that many divisional applications were filed in the meantime that were identical to their parents, and the public was even less sure as to what the applicant actually wanted to obtain protection for.

Thankfully, and undoubtedly at least in part due to the contribution provided by the late Sir Nicholas Pumfrey, the Enlarged Board decided that the previous sensible approach was the correct one. The decision is well summarised by the headnotes:

"1. So far as Article 76(1) EPC is concerned, a divisional application
which at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.

2. In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed."

The IPKat also found the following comments, towards the end of the decision, particularly illuminating:
"13.5 On Article 76(1) and Rule 25 EPC [now Rule 36] as presently worded the Enlarged Board of Appeal sees no adequate basis for defining any additional requirements to be imposed on divisional applications beyond the requirements that all applications have to fulfil as well. It appears that what applicants consider a legitimate exploitation of the procedural possibilities afforded by the EPC, others consider an abuse in relation to the law as they think it ought to be rather than as it is. The Board finds it unsatisfactory that sequences of divisional applications each containing the same broad disclosures of the original patent application, by means of at least an unamended description, should be pending for up to twenty years. If administrative measures, such as giving priority to the examination of divisional applications and bundling and speedily deciding co-pending divisional applications so as to minimise the possibility for applicants to keep alive subject-matter on which the Examining Division had already given a negative opinion in one application by means of refiling the same subject-matter again and again, are not adequate, it would be for the legislator to consider where there are abuses and what the remedy could be."

Without wanting to make the EPO into Aunt Sally, the IPKat would like to gently point out that those who might like to curb the (sometimes perhaps over-enthusiastic) use by some applicants of all the legitimate options at their disposal under the EPC might like to review this decision again. If there really is any abuse of the existing system, the solution may need to be to change the law itself (difficult and long-winded as this may be, as evidenced by the long gestation period of EPC2000), and not to make life arbitrarily harder for all applicants.

Jersey now safe for EU data

Breaking news today is that the Commission Decision of 8 May 2008 pursuant to Directive 95/46 on the adequate protection of personal data in Jersey has now been posted on the European Union's Official Journal website.

Right: Seymour Tower, Jersey, looks a safe enough place for storing personal data

What does this mean? Let the IPKat explain:

1. Under Directive 95/46 itself ["on the protection of individuals with regard to the processing of personal data and on the free movement of such data"], Member States are required to provide that the transfer of personal data to any third country may take place only if that country in question ensures an adequate level of protection and if the Member States' laws implementing other provisions of the Directive are complied with before that transfer takes place.

2. The Bailiwick of Jersey a dependency of the British Crown (being neither part of the UK nor a colony) and it enjoys full independence for most purposes (but not international relations or defence). Jersey is thus a "third country" within the meaning of the Directive.

3. The UK's ratification of the European Convention on Human Rights and the Council of Europe Convention on the Protection of Individuals with regard to automatic processing of personal data were extended to the Bailiwick of Jersey, which has implemented these standards in the Data Protection (Jersey) Law 1987, the Data Protection (Amendment) (Jersey) Law 2005, and the Data Protection (Jersey) Law 2005 (Appointed Day) Act 2005, together with the requisite secondary implementing legislation.

4. The legal standards applicable in Jersey cover all the basic principles necessary for an adequate level of protection for natural persons, guaranteed by judicial remedy and by independent supervision carried out by the Data Protection Commissioner. Accordingly Jersey can safely be regarded as providing an adequate level of protection for personal data under Directive 95/46.
The IPKat is delighted with this. He hazards a guess that a good deal of personal data has already been unwittingly exported to Jersey in the mistaken belief that it is part of the United Kingdom. Merpel says, but you haven't told readers that, under Article 3 of the Decision, the transfer of data can be suspended if it seems that the authorities in Jersey aren't taking proper care of that data: that should keep the authorities there on their toes.

Recipe with Jersey cream here
Jersey cows here

They could have asked for 50 million ...

From the IPKat's friend ace reporter Stephanie Bodoni (Bloomberg) comes the exciting news that a group of Belgian newspapers is seeking as much as 49.1 million euros (US$77 million) from search-and-advertise corporation Google in a lawsuit over the right to feature links to the publishers' content on the internet.

Right: Copiepresse propose to replace search engines with teams of highly-trained readers ...

The group in question, Copiepresse, is not unknown to the IPKat's readers (see earlier items here and here): it is a confident, indeed aggressive body and it is now asking a Brussels court to award damages of between 32.8 and 49.1 million euros, following its successful claim in February last year that Google had infringed Belgian copyright laws by publishing links to articles on Google News without the newspapers' permission.

Google and Copiepress have been in discussions since that court ruling -- against which Google has lodged an appeal. However, the two sides have failed to sort their dispute out by consensual means. The damages sought in this action are in addition to the fine of 25,000 euros per day levied against Google until such time as it has removed all Belgian news content from its market-leading service (which Google is said to have done).

Left: this is how Digital Lifestyles views it
Copiepresse is also seeking to have Google publish the court's ruling last year, "in a visible and clear manner" on and for a period of 20 days (publication of court orders is one of the remedies available to the courts under the IP Enforcement Directive, Directive 2004/48). If Google doesn't publish the ruling, Copiepresse says that it will seek a further 1 million euro daily fine.

