The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 17 November 2017

Birss J in Accord v Research Corporation Technologies attempts to cut the red tape on the right to claim priority

The AmeriKat reaching for an earlier priority date
Oh, priority.  You very important, but often (very) dull beauty.  For patent litigators, we (and our experts) step back in time to the priority date - often the filing date of the application - to assess validity.  However, applicants can claim an earlier priority date than the date of filing.  This is called the "right of priority".  To do so, certain conditions have to be satisfied, but if you meet them you can claim an earlier priority date, with the benefit that you kick out a bunch of often unhelpful later dated prior art. So if you can maintain priority - great - but if you lose it - hold on tight.  The Patents Court has been wrestling with priority in judgments, seemingly more frequently lately (although, it may be that we are just paying more attention).  Tristan Sherliker (Bird & Bird) reports on a recent decision of Mr Justice Birss in Accord Healthcare Ltd v Research Corporation Technologies Inc [2017] EWHC 2711 on the issue.  Over to Tristan:

"Despite the formal processes behind it, IP is a pretty forgiving area of law. The English Chancery courts have existed for centuries specifically to avoid the bureaucracy and inequity found in other parts of the judicial system and, true to form today, they are not known for letting red tape get in the way of a good monopoly right. So what then of the forgotten child of patent law, the right to claim priority? A mere formality, it risks undermining the validity of an entire patent or patent family. So can we cut the red tape and make it good in equity? Finally we have an answer.

The problem

The position following Edwards v Cook [2009] FSR 27 is this: When an applicant claims priority from a patent filed by a third party they must, at the time of their patent filing, own the substantive right to make that priority claim. The red tape comes in partly because nobody except patent lawyers cares about this right, but significantly also because there’s no takesy backsies: you can’t make good on it afterwards by subsequently acquiring the rights. Either you have the substantive right at the relevant date, or you’ve lost the priority claim.

Since inventors rarely sit silently for a year after their initial filing, loss of priority claim normally brings in a wealth of new prior art leading to the patent’s invalidity. This bites most often (but not always) when an employer is claiming rights from the invention of their employee, where the employee was the original applicant. It is especially common where the priority document is a patent filing (or provisional filing) in the USA, where the practice was a baited trap for priority applicants: it used to be that only the inventors themselves could apply for patents.

It’s a quick fix to clear the problem:  it is now well understood by those who care about it that a short assignment document recording a transfer of rights is a good plan, complying with any additional national laws that apply.  Unfortunately, though, patent law is retrospective and this whole issue wasn’t really on anyone’s radar until 2010 when Edwards v Cook was confirmed on appeal. I also understand that US practice continued baiting the same trap until 2012. So bearing in mind the duration of patent protection, the issue is likely to keep popping up for another decade or more before we clear the backlog and may still continue in future.

In the balance between red tape and equity, who will win out?

Cliffhanger: Gilead

The Court of Appeal left us a cliffhanger on this point last year in Idenix v Gilead [2016] EWCA Civ 1089 (see IPKat post here) where it was alleged that a patent was invalid over its own priority document, for anticipation. The reason? That’s right – it was argued that there was a mistake when assigning the substantive priority right.

It was discussed obiter whether the assignment had to be made good in formal law, or whether a simple equitable transfer could be implied to cure the red tape. This was not immediately clear because the point arises from the Paris Convention, which may or may not permit of equity. Answering the points argued, Kitchin LJ (who sat at first instance in Edwards v Cook) gave a “provisional view” that the equity was good enough; and that the Paris Convention leaves the mechanism for transfer of title to the relevant national law. However, he stopped short of making any finding of substance on this, saying:
“nevertheless, it emerged during argument that there may be other materials and decisions which bear on this issue and to which our attention has not been drawn. Accordingly… it seems to me that it is better left to be decided in another case.”
After that cliffhanger, the next instalment is now here, and the questions can be resolved.

The resolution?

For the patent in suit in Accord Healthcare Ltd v Research Corporation Technologies Inc , there was a valid assignment of the relevant rights in 1997, the month before the claim to priority was made. On its face therefore, the rights were assigned.

Normally the right to claim priority analysis would stop there, but an interesting argument was run by the claimant, Accord. They said that the document was limited to an assignment of the bare legal right; and that the equitable right to the invention was owned by another entity – in this case, the University of Houston. The “substantive” right, Accord said, was the equitable right and not the mere legal title. The patent was therefore invalid over its own priority document, which of course disclosed the same invention.

Breaking down not one but two formalistic barriers, Birrs J both agreed and disagreed with Accord. He held that the term “substantive title” in the case law did indeed refer to the division between legal and equitable title, saying:
“When the cases refer to the applicant holding the substantive right and title to the invention, they are referring to this legal/equitable distinction.  
“In my judgment Accord is right in law that following from those principles, a person who at the relevant time and under the relevant applicable law, acquired only the bare legal title to an invention and not the equitable title, when the equitable title is held by another, does not then hold the substantive right and title to the claim to priority.” 
However, on the facts he found that the problem had been overcome: under the US laws governing the rights of a bona fide purchaser for value (35 USC §261) and taking into account the circumstances at the time, on those facts the title had passed and the priority claim was still valid.