Paper chase here
Make a paper cat here

Tuesday, 27 May 2008

Drip, drip, drip ... out comes the ACTA strategy

Via the observant eye of Kristof Neefs (Laga) and the diligent pen of William Patry comes an item from Wikileaks concerning the leaked memorandum regarding the Anti-Counterfeiting Trade Agreement (ACTA: see Wikipedia entry here) ,a proposed new IP enforcement treaty and a subject that has so far received little attention from the IPKat (see just one earlier post, here) or, it seems, most other people.

Right: once a nuisance, leaks are increasingly becoming an essential way of finding out what's going on

According to Wikileaks:

"A “Discussion Paper on a Possible Anti-Counterfeiting Trade Agreement” was reportedly provided to select lobbyists in the intellectual property industry, but not to public interest organizations concerned with the subject matter of the proposed treaty.

Wikileaks has obtained the document.

The agreement covers the copying of information or ideas in a wide variety of contexts. For example page three, paragraph one is a "Pirate Bay killer" clause designed to criminalize the non-profit facilitation of unauthorized information exchange on the internet. This clause would also negatively affect transparency and primary source journalism sites such as Wikileaks.

The document reveals a proposal for a multi-lateral trade agreement of strict enforcement of intellectual property rights related to Internet activity and trade in information-based goods hiding behind the issue of false trademarks. If adopted, a treaty of this form would impose a strong, top-down enforcement regime, with new cooperation requirements upon internet service providers, including perfunctionary disclosure of customer information. The proposal also bans "anti-circumvention" measures which may affect online anonymity systems and would likely outlaw multi-region CD/DVD players.

The proposal also specifies a plan to encourage developing nations to accept the legal regime.

Trade representatives were hoping to formalize the agreement at the G-8 summit in July 2008".
According to IP Justice, which Wikileaks cites:

"After the multi-lateral treaty’s scope and priorities are negotiated by the few countries invited to participate in the early discussions, ACTA’s text will be “locked” and other countries who are later “invited” to sign-on to the pact will not be able to re-negotiate its terms. It is claimed that signing-on to the trade agreement will be "voluntary", but few countries will have the muscle to refuse an “invitation” to join, once the rules have been set by the select few conducting the negotiations.

The US is negotiating ACTA through the Office of the US Trade Representative (USTR), an office within the Bush Administration that has concluded more than 10 “free trade” agreements in recent years, all of which require both the US and the other country to increase intellectual property rights enforcement measures beyond the international legal norms in the WTO-TRIPS Agreement".
The IPKat is very anxious about all of this -- not because he is in favour of counterfeiting (which he emphatically is not) but because it seems to him that there is an unhealthy lack of debate both as to substance and as to strategy. A Google search of the term "Anti-Counterfeiting Trade Agreement" gave just 60,500 hits worldwide -- the number of UK hits being a paltry 482. This suggests that little thought and information is being publicly aired concerning this proposal. Merpel is also anxious, because she wants to be assured that, in killing the cancer of counterfeiting, the poor patient will not be killed or maimed in the process.

Mrs Plug the Plumber here

Operation Scuttle!

The IPKat recently received this note from his respected and learned friend Alexander von Mühlendahl (Attorney-at-Law, Bardehle Pagenberg, Munich, and former Vice-President of the Office for Harmonisation in the Internal Market). Since it concerns a matter of substantial importance, the IPKat is pleased to give it maximum publicity. It reads as follows:

"A "Cold" Revision of the Community Trade Mark Regulation

The author of this note learned recently, a few weeks ago, from an article in a German law journal that the European Commission was on its way to proposing or adopting a proposal for a revised version of the Community Trade Mark Regulation, for the sake of what is called "Better Regulation" in euphemistic Brussels language.

One purpose of this exercise is said to be to renumber all Article numbers from the Regulation which have been added over time, and amend the succeeding Articles as well. In our case this would mean that Article 44a becomes Article 45, Article 45 becomes Article 46 etc, the other "a" Articles being Article 48a, Article 77a, Article 78a, Article 118a, and Article 159a. Another purpose is, perhaps, to improve or in any event review and “harmonise” the language versions of the Regulation.

The same activity may apply to the Implementing Regulation, which also has an occasional “a”-Rule, and other legislative acts in the filed of Community trade marks, and perhaps also other acts in which we are particularly interested, such as the Community Design Regulation or the Community Plant Varieties Regulation.

During a recent meeting (of the Madrid Working Party's 5th Session) in Geneva (5 to 9 May 2008) it was indeed confirmed by the Commission representative there present that the matter -- in the hands of the Commission's Legal Service -- was far advanced and about to be concluded. I expressed some surprise, mentioning that I had become aware of this project -- which seems to have a long history -- only very recently. It seems that by now OHIM knows or knew about the proposal, but certainly during my time at OHIM (which ended in October 2005) I was not aware of the project. ECTA representatives at the recent Geneva meeting were as much unaware of the project as INTA representatives and those of other NGOs.

We may have different views of the benefits of such nettoyage, the author not being among the friends of such an exercise. There may also be a distinction between Directives, which must be implemented in national law, and Regulations, and a "re-codification" may be useful or even necessary when the underlying act has been changed many times.

But the Community Trade Mark Regulation is different. It is directly applicable in all Member States, and the changes have been very few. We have lived with Articles 6bis, 6ter, 6quater, 6quinquies, 6sexies, and 6septies (and others) of the Paris Convention, and Articles 3ter or 4bis (and others, including Article 9sexies) of the Madrid Agreement, without any damage to the legibility or utility of the Convention. We could easily live with the "a" Articles in the CTMR for many years to come, the more so now that the Commission has promised to undertake a general review of the European trade mark system, which may lead to new legislative proposals in due time.

The bureaucratic "obstacles" that a Regulation presents with a few "a" Articles may be easily removed by simply re-numbering the legislative act. This neglects however the impressive bureaucratic and administrative consequences of this "cleaning" exercise, when we consider the need to review and revise guidelines, practice notes, standard forms, standard texts at all levels: OHIM, national offices, courts, lawyers and trade mark attorneys in all 27 Member States and abroad. And this is not to mention the task of reprinting the otherwise unchanged text, the many mistakes that will exist or be made until new editions of books, commentaries etc. have issued. "Cui bono?"

What is disturbing also is the manner of going forward with this program. It seems that the NGOs were not informed, and even less consulted, about this legislative activity. I am also not aware of any "impact analysis" that should be carried out by the Commission before undertaking such an activity.

The project should be scuttled. The work may be advanced in Brussels, but there still is time to put some sticks into the spokes of the Brussels wheels and stop the train. The Community Trade Mark Regulation can be changed only by unanimous vote, and the users of the system should be in a position to influence their governments so that the adoption of the envisaged changes may still be blocked".

Although the IPKat is an extremely tidy and well-ordered Kat, he has never been an advocate of change -- even if it means tidying up -- for its own sake. He is entirely in sympathy with the plea to leave things exactly as they are, at least until such time as the legislation in question is so heavily revised and amended that it is better to start the numbering afresh. Merpel agrees: it's a real hassle having to persuade students that you've given them the right number when they've got out-of-date text books ...

Draft Agreement, not many stakeholders stifled ...

The IPKat's learned colleague Axel Horns (IP::JUR) posted an item last week that does not seem to have generated the degree of attention it deserves. Axel's item begins as follows:

"Draft Agreement on the European Union Patent Judiciary

The EU Council has published Document 9124/08 issued by the Slovenian EU Presidency and addressing the Working Party on Intellectual Property (Patents). The title of the Document is Draft Agreement on the European Union Patent Judiciary.The revised Presidency working document contains a Draft Agreement on the European Union Patent Judiciary for discussion at the meetings of the Intellectual Property (Patents) Working Party on 28 May and 11 June 2008. The revised version takes account of the discussions in the Working Party on 2, 8 and 25 April 2008 as well as of comments and observations received from stakeholders. Furthermore, it also comprises two lists of issues to be included respectively in the Statute of the European Union Patent Judiciary and in the Rules of Procedure, which need to be developed at a later stage".
The IPKat has taken a quick look at the Draft Agreement and notes the following highlights:

"Article 3: Scope of Application

This Agreement shall apply to:

(a) any Community patent;
(b) any supplementary protection certificate issued for a Community patent;
(c) compulsory licenses in accordance with Article [21] of Council Regulation (EC) No … on the Community patent;
(d) any European patent which was granted and not yet expired at the date referred to in Article 60 or was granted after that date, without prejudice to Article 58; and
(e) any application for a patent which is pending at the date referred to in Article 60 or filed after that date".

So now we know what the Court's bread-and-butter subject matter will be, and that we can expect a Council Regulation on the Community patent in the foreseeable future (no shock there).
"Article 10: Eligibility criteria

(1) The Court shall comprise both legally and technically qualified Judges. Legally qualified Judges shall be qualified for judicial functions at the national level [this doesn't specify experience or qualification to deal with IP cases -- but see below]. Technically qualified Judges shall have a university degree in a field of technology.

(2) Judges shall ensure the highest standards of competence in the field of patent litigation [the IPKat wonders how this might be achieved]. They shall have adequate knowledge of civil law and a proven experience in patent litigation [this should exclude judges from most of the EU's 27 countries, then]".
And now for something completely different -- training for the patent judiciary:

"Article 14: Training Framework

(1) A training framework for Judges shall be set up in order to improve and increase available patent litigation expertise and to ensure a broad geographic distribution of such specific knowledge and experience [so we might get Estonian judges sitting in Amsterdam?].

Right: wasting no time--the Germans are training their next generation of European patent judges from the age of 11

(2) The training framework shall in particular focus on:

(a) internships in patent divisions having a substantial number of patent litigation cases;
(b) improvement of language skills [the IPKat has a few suggestions for one or two British judges who might want to brush up their basic English ...];
(c) technical aspects of patent law;
(d) the dissemination of knowledge and experience on civil procedures for technically qualified Judges; and
(e) the preparation of candidate-Judges.