Leaving it open for a sequel

True to type, the (Chancery) judge found a way to make things right and avoid the red tape. He was however unsatisfied with the way of things, and said as much, giving two suggestions as to how the higher courts might address the matter:
1. Institute a sui generis law for priority rights in Paris Convention countries equally, regardless of whether those states recognise a legal/equitable distinction. In this proposal, flaws in the title still could not be fixed retrospectively. However, the judge acknowledged that this suggestion does not sit happily with the equitable/legal distinctions made in the later cases following Edwards v Cook
    2. Alternatively, another suggestion was to apply the same approach and the same applicable law to the priority claim as applies to ownership of the invention and the right to the patent. In a case in which there is some doubt about the claimant’s title to the patent itself, the suggestion is that title has to be perfected by the judgment of the court – for example, ensuring that the legal owner must be joined to the proceedings (see Baxter v NPB [1998] RPC 250). For this suggestion, the judge commented that "[t]he moment the title to the patent matters is judgment. In this case the moment the priority claim matters could be said to be the judgment." It therefore seems that this suggestion may permit the patentee to repair a position after the event if to do so would be equitable, so long as done before judgment.  
    The judge offered these proposals as mere suggestions - he was clear that in coming to his decision he applied the law as already settled (albeit with some new explanation of matters not previously explicit). Yet given his dissatisfaction, perhaps things are not quite so settled yet, and we might find more interesting developments if this goes through to an appeal."

    Thursday, 16 November 2017

    Speech from European Judges Forum: But Sir Robin, let's be frank, we will put (just to be short), in Milan the Central Court...

    The AmeriKat enjoying the closing lines of
    Mario's speech at the European Judges
    Forum in Venice
    Every year, usually in October, a gaggle (or is it a judgment) of patent judges amass in San Servolo (Venice) at the European Judges Forum where they discuss the latest goings-on in European patent law and practice.  San Servolo is a secluded island close to Venice, but not easily connected to the city (making it difficult for anyone to escape).  Nobles who were declared to be mentally unsound resided here, away from the rules and forms of Venice.  It is therefore the natural location to to hold a forum where patent judges and lawyers can exchange ideas and experiences.  Some say that the acknowledgement that European patent judges give to decisions of their fellow European judges stem from this forum.

    This, the 12th year of the conference, saw 35 judges of 15 nations (Belgium, Denmark, Finland, France, Germany, Ireland, Italy, Latvia, Netherlands, Portugal, Spain, Sweden, Switzerland, Turkey, United Kingdom) pull together.  They were joined by 31 European lawyers and seven officers of the EPO.  This year, the forum debated SEP and FRAND, discretion on injunctive relief under the UPC, case law on damages and an update on the UPC from Alexander Ramsay.  The focus of the forum was a mock trial decided by judges from the Netherlands, Sweden, Italy and Germany.

    At the Forum dinner, this time held in the city of Venice,  Mario Franzosi (Franzosi Dal Negro Setti) delivered a wonderful speech  - partly in English, partly in the langue d’ oil - with contributions from Judges Marina Tavassi, Gabriella Muscolo, Klaus Grabinski and Sir Robin Jacob.  The speech was too good not to share with the IPKat readers (for which the AmeriKat thanks Mario and his contributors).

    So, now imagine you are in the wonderful city of Venice, dining by candlelight (with a bunch of patent lawyers) and Mario stands up....:
    "Ladies and gentlemen.  
    After Brexit, we have to decide which language to use. Some European countries have English, but not as the first language.

    Charles the fifth said that there are four languages to consider. “I speak – he said – Spanish to God, French to men, Italian to my lovers, and German to my horses”. What to choose among these four?

    The problem of language is serious. For instance, Robert van Peursem wrote a beautiful report on Equivalents, but unfortunately in Dutch.
      Robert, do you have a translation in one of these four languages? (Van Peursem answers: Yes, German).   
    So Robert, please send it to me and I will give it to my horse. Better, you may send it directly to horse@franzosi.com. 
    I think the most appropriate (to stay closer to our evicted British friends) would be Anglo-Norman, a dialect of the langue d'oïl, that was spoken in Normandy in 1066. 
    There is a poem that wonderfully describes our situation:
    Halt sunt li pui e tenebrus e grant, 
    Li val parfunt e les ewes curant. 
    Sunent cil graisle e derere e devant 
    E tuit rachatent encuntre l’olifant.
    (High are the mountains, dark and majestic;deep are the valleys and the waters running. Sounds are heard here and there, but the Oliphant of Angela Merkel answers to all of them). 
    Here we are, at a turning point of our enterprise to set up a truly European patent judicial system. When judge Scuffi had the idea (to which I most humbly participated) of creating a forum for European judges, so that they could make their systems converging, we thought that the establishment of a Unified Patent Court would had been the crowning of this initiative, but also the end. Therefore, we considered the attainment of the UPC with mixed feeling, as an exaltation, but possibly a termination, of our Venetian venture. I am happy to say that the mission of our Venetian enterprise, as a preparation of a future European patent court, will continue for decades and decades.