(3) The training framework will provide for continuous training. Regular meetings will be organized between all Judges of the Court in order to discuss developments in patent law and ensure consistency of jurisprudence [Consistency? Is this designed to deter anyone from the EPO?]".

Passing over the new unified substantive law on patent infringement, which looks as though it was inserted as an afterthought, let's take a look at the professions:

"Article 28: Representation

(1) The parties shall be represented by lawyers authorized to practise before a court of a Contracting Party who may be assisted by a European Patent Attorney, who is a national of a Contracting Party entitled to act as professional representative before the European Patent Office (hereafter: European Patent Attorney), and/or by patent attorneys with proven patent litigation experience.

Left: European Union Litigation Certificates are much-sought-after. Even a slightly used one can still fetch a tidy sum on eBay ...

(2) Notwithstanding paragraph 1, European Patent Attorneys and patent attorneys with proven patent litigation experience [now, the IPKat would love to know what this means and how it is to be proved] who are in possession of a European Union Litigation Certificate [A WHAT? And where might one obtain such a thing? At what expense? And how long will it take? Who will pay - apart from the clients, that is?] may represent the parties in actions for revocation of a patent before the central division.

(3) Representatives of the parties and their assistants shall enjoy [good choice of words!] the rights and immunities necessary to the independent exercise of their duties.

(4) Representatives of the parties and their assistants shall be obliged not to misrepresent cases or facts before the Court either knowingly or with good reasons to know [how very different from Community trade mark proceedings, where in some cases one wonders if there isn't a duty to do so]".

There's lots more where all this comes from, dealing with languages, appeals, provisional and final relief, stays -- as a sop to the common lawyers and some Scandinavians -- and even allowing judges to deliver their own separate judgments, whether dissenting from the majority or concurring with it.

IPKat is curious to know what his readers think about this: he doesn't think they'll be terribly happy. Merpel says, come now, you're just over-dramatising. And isn't this a neat way to narrow the scope for patent attorneys to litigate and make sure the work is safe and sound in the hands of real lawyers, like in Germany?

Monday, 26 May 2008

Latest JIPLP

Still ahead of its cover date, the June 2008 issue of the Journal of Intellectual Property Law (JIPLP), published monthly by Oxford University Press, is now being rammed into letterboxes across the civilised world. In the Editorial, "Paying for the privilege", IPKat team blogger Jeremy discusses the cost of IP litigation, making reference to the vast expense (though cheap at the price) incurred by BlackBerry-maker RIM in preserving its right to carry on making money. He writes:

"... A business can make a ‘yes or no’ decision as to whether to enter a new market, outsource a manufacturing process, or invest in a new IT system—but it cannot make a ‘yes or no’ choice as to whether to be involved in an IP suit unless it can safely say that it is incapable of being at the wrong end of one.

It is sometimes erroneously thought that any business can live within its means. With unlimited resources, it can pay for the highest level of legal representation whereas the poorer, smaller players who must count their pence can engage the expertise of humbler law firms. But this is only half the picture. Depending on the jurisdiction and the nature of the infringement, an unsuccessful small litigant may be ordered to pay all, or at least the lion's share, of the costs of the more asset-wealthy foe which has sued him and won...."
Other features in this issue include
* "Legal questions about illegal art" by Polish fellow blogger and legal scholar Tomasz Rychlicki (Patpol, Warsaw), this being a probing piece on copyright issues involving graffiti;

* the Australian duo of Andrew F. Christie and Fiona Rotstein, in "Duration of patent protection: does one size fit all?", tackle the real issues that underlie the determination of how long a patent should last, throwing up a quite surprising answer;

* David C. Berry, of the Thomas M. Cooley Law School, reviews US
Supreme Court practice regarding declaratory judgment jurisdiction in the light of its recent MedImmune decision;

* Kamal Preet, from the Franklin Pierce Law Center, argues that America needs European-style 'fashion police'.
Read the editorial to this issue in full, plus all the editorials of the past twelve months, here
Full contents of this issue here
For free sample, click here; to subscribe, click here; to write, click here
50 most-read articles since 2005 here

Sunday, 25 May 2008

Recent publications

Here are two recent publications from Oxford University Press that have recently come to the IPKat's attention:

The first is International Copyright Law and Policy, by the internationally-respected German scholar Silke von Lewinski. Professor von Lewinski has an international dimension to her own academic persona, being Head of Department at the Max Planck Institute for Intellectual Property Law, Munich and Adjunct Professor, Franklin Pierce Law Center, Concord.

What the publisher says:

"This book deals comprehensively with the major treaties and conventions covering the law of international copyright and neighbouring rights. It explains the complex legal, economic and political background to the treaties and their contents, and how they interrelate. There is also practical commercial discussion of how copyright and neighbouring rights are treated in international trade measures such as GATT, WTO, NAFTA, and bilateral and unilateral treaties, with a section devoted to how unilateral trade measures are applied by the USA in particular. There is also some discussion of how international copyright law and neighbouring rights may develop in the future.

The book is intended to be a definitive account of the law of international copyright and neighbouring rights, but it is also intended to be accessible to non-specialist practitioners. It is fully cross-referenced to a forthcoming companion volume, European Copyright Law and Policy (expected to publish in 2008), offering readers a comprehensive approach to the subject. The author has been consulted on copyright policy on numerous occasions by various governmental and non-governmental organisations within and outside the EC, and therefore is ideally placed to give an inside view on how policy is formed".
What the IPKat says:

"Words like 'definitive' and 'comprehensive' are proud boasts that are easier to claim than to justify, and the author's subject is a vast one. However, if one starts from the present and works backwards, rather than going back to the beginning in the 19th century and working forwards with an evolutionary approach, the project becomes instantly more manageable because a measure of judicious hindsight provides the tool that distinguishes the relevant from the irrelevant, the major issues from the sidelines. It is difficult now to appreciate the intensity of debate over issues such as how to treat the cross-border footprint of broadcasts and what to do with so-called 'multimedia' products, when the dust of history has settled on them.

The best bit of this book is its effort to provide a basis for the reader to grasp the drift from 'classical' international copyright law to the policy-rich and politically loaded territory of GATT, NAFTA and the World Trade Trade Organization's TRIPs Agreement. Both this and the development of a body of regional or local international copyright law within the European Union are the result of copyright's success--as viewed by its traditional beneficiaries, the rights holders--in acquiring market shares and generating revenues. The need for balance between rights holders, competitors and consumers has increasingly become the focus of international copyright now that early objectives such as the establishment of reciprocal recognition and norms of minimum protection have largely been achieved.

The author is to be congratulated on her endeavours, which provide a thoughtful and well-referenced springboard for all further studies in this field".

Bibliographic details: price £75.00 (Hardback). lx + 618 pages. ISBN-13 978-0-19-920720-6. Further details from OUP's website here. Rupture factor: quite substantial - this book is heavier than it looks.

Intellectual Property, Trade and Development: Strategies to Optimize Economic Development in a TRIPS-Plus Era, edited by Daniel Gervais, was published at the tail-end of 2007. The editor, a professor at the University of Ottawa, is one of the best-known and prolific scholars in the field of TRIPs-related law. The fact that this book is published by OUP seems highly appropriate, given that OUP also publishes Trade Related Aspects of Intellectual Property Rights: a Commentary on the TRIPs Agreement by that other prolific TRIPs commentator Carlos Correa, who provides this book's analysis of the impact of TRIPs and TRIPs-Plus on Latin America.

What the publisher says:
"There is a fast-growing need in many countries, in particular in the developing world, to come to a greater understanding of the links between intellectual property, trade rules and economic and social development and to find new ways of implementing intellectual property rules and optimizing their effects. This book provides a comprehensive analysis of the latest legal, economic, political and social research and advanced current thinking on the relationship between intellectual property and trade and development.

The first part of the book will cover the theoretical basis of the connections between intellectual property, trade and development. It will then go on to provide the reader with options as to how intellectual property rules can be incorporated in the local legal framework and how the positive impact of intellectual property standards can be maximized while minimizing welfare costs. This will include implementation strategies for TRIPS and TRIPS Plus norms, and also the use of measures outside the traditional scope of intellectual property norms. These measures will range from education to the establishment or enhancement of a solid industrial and research base, to fighting pandemics such as HIV/AIDS. Possible economic strategies and proposals are also offered on the protection of traditional knowledge and indigenous resources".
What the IPKat says:

"It is a multi-authored collection of chapters that address the same old problems that have bedevilled intellectual property in the post-colonial era that followed the Second World War. These problems are not difficult to identify: they are essentially these: (i) how to get developing countries to help IP owners from developed countries to enforce their rights; (ii) how to help developing countries get something positive out of their IP systems instead of cultural and scientific dependence, balance of payments deficits and workforces with permanent skill deficits; (iii) how to enable healthcare innovation, communications technologies and other IP-derived benefits to be enjoyed by the vast number of humans unable to pay for them; (iv) how to help developing countries identify things that they too can protect and exploit commercially as IP.

It seems to the IPKat that, while the questions have not changed, the manner and the technique of discussion certainly have. There are now "discourses" and "narratives" where once there were discussions and debates; terms such as "technology transfer" sound old and rusty, with a somewhat patronising air.

What is important, however, is not the terminology with which the problems are analysed but the quality and the sensitivity of the analysis itself. In this, Professor Gervais is to be congratulated for assembling a team that includes some of the most advanced and humanity-oriented authors of this generation. Contributors include such household names as Graeme Dinwoodie, Rochelle Cooper Dreyfuss and Jerome Reichman. The only thing missing is a powerful articulation of laisser-faire and new liberal philosophies that might provide a dramatic counterpoint to the large degree of consensus reflected in this excellent volume".

Bibliographic details: Price £85.00 (Hardback), xlviii + 564 pages. ISBN 13 978-0-19-921675-8. Rupture factor: moderate. Further details from OUP website here.