    But first: do we really need a unified patent court? It was said (by a most experienced authority) that in America 10% of the patents granted are litigated; while in Europe 2 out of 1000. Therefore, on the basis of this authoritative data we can make a simple calculation. According to these numbers, that I do not dare to question, in America there are about 30,000/40,000 patent cases every year. Since the average cost of a patent case is (AIPLA data) 5 million dollars per party, namely 10 million dollars, patent attorneys receive about 300 billion dollars. This is a little more than the gross national product of Croatia, Slovenia and Czech Republic combined. I esteem an additional number of 500.000 attorneys is needed in America. This is why I personally got the green card. Nevertheless, America still needs 499.999 attorneys.

    By contrast, it is said, in Europe only two patents per thousand are litigated. This means that in Europe there are about 140 patent cases per year, which is the number of patent cases in Milan. Therefore, it is clear to me that we do not need the UPC, since everything is dealt with in the Court of Milan. I would suggest to pack up and go home.

    Ladies and gentlemen. I will handle a subject where probable truth will hardly gain assent. I know that the bosom of the earth (the humble soil here corn grows together with weeds), is the proper ground of illustrious men, the most clever and proud, and of those who cultivate philosophy without enervating the mind. I have the earth in high consideration. Therefore, if the UPC does not go to the sky and is interred, instead, in the earth, then it will have the destiny of even the most illustrious men.
     
    In the soil, either the spirit is annihilated, and has no sensation of anything, or death is a certain change of status, a passage to a better status. I believe so, and I believe the UPC will live with Orpheus and Musaeus, with Hesiod and Homer: most noble companions. It will live with Ajax, the son of Telamon and all the others that had lived a life of honor, and have died of an unjust sentence. If so, the UPC will remain a bodiless dream of nature, living in a more dignified and noble ether. I am sure the UPC will discuss with Ajax of the difference between Kort geding, Einstweilige Verfuegung, Procedure en Référé, Anton Pillar Order, Misure Provvisorie.

    Which status is better, either to drag a useless life of useless preparation, or live in the world of the dead, with Orpheus and Homer, is unknown to everyone but God.

    Ladies and gentlemen. We have undertaken a mission for which we had no allies but our good will and our valor. Our cause was and is just. Even if our resources are limited, our will is unconquered. Nothing is lost, apart from our patience. As it is said in the Chanson de Roland:
    Li empereres chevalchet ireement 
    E li Franceis curuçus e dolent; 
    N’i ad celoi n’i plurt e se dement,
    E prient Deu qu’il guarisset Rollant
    (Angela Merkel rides furiously, and the French army sad and worried, and everybody cries and loses head, and ask God to save the UPC). 
    For the UPC there is a sumptuous variety of meditation, something that compels the strangers’ admiration, and regret. We have counted in the course of the years several variations of humor in relation to the system: each which a simple version and with a complex version. There are several versions of the Rules of Procedure: eighteen, if I correctly remember, or are they eighty? I think it will make the fortune of the man who really wants to investigate the human mind.
    Josque il vengent el camp cumunement   
    Ensembl’ od lui i ferrunt veirement.  
    De ço qui calt ? car ne lur valt nient.  
    Demurent trop, n’i poedent estre a tens. 
    (At the battlefield, they will fight furiously. But all this is vain, all is useless. Too much they delayed: they cannot arrive on time. China and India are pressing.)

    Ladies and gentlemen. Patent people are by nature patient and forbearing. Do not despair, also because you do not know how the world changes. You have no vision of the future, and do not even know what the weather is going to be.

    If one could look into the seeds of time  And say which grain will grow and which will not,
    There is no substitute for wisdom, and the second best after wisdom is silence. 
    Therefore, I take a seat and do not utter further words. But first, let me recite a sonnet that I have written when travelling on the vaporetto tonight, going from Venice main island to San Servolo (a small island, the place of the hospital – in the old good time- for insane persons, but only of noble descent) and that I have finished only a few moments ago. It was written with the help of judge Marina Tavassi, President of the Court of Appeals of Milan; Gabriella Muscolo, of the Italian Competition Authority; Robin Jacob, who you know well; Klaus Grabinski, of the German Bundesgerichtshof (somehow unhappy with the initial consideration of the German language by Charles the Fifth, but cooperative, nevertheless). Here is the result of our brains:
    Noble Britain, proud and wise  
    Do not trade your life with dice  
    Take it easy, take a sit
    And don’t do, don’t do Brexit. 

    No, my Britain wake you up  
    Stay with us, and raise the cup.  
    Take it easy, take a sit  
    And don’t do, don’t do Brexit.   

    Choose Venezia, and not May  
    It’s not time to run away  
    Like brave soldiers, close the rank.

    But Sir Robin, let’s be frank  
    We will put (just to be short) 
    In Milan the Central Court. "

    Special interview with Patricia Kelly, Director General of IP Australia


    The IPKat recently had the privilege of submitting written questions to Patricia Kelly, Director General of IP Australia, in connection with both the "Intellectual Property Arrangements: Productivity Commission Inquiry Report", which was sent to the Government on September 23, 2016 and publicly released on December 20, 2016, and the "Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements", which was publicly released on August 25, 2017. Set out below is the full text of this interview.
    1. Director General Kelly, permit me to begin this interview with a confession. I have long admired the IP jurisprudence in Australia. Without getting in hot water with Kat readers, my sense has been that your IP case law avoids both the "litigation on steroids" nature of US litigation and the heavy weight of the judicial past in UK judgments. Is this just a fantasy of mine?
    I’m sure Australia’s IP courts and judges would be pleased with that assessment and you may be in a better position to compare and judge than I am. It is true that in general Australians are not as litigious as their US counterparts. Our legal system is a common law system, as in the UK, where precedent is observed, however, in my experience that has not led to anomalous outcomes.