Saturday, 24 May 2008

Arrow Generics v Akzo

It's not every day you find a Scottish patent revocation decision, but last Tuesday the First Division of the Inner House of the Court of Session (Lord President, Lord Kingarth, Lord Clarke) was in action in Arrow Generics Ltd v Akzo NB (represented in Scotland by Organon Laboratories Ltd), [2008] CSIH31. The patent in question (EP0389035) related to the steroid tibolone, in particular to a form of the drug having a high degree of crystalline purity, and claimed the following:

"1. A pharmaceutical composition which contains a pharmaceutically suitable solid carrier and the compound having the structure (7ά, 17ά) - 17 - hydroxy-7-methyl-19-nor-17-pregn-5(10)-en-20-yn-3-one, characterized in that the compound is crystalline pure, which purity is greater than 90%.

2. The pharmaceutical composition of claim 1, characterized in that the crystalline purity is greater than 95%.

3. The pharmaceutical composition according to claim 1, characterized in that the crystalline pure compound has the monoclinic P21 form.

4. The pharmaceutical composition according to claim 1, characterized in that the crystalline pure compound has the triclinic P1 form.

5. A method for the preparation of a crystalline pure compound for use in a pharmaceutical composition accordingly to claim 3, characterized in that the polymorphous compound is crystallized from mixtures of water and acetone or ethanol, or from ethyl acetate, acetonitrile, or acetone-hexane mixtures.

6. A method for the preparation of a crystalline pure compound for use in a pharmaceutical composition according to claim 4, characterized in that the polymorphous compound is crystallized from an apolar solvent."

Only claims 1-3 and 5 were in question, claims 4 and 6 not being in issue. The question was whether the Lord Ordinary at the first instance (noted previously by the IPKat here) had been correct in determining that the claims were not obvious in light of one particular prior art document disclosing tibolone in a crystalline form. The document (Declerq) did not disclose that tibolone occurred in more than one crystalline form, as the discovery that tibolone was in fact polymorphic was made only later on. The Lord President, in the leading judgment, considered that this did not make the claimed invention obvious:
"[T]he circumstance that following the experimental parameters described in Declercq the skilled person would ordinarily obtain crystals, some at least of which were monoclinic, does not entail that 'the invention' would thereby be performed. The invention, properly understood, was constituted by a pharmaceutical composition having a high degree of crystalline purity in the active ingredient. While the skilled person, following Declercq, might be expected to obtain a mixture of crystalline forms (including some monoclinic), from which a particular crystal might by some process under the laboratory microscope have been isolated, Declercq did not teach how to obtain a product of high crystalline purity for pharmaceutical use - even if the skilled person for some reason was alert to the need to isolate a particular form, notwithstanding his ignorance of polymorphism in tibolone.
In these circumstances, while Declercq enabled the skilled person to take certain steps, it did not enable him 'to perform the invention'" (paragraphs 106-107).

The Lord President considered that the use of tibolone to a high degree of crystalline purity as the active ingredient in a pharmaceutical composition was not obvious. Preliminary to that inventive step was the discovery by Akzo (not itself an invention, according to the Lord President) that tibolone was in fact polymorphous, i.e. with at least two crystalline forms. That discovery led in turn to the practical identification of the product, involving use in a pharmaceutical composition of crystalline pure tibolone having distinct advantages over a general mixture of forms, these advantages being stability and reproducibility. The skilled but unimaginative man would not have taken these steps or any of them.

That was effectively the end of the story, as far as the patent was concerned, since Lord Kingarth agreed with the Lord President's conclusions. Lord Clarke, however, did not agree entirely and considered that claims 1-3 were not inventive:
"[U]pon discovery of the polymorphous character of tibolone, the patentee, no doubt, sought to address the consequences of that discovery. In my judgment, however, they did so by virtue of what is addressed in claims 4, 5 and 6. In claims 1-3, however, as they are worded, what was being claimed was the incorporation of monoclinic P21 form tibolone, up to a level of purity greater than 90%, which would include 100%. Claims 1-3 do not address the means (whether robust or otherwise) whereby a purity of more than 90% of monoclinic P2 tibolone is to be produced. They are, as previously noted, product claims, not process claims. They seek a monopoly in the product so described. My acceptance, shared by all members of this court, of Arrow's submission that these claims required to be read as embracing single crystal pharmaceutical compositions has to be kept in mind. The composition, tibolone, had been known since the 1960s. I accept that the skilled man would, at the priority date, have known that it was being developed by a drug company and was of particular interest in relation to the treatment of menopausal complaints. After Declercq, he knew also that the crystalline structure had been discovered as monoclinic form. Prior to the priority date tibolone had been put on the market in pill form. The question then comes to be, whether it would have been an inventive step to do what claims 1-3 embrace. [...] I repeat that the knowledge, or otherwise, of the discovery of the polymorphous character of tibolone seems to me to have bedevilled the discussion of this question and certainly led, in my view, the Lord Ordinary to misdirect himself when dealing with the matter. On this branch of the case, it seems to me that the question is, can it be said to be inventive to place a single crystal of monoclinic form 1 tibolone in a pill, tablet or capsule? Judging matters from the viewpoint of the skilled man who was aware of only Form 1 monoclinic tibolone as at the priority date, I agree with Arrow that, on the evidence, it cannot" (paragraph 162).

All this sounds very familiar to the IPKat, particularly after the recent Court of Appeal judgment in Lundbeck (see here for details). He can see the difficulty in distinguishing in cases such as these where the inventive step (if there is one) actually lies. The discovery itself is apparently not in itself enough, but the application of the discovery (even if this may seem quite obvious, at least to the non-specialist eye) may well be. Merpel would , however, like to know if Akzo would be happy with Arrow making and selling tibolone according to the pre-patent recipe. She suspects not...

Friday, 23 May 2008

Friday fortitude

Please don't forget to check out the 'Forthcoming Events' feature in the left-hand side-bar of the IPKat's front page --and remember to enjoy yourself this weekend. If you've been to Berlin this past week for the INTA Meeting, you'll either have a sore head or sore feet. Whichever you've got, the Kats wish you better.

"Spurious precision" is the title of a talk, advertised on the IP Finance weblog, which Oliver Rivers is giving on Tuesday 27 May, 5pm at the London office of Olswang, solicitors (map here). Oliver is discussion the tension between the need to place IP rights within a range of values and the requirement that it have one ascertainable value at the point at which something happens to it. Light refreshments and a chance to chat (till 6.30pm) will also be provided -- and there's no charge for admission. If you want to come, email IPKat team blogger Jeremy here.

The Boards of Appeal of the Office for Harmonisation in the Internal Market deserve a warm round of applause for producing their 2007 case-law overview. This review has been brought out by the Boards' Documentation and Support Service. It contains a generous selection of decisions from the previous calendar year, covering 36 pages, and is structured so as to make it easier for readers and users to access decisions of both substantive and procedural significance. There is also a reminder that the summaries are only there for helpful guidance and have no binding effect -- not even on the Boards themselves. The IPKat rather hopes that this useful review will be complemented by the addition of significant decisions of the Opposition Division and Cancellation which -- through no fault of their own -- were never appealed.

"Nike Signs Big Brown To $90 Million Horseshoe Contract" is another of the Onion's great brand satires. The text reads, in part:

"Slated for release on June 1, the lightweight, U-shaped Air Brown horseshoe features Nike's patented air-cushioning system, consisting of a pressurized gas encapsulated in polyurethane and aluminum. According to Nike engineers, the innovative technology was created to provide equal measures of comfort, support, and performance on both dirt and grass tracks by reducing shock, distributing pressure, and protecting the hooves from overpronation. Big Brown intends to debut the Air Brown horseshoes on June 7 at the Belmont Stakes, when he attempts to become the first horse to win the elusive Triple Crown in 30 years.

Although Big Brown was approached by a number of suitors from sportswear manufacturers including Adidas, Reebok, and Pony, the undefeated 3-year-old was ultimately won over by Nike's willingness to work closely with him to create a horseshoe conforming to his strong sense of personal style as well as his physical needs. Big Brown was reportedly impressed by Nike's efforts when technicians used cameras to record his gait from multiple angles while he ran on a treadmill".

Thanks, Birgit Clark, for this delightful link to the news that Japan's Olympic men's and women's soccer squads are not expected to be allowed to sport their national emblem on their jerseys, following the tightening of Olympic trade mark display rules.The International Olympic Committee has notified the Japanese Olympic Committee that the use of the emblem, a three-footed crow, will not be allowed at this summer's Games.The IOC apparently allows only manufacturers' labels and national flags.

There's not much time left for anyone planning to enter the IPKat's Name the Bear competition. Details here.

Microsoft and refusal to license: some serious discussion

Here's a report of an event that the IPKat missed last week, for which he thanks his good friend Estelle Derclaye:

"Estelle Derclaye, Lecturer in law at the University of Nottingham, attended the 16 May conference “The Microsoft case (for details of which, click here and here): the IT industry and the future of EC competition law” at the Birmingham Law School. The panellists were Nicholas Banasevic (DG Competition), Mark Powell (White and Case, Brussels), James Flynn (Brick Court Chambers London), Professor Steven Anderman (Dept of Law, University of Essex) and Derek Ridyard (RBB Economics, London). Dr Luca Rubini, a competition law lecturer at Birmingham Law School, was in the chair.

The panel was neatly balanced: Nicholas Banasevic and James Flynn were on the side of the Commission while Mark Powell was on that of Microsoft. Derek Ridyard, being an economist, gave the outsider’s view, and Steven Anderman was sitting as the independent academic.

Nicholas Banasevic’s task was to summarise the case (a difficult task to do in 25 minutes); his clear message was to stress that the case was highly fact-specific, a reassuring fact, especially as it came from the Commission. Mark Powell shed much light on the complex facts, also stressing the danger posed by the new, broader but not clearer test set by the CFI of “limitation of technical development” (erasing de facto the 'new product' condition established in IMS Health) for IPR holders -- especially in terms of the signal that the European court is sending to other jurisdictions such as China, which adopted a provision similar to Article 82 of the EC Treaty in their competition law.