    Rather than the outcomes of the judicial process with regard to IP, recent focus has been on improving access to the judicial system to pursue IP issues. The Australian Productivity Commission (PC) recently made international comparisons suggesting that Australia has robust IP enforcement arrangements, but that more can be done to improve the ability of rights holders to utilise Australia’s enforcement infrastructure, in particular for small to medium enterprises (SMEs). We have recently seen both the Federal Court of Australia and the Federal Circuit Court of Australia make efforts to improve accessibility and efficiency.

    IP Australia is also committed to helping SMEs to understand that alternative methods of dispute resolution are available outside of the courts. We have recently launched an IP Mediation Referral Service, and we are working with the insurance sector to explore possibilities for trade mark defense insurance. It is early days for these initiatives and we continue to look for ways to assist in the enforcement area.
    2. The Productivity Commission Report seeks to address what it calls “intellectual property arrangements” against the backdrop of the particular circumstances of Australia. One factor that is mentioned multiple times is that the country is a net importer of IP. What other major factors can you point to that define the context in which IP in Australia takes place?
    While Australia is a net importer of IP, this is the case for the vast majority of nations. IP Australia made comment, in its submissions to the Productivity Commission, on the fact that the Australian Government is striving to expand and accelerate domestic innovation (through its National Innovation and Science Agenda) and that we would want to have IP settings that encourage and reward our innovators. It is also worth noting that the importation of IP per se is not a bad thing. It suggests strong adoption and diffusion of technology, which is a positive for the economy.

    During the inquiry, there was commentary on this issue by the WTO’s Chief Economist suggesting that Australia should not view itself as an ‘island of IP’ and instead view itself more ‘in a global context and how its position might evolve’. I think that is good advice. Much of the context for IP development in Australia stems from global developments. The advent of global value chains, the development of global brands and the rise of the internet as a trading platform all shape the business models and opportunities available to Australia and have implications for the IP system. We are also on the cusp of a huge and disruptive wave of global technological change. Technologies including artificial intelligence, big data, the internet of things, advanced robotics and biomedical advances such as CRISPR technology promise to reshape business, markets and the workforce. These have implications and challenges for our IP system.

    Within governments there is also an increased awareness that IP is an important economic asset which can generate growth and jobs. This leads governments to focus on developing and implementing policies to attract and retain IP and capture benefit. We see this reflected in the international trade agenda where IP is increasingly a focus of negotiations. A counter to these developments comes from those who challenge the overall benefits and impact of the IP system to community welfare. Globalisation has generated a significant backlash and that includes anti-IP sentiment. To secure community and ultimately ongoing political support, the IP system overall must be seen as balanced and fair. This issue of balance between the interests of rights holders and the public was indeed a pivotal consideration in the Productivity Commission’s report.

    All of these global issues set the context for the development of IP arrangements in Australia. That said, a well-functioning and effective IP system is recognised as important to underpin Australia’s innovation, trade and investment efforts. For Australia, predicted to remain the 13th largest world economy in 2017, having access to the latest technology and developing cutting-edge innovation relies on a world-class system for IP protection. As mentioned above, Australia’s IP system needs to also be viewed in light of the Government’s National Innovation and Science Agenda, which recognises that innovation and science are critical for Australia to deliver new sources of growth, maintain high-wage jobs and seize the next wave of economic prosperity.
    3. The Productivity Commission Report emphasizes the need to achieve a more balanced role for IP within the broader context. What would you say to those who might claim that in effect the Report adopts a low protection approach to IP, such as proposing user’s rights in copyright and seeking to address patent rights that are tipped too much in the direction of the patent owners?
    As noted above, I think it’s broadly recognised that the IP system is all about striking the right balance. It is true that the Productivity Commission suggested that the balance in the current Australian system was tipped too far in favour of rights holders. However the final recommendations that have been accepted by the Government will, in my view, not make a dramatic difference to the protection available to rights holders in Australia.

    The change to inventive step is designed to ensure consistency with international best practice and put beyond doubt that Australia adopts a standard comparable with the EPO. In practice, following changes to our law in 2012, we believe we already apply standards comparable with the EPO and thus I expect the practical impact of this change to be limited. The introduction of an objects clause into the Patents Act will provide overt guidance for the judiciary in IP cases and hopefully contribute to a continuation of the balanced approach which you so kindly comment on above.