Steven Anderman highlighted the language used by the CFI, “risk of eliminating competition” rather than “likely to or high probability”, which now makes it far easier to establish that this condition is fulfilled in refusals to supply/licence cases. Like Mark Powell he stressed the breadth of the new “limitation of technical development” test. James Flynn gave a detailed account and comment on the tying aspects of the case, which are less intellectual property-specific. Finally, Derek Ridyard explained the economics of tying and stressed the “illogics” and consequent ineffectiveness of the Court’s remedy: if versions of Windows Media Player can now be available on the market bundled or unbundled (with Windows) and the bundled version does not cost less than the unbundled one, then who will buy the unbundled one? On the issue of refusal to license, he also thought that the old test of “new product” was in any case vague (what is a new product? a better one, a cheaper one or, as Derek Ridyard suggested, the same product with a cuddly toy attached to it?). Being largely useless the new test of limitation of technical development does not change the law much in the end.

The presentations were followed by a lively debate, with all speakers giving their opinions. It seemed that they were in general agreement that Microsoft was like Magill, a highly fact-specific case, and that IPR holders should not overly worry (after all Microsoft was a near-monopoly and its IPR were mainly in raw information, on which it had for years recouped its investment). However, as one conference delegate mentioned to Estelle at the drinks, the ruling still leaves lawyers in a difficult position on how to advise clients holders of IPR, as the new test for refusal to license is much less clear than the previous IMS Health one. To conclude, it was a high quality, thought-provoking and well-attended event.”

Highway 61 Referred

While the IPKat's attention was transfixed yesterday by the Aerotel patent and all sorts of other distractions, Advocate General Dámaso Ruiz-Jarabo Colomer was advising the Court of Justice of the European Communities in Case C-240/07 Sony Music Entertainment (Germany) GmbH v Falcon Neue Medien Vertrieb GmbH that works covered by US copyright that was granted protection in the UK are not covered by Directive 2006/116 on the term of protection of copyright and certain related rights. The German Bundesgerichtshof had sought a preliminary ruling as to whether Sony BMG's rights were covered by this Directive, which gives copyright protection throughout the European Union to works that were protected in one of the countries on 1 July 1995. Sony has maintained that its US copyright in a number of Bob Dylan tracks was recognized under British law at that date, but it has struggled so far to prevent German music producer Falcon Neue Medien Vetrieb GmbH from selling three albums of Bob Dylan's music (The Times They Are A-Changin', Highway 61 Revisited and Bringing It All Back Home) that were released in the US in 1964 and 1965 . The questions referred to the Court, in full, are as follows:

"Does the term of protection granted by Directive 2006/116 ... on the term of protection of copyright and certain related rights ... under the conditions set out in Article 10(2) thereof apply also in the case of subject-matter that has not at any time been protected in the Member State in which protection is sought?

If Question 1 is to be answered in the affirmative:

Do national provisions governing the protection of rightholders who are not Community nationals constitute national provisions within the meaning of Article 10(2) of Directive 2006/116?

Does the term of protection granted pursuant to Article 10(2) of Directive 2006/116 also apply to subject-matter that, on the date specified in Article 10(1) of that directive, fulfilled the criteria set out in Council Directive 92/100 ... on rental right and lending right and on certain rights related to copyright in the field of intellectual property, but whose rightholder is not a Community national?".
The text of Article 10(2) is as follows:
"The terms of protection provided for in this Directive shall apply to all works and subject matter which were protected in at least one Member State on the date referred to in paragraph 1 [ie 1 July 1995], pursuant to national provisions on copyright or related rights, or which meet the criteria for protection under [Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of
intellectual property]".
This Opinion is so far available in only seven official languages of the court, but not yet in English. The Advocate General's actual words are as follows:

"(1) Eu égard aux conditions posées par l’article 10, paragraphe 2, le délai de protection prévu par la directive 2006/116/CE, du Parlement européen et du Conseil, du 12 décembre 2006, relative à la durée de protection du droit d'auteur et de certains droits voisins, s’applique également lorsque l’objet controversé n’a jamais été protégé dans l’État membre dans lequel sa protection est demandée, sans préjudice des dispositions prévues au même article 10, paragraphe 3.

(2) Les dispositions nationales, au sens de l’article 10, paragraphe 2, de la directive 2006/116/CE ne comprennent pas les règles des États membres traitant de la protection des titulaires de droits qui ne sont pas ressortissants d’un État membre de la Communauté.

(3) Il incombe au juge national de vérifier, conformément à l’article 7, paragraphe 2, de la directive 2006/116/CE et aux traités internationaux qui s’imposent dans son ordre juridique, que le délai de l’article 10, paragraphe 2, de cette directive concernant les objets qui répondaient au 1er juillet 1996 aux conditions de protection de la directive 92/100/CEE du Conseil, du 19 novembre 1992, relative au droit de location et de prêt et à certains droits voisins du droit d'auteur dans le domaine de la propriété intellectuelle, s’applique aux titulaires de droits qui n’arborent pas la nationalité d’un État membre de la Communauté".

As usual, the IPKat welcomes comments from those whose linguistic talents lie more firmly in any of the available languages than his does.

Highway 61 here
Route 66 (European Court of Justice version) here

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