    While the phase-out of the innovation patent could be seen as a diminution of rights, this decision was driven in large part by IP Australia research which demonstrated that the innovation patent was not providing net benefit to the group it was designed to assist, i.e. SMEs. The changes are designed to contribute to the overall integrity and balanced reputation of the Australian IP system, however under these changes Australia remains a country with strong protection for rights holders and a world standard IP system.
    4. There are a large number of proposals in the Report. How will you prioritize them, and have you developed metrics to evaluate their effectiveness?
    It is relevant to note that IP Australia is not responsible for all the reforms recommended in the Productivity Commission’s report. IP Australia is responsible for implementing the changes in relation to patents, trade marks, designs and plant breeder’s rights. We are taking a two-phase approach to the legislative changes endorsed by Government in response to the Productivity Commission’s report. With respect to the innovation patent (where there has already been extensive consultation) and some of the more straightforward reforms relating to trade marks and plant breeders’ rights, we have released draft legislation for comment.

    For phase two, we will consult further on the implementation approach for a number of matters including inventive step reform and introduction of an objects clause, plus issues raised by the Productivity Commission in its 2013 review of compulsory licensing, as highlighted in the Government’s response to the 2016 inquiry. Consultation papers on these matters are on our website.

    As is standard practice, we are developing an evaluation plan for the legislation which will include looking at impacts on the quantum of patent applications and grants; changes in the nature or characteristics of these; and use of the objects clause in judicial interpretation. However, it will require 3-5 years of data collection post-implementation to provide a solid basis for evaluation. On prioritisation of policy changes more generally, I would like to mention that IP Australia has recently released an online register of IP policy issues and proposed changes under consideration, including the priority we assign to them. This allows anyone to review and provide feedback on IP policy issues and their priority for action. I encourage you to take a look at IP Australia’s policy register.
    5. What kind of role does Australia want to play in the international IP community? Aspirations aside, to what extent can Australia play a leadership role in international IP issues?
    On the international front we support a more harmonised IP system. As a country that fundamentally relies on exports and which is transitioning away from a reliance on commodities towards more knowledge-based products and services, Australia, or more accurately Australian businesses, would benefit from a simpler, more harmonised global system. As such, in WIPO and other relevant forums we support international harmonisation, work sharing and adoption of best practice. We are currently playing a lead role in Group B+ efforts to achieve progress in the patent harmonisation agenda (I currently chair this group).

    We are also active in capacity building in less developed countries. Our geographic location puts us in a unique position as a mature IP office within a region of rapidly evolving IP systems. We have been proactive in mentoring and providing guidance to other offices and working towards basic standards of IP protection across the region. We are also playing a leading role in WIPO in efforts to develop an international agreement on recognition of genetic resources, traditional knowledge and folklore. (Ian Goss from Australia chairs this group.) While we need workable solutions in this space, there is clearly a gap in the system here which denies rights to some of the least well-off groups and, while the gap remains, it provides ammunition to those who point to a lack of balance in the IP system.

    Australia continues to work through WIPO and support a multilateral approach to international IP issues and administrative systems, as we see this as the best way to maximise benefits from the system. However we recognise the practical limitations here, and Australia also continues to actively negotiate free trade agreements with our trading partners, in particular in the Asia-Pacific region. By agreeing with our trading partners to provide fair and transparent processes for obtaining and enforcing IP rights, particularly through use of the multilateral treaties, we can ensure that there is certainty in the IP system for businesses operating in a global environment. In prioritising its international engagement efforts, IP Australia looks for opportunities where it can add value and influence the global IP system in the directions outlined above.
    6. Having regard to Australia's initiative regarding the plain packaging requirements for cigarettes, how much can Australia be expected to engage in such IP initiatives in the future, as opposed to primarily incorporating elements of IP law taken from other jurisdictions?
    Plain packaging is not primarily an IP initiative, but rather a key element in Australia’s comprehensive package of tobacco control measures, aimed at improving public health. So the question is really how do we ensure the IP system develops in a way that complements other areas of public policy, including health, competition, trade and of course innovation policy.

    While IP relies on sovereign rights, the IP system is essentially a global system underpinning world trade, investment and technology transfer. In recognition of this, Australia generally seeks to align its IP arrangements with those of our major trading partners and international best practice. This will continue to be the dominant trend; however overall the IP system must serve the public interest and align with key public policy priorities. As demonstrated by our active role in the WIPO Intergovernmental Committee on IP and Genetic Resources, Traditional Knowledge, and Folklore, Australia is also prepared to contribute to the development and evolution of the IP system. We are also exploring domestic initiatives in this area.
    7. I cannot help but notice that trademarks receive only scant attention in the Productivity Commission Report. Given that Australia is not usually thought of as a large exporter of international brands, what does this say about the state of trademark law in the country?
    I think it is fair to say that there are more contentious issues raised around patent law and policy than around trade mark law and policy in Australia. This is despite the fact that we have far more domestic trade mark rights holders than patents rights holders.The Productivity Commission had a lot of ground to cover in its report and it tended to focus on the more contentious issues and those highlighted in its terms of reference. It did however devote a chapter to trade marks, and, in line with its recommendations, the draft legislation we are currently consulting on includes provisions to clarify the rules around parallel importation of trade marked goods and reduce the grace period for challenging trade mark non-use.

    We’ve seen steady growth in both resident and non-resident filings for Australian trade marks since 2009, with a 26 percent increase over that period. In contrast to patents, around two-third of trade mark applicants are Australian residents and the vast majority of these domestic applicants are small to medium enterprises and private individuals, who filed more than 90 per cent of domestic applications in 2016. Many of our new customer-oriented services are targeted at this group. We’ve also seen strong growth in the number of trade marks filed abroad by Australians in recent years, with China and the United States the main destinations. Latest WIPO figures indicate a 20 percent increase in trade mark classes filed by Australians abroad in 2015. Our decision to establish an IP Counsellor at the Australian embassy in Beijing earlier this year was primarily aimed at assisting Australian exporters navigate the Chinese IP system, especially around trade marks.

    photo on lower left by Thomas Steiner licensed under Creative Commons Attribution Share-Alike 2.5 Generic License

    Wednesday, 15 November 2017

    When public domain works meet trade mark law: Norwegian Industrial Property Office applies EFTA Court’s judgment and dismisses applications to register Vigeland’s artworks as trade marks

    One of the artworks that Oslo municipality
    tried to have registered as a trade mark:
    The Angry Boy (Sinnataggen)
    A few months ago this blog reported on an interesting and important decision issued by the EFTA Court, this being the court with jurisdiction over EFTA states that are parties to the EEA Agreements (Iceland, Liechtenstein, and Norway): Case E-5/16 - Norwegian Board of Appeal for Industrial Property Rights – appeal from the municipality of Oslo.

    The decision followed a request for an advisory opinion from the Board of Appeal of the Norwegian Industrial Property Office (NIPO), and required consideration of whether and to what extent signs representing artworks by Gustav Vigeland and in which copyright protection has lapsed could be registered as trade marks under the previous EU Trade Mark Directive, ie  Directive 2008/95 [EFTA countries are not part of the EU but are subject to EU legislation, being part of the European Economic Area].

    The first round: NIPO application

    The NIPO Examiner had partly rejected the applications filed by the Oslo municipality to register six signs as Norwegian trade marks, on grounds that the signs at issue would be devoid of distinctive character, be descriptive or be shapes that add substantial value to the goods.

    The appeal and the EFTA Court’s judgment

    The decision was appealed before the NIPO Board of Appeal, which - in addition to the grounds considered by NIPO – wondered whether registration should be also refused on grounds of public policy and morality (Article 3(1)(f) of the Trade Mark Directive). More specifically, the Board of Appeal was unsure whether trade mark registration of public domain works might, under certain circumstances (notably when the artwork in question is well-known and has significant cultural value), be against “public policy or accepted principles of morality”.

    The NIPO Board of Appeal decided therefore to seek guidance from the EFTA Court, which in turn provided a detailed judgment addressing the registrability of shape marks and the notions of public policy and morality.

    The case returns to the NIPO Board of Appeal

    As already discussed here, earlier this week the NIPO Board of Appeal issued its decision regarding the registrability of the signs applied for, and rejected the Oslo municipality’s applications.

    The Board of Appeal applied the principles expressed in the EFTA Court’s judgment, and held that the signs at issue could not be registered on grounds that registration would be contrary to public order.

     Gustav Vigeland
    According to the official translation of the decision,

    The trade marks in question consist either of depictions of sculptures and wrought iron
    works which have undoubtedly been protected by copyright until the death [possibly a bit longer than that …] of Gustav Vigeland (the figure marks) or the sculptures themselves (the three-dimensional marks). In other words, the case concerns works of art which reverted to the public domain on 1st January 2014. According to the approach taken by the EFTA Court, copyright protection is an exception to the rule that intellectual property, as a matter of principle, belongs to the public domain once communicated (paragraph 66). Consequently, creative content reverts to the public domain with the lapse of copyright protection. The public must therefore have the ability to freely use the works, as the considerations justifying limitations to this freedom no longer apply.”

    This position might sound harsh if considered in isolation, And in fact the Board added that it is not excluded that a sign depicting a work in which copyright protection has expired may be eligible for trade mark registration.

    Nonetheless in cases like the one at issue it is necessary to consider whether trade mark registration of signs representing artworks that are now in the public domain would conflict with the rationale underlying limited duration of copyright. This might be so no irrespective of whether the requirements for trade mark registration, including that the sign at issue is sufficiently distinctive, are met.

    The Board considered that the present case would be extraordinary. Nonetheless two considerations in particular would rule out the possibility to grant the Oslo municipality’s applications.

    First, “both the artist Gustav Vigeland and the Vigeland space (park and museum) must be considered as belongings of the Norwegian cultural heritage”. Secondly, granting the trade mark registrations would amount to granting someone (the Oslo municipality) a competitive advantage over third parties without having contributed to the development of the trade marks thus obtained.

    The conclusion could be, therefore, only to reject the applications filed by the Oslo municipality.

    Event report: The private copying exception and the compensation of harm in a dematerialised environment

    On the 16th of October the IPKat, between a warm waffle and a creamy chocolate, participated in the Auvibel conference, under the chairmanship of Professor Frank Gotzen,
    Risultati immagini per auvibelKU Leuven and with the collaboration of &DE BANDT Attorneys.

    The location was  the stunning Palais des Académies in Brussels, located between the historical heart of the city and the modern, also enchanting, glossy and glassy heart of the European Union.

    The conference was bilingual, French - Dutch, and you will have to pardon this Kat for not catching all of the Dutch legalese: she tried her very best!

    The theme of the discussion set by Auvibel, the Belgian collective rights management company for the private copying of protected works, was “The private copying exception and the compensation of harm in a dematerialised environment: challenges and opportunities”. The lineup of speakers to the event featured law practitioners, University professors, representatives of the private sector and the Belgian Minister of Justice, Koen Geens. The afternoon talks were divided into five main topics, followed by Q&A and some very very tasty finger food.


    The first topic was “Technological context, evolution and prospects” introduced by Professor B.
    Beeckmans (Solvay Brussels School), Mr. H. Grondel (Productize), Mr. J. Theys (Agilytic) and Mr. Lambotte (Agoria).  As the title suggests, the presenters discussed how technology has had an impact in our everyday life focussing on the aspect of media, content and the use thereof. The speakers started by describing the 6 D’s exponential impacting industries (digitalisation, deception, disruption, dematerialisation, demonetisation, democratisation), followed by a critical insight on how media is consumed today, analysing different attitudes towards the use of the digital content and the subsequent blurring between what is copying and what is not within the dematerialisation of content.


    After this socio-economical insight, a juridical framework to the issue followed: “The general framework and the scope of the private copying exception”, explained with precision by Professor M.-C. Janssens (KU Leuven), Mr. F. de Visscher (UCL, Simont Braun) and Professor F. Brison (VUB, Hoyng Rokh Monegier). The speakers gave a legislative overview (European and Belgian) as well as an analysis of existing EU case law, the Belgian Bhaalu case, and a special focus on AG Spuznar’s opinion in VCAST, speculating on its possibles outcomes and impact.


    Full panel
    A little coffee, speculoos and chit-chat and we were all powered-up for the second half of the conference, which kicked-off with Mr. P. de Bandt (&DE BANDT), Professor V. Cassiers (UCL, Sybarius) and Mr. P. Callens (Eubelius) talking about “The concepts of ‘harm’ and ‘fair compensation’ in the light of the case law of the Court of Justice of the European Union”. With their presentations, they answered the questions “who is liable, how to collect the levy and for whom” (Nokia and Amazon cases) and discussed the type of levy in light of the jurisprudence (Hewlett-Packard and Padawan).


    Next on the list were Professor L. Neels (KU Leuven, UA Antwerpen) and Mr. K. Volckaert (riverrun) on “A methodology of the levy of the fair compensation for private copying” discussing how the actual model of calculation based on physical copies is outdated and analysing the possible alternatives for the future, to achieve a balance of compensation of harm with user’s rights, their explanation based on a value chain model.


    After a long day of meetings, Minister Koen Geens arrived and talked about the importance of this topic also at legislative level. This served to introduce the last topic of the day, “The organisation of the levy of the fair compensation for private copying”, which was discussed  by Mr. F. Stroobant of Auvibel and Dr. T. Desmet (Profacts). They both analysed the current situation as regards levies and consumption of content with a focus on Auvibel’s figures, which show a decline in revenue. The conclusion was in sense of a needed reform of how levies are calculated.

    How far away is global trade secrets protection? US industry's call to action as EUIPO analyzes baseline data

    The AmeriKat falls into a trance when
    she starts to consider all the issues
    that would need to be weaved into
    a global trade secrets regime
    The trade secrets field is becoming increasingly active, with numerous industry bodies and governmental organizations ramping up efforts to ensure that trade secrets can be protected efficiently, cross border.  The global trade secrets guru, Jim Pooley, has news of these efforts for IPKat readers.  Jim reports from Silicon Valley as follows:
    "Last year when the U.S. enacted the Defend Trade Secrets Act just weeks before the EU Trade Secrets Directive came into force, one could be excused for seeing it as mere coincidence. In fact, these legislative events – in the U.S. to federalize trade secret law and in the E.U. to harmonize it – were interim outcomes of a sustained campaign by industry to focus attention on this long-neglected area of IP.

    The most recent manifestation of this effort is a letter sent this month to the U.S. Trade Representative by a consortium of U.S.-based business associations, asking that “global trade secrets protection” come to the top of the agenda in trade negotiations. Pointing out that “cross-border misappropriation” is an increasing threat to the domestic economy, the letter asks that America join in a “Friends of Trade Secrets” group currently in formation at the World Trade Organization. 
    Other parallel initiatives are underway. APEC last year issued its “Best Practices in Trade Secret Enforcement and Protection Against Misappropriation.” The ICC has assembled a Trade Secrets Task Force of lawyers to help advise business and government. And the National Bureau of Research in Washington recently sponsored the formation of the Standing Dialogue on Trade Secrets, bringing together private sector and government representatives to study the problem.

    Just what is that problem? Trade secrets, we need to remember, represent the oldest form of intellectual property. Traditionally they have been easy to protect with locks and local laws. But with increasingly valuable data assets now stored and transmitted digitally, accessible from anywhere in the world, national legal systems seem inadequate. Just as innovation now happens mainly through collaborations directed at global issues, the search is on for ways to adapt and coordinate national structures to protect modern industry’s key asset: data."
    Global trade secrets protection was the topic of a 3 hour interactive panel session at the recent AIPPI Congress in Sydney.  With a scenario which saw a "rogue" employee flee across the globe with trade secrets in tow, the audience acting as external counsel for the fictional trade secrets owner, had to battle cross-border misappropriation against a diverse patchwork of legislative and procedural requirements.  Without any international harmonization (substantive or procedural) or streamlined channels of communication between authorities, the audience discovered that it wasn't always particularly easy or straightforward when you are racing against the clock (more on this later).  It is therefore a welcome step to see more activity in the cross-border trade secrets context, although most of the activity is coming from the US (for now). 

    Readers in Europe will be aware that the EUIPO, in conjunction with KPMG, has been busy collecting data from EU Member States on the national treatment of trade secrets/confidential information in order to establish a baseline prior to the implementation deadline for the EU Trade Secrets Directive.  Several organizations have provided submissions, including the UK Group of AIPPI found here.  A rough review of the past 5 years of published decisions in the UK dealing with trade secrets/breach of confidence (either as a cause of action itself or introduced as part of related proceedings), showed there were more cases where the Courts were wrangling with these issues than one might have assumed.  More analysis needs to be done, but it seems those Queen's Bench Division lawyers have been having all the fun.

    The AmeriKat is looking forward to the outcome of the EUIPO's analysis, which she hopes will facilitate increased understanding between Member States as we look towards possible future harmonization in Europe and beyond.  If any readers have any updates on other national legislative efforts in advance of the EUTSD or otherwise, let the IPKat know!

    Tuesday, 14 November 2017

    Around the IP Blogs!

    Let's put the witch costume binoculars on to check out what the IP blogosphere was spooking talking about around Halloween time!

    Spooking mood
    Focussing our lenses on patents, these are interesting times for SPCs jurisprudence, based on Tenofovir - the Swiss Bundespatentgericht goes for the infringement test, which did not adopt the CJEU approach, as  Siegfried Grimm reported for the SPC Blog. What is even more interesting is that the same case is pending before the CJEU...the suspense increases!

    The recommendation regarding copyright reform has been at the center of  discussion. The Kluwer Copyright Blog proposes an executive summary of The Recommendation on Measures to Safeguard Fundamental Rights and the Open Internet in the Framework of the EU Copyright Reform,  while Eleonora Rosati comments on the CEIPI Opinion on copyright limitations' reform in the European Digital Single Market for the 1709 Blog.

    After some slanderous comments made on a blog, the Colombian Constitutional Court mandates Google to eliminate a blog from its platform Blogger. Florelia Vallejo Trujillo reports on the case for the IPTango Blog.

    Still talking about illegal content online, Sophie Stalla-Bourdillon of the peep beep! Blog discusses the issue of The EU approach to content regulation online bis: tackling (il)legal content online with real-world identities?

    From recommendation on the copyright reform to the Digital Single Market Strategy to the GDPR, Stephen Brett of IPDraughts asks himself how Using personal data in research: all change….?....after the GDPR comes into force?

    Still licking our Halloween chops, it's only fair to mention chocolate. In Bundesgerichtshof: It is not over yet for the packet in the pocket, Christian Tenkhoff of the Marques Blog unwraps the case which saw the Federal Court of Justice holding that “the squared shape of the chocolate did not constitute an essential functional characteristic of chocolate”. Chocolate. Will. Prevail.

    Moving on to rice, Friso Onderdelinden for the Kluwer Trademark Blog has published a comment on the curious decision of the Dutch District Court of the Hague which held that there is No likelihood of confusion between SINA rice and SITA rice; the relevant public has a background in Islamic cultures.

    Talking about a different SITA, AfroHip of the Afro-IP Blog takes us to the shores of the Gulf of Guinea to tell us about Ghana taking strides and about the importance vested in the need for a strong IP system for the country.

    Image credits: Susan Larson


    IPIB: How competitive is your IP service firm?

    Want hard answers to tough questions? The IP Industry Base (IPIB), a database developed by the Competitive Intelligence Group at the Fraunhofer Center for International Management and Knowledge Economy (IMW), Leipzig, might provide some.

    The IPIB seeks to provide transparency in the IP Service Industry by providing company profiles for each IP service provider, based on publicly available information - i.e., primarily patent databases. It is free to use on a "fair use" basis. For more information, have a look at the slides for the presentation by Lutz Maicher (University of Jena) held on the occasion of the EPO’s Patent Information Conference 2017 on 8 November 2017 in Budapest Sofia (this post is largely based on the presentation; the presentation being much more comprehensive). The IPIB aims to

    • be (mostly) complete for Europe,
    • reveal a significant part of the US market,
    • indicate the structure of important spots in Asia (like Singapore) and
    • be a proxy for the situation of the IP Service industry in the rest of the world.
    IPIB allows for example to access a customer profile for each patent agent firm in the database. For Maiwald Patentanwalts GmbH, Munich, the customer profile reveals that Huawei Technologies Co., Ltd. is their most important customer (measured by number of patents for which Maiwald provided services, 702), followed by Airbus Operations GmbH (317 patents) and Borealis AG (266 patents).

    Maiwald's expertise in A61P and A61Q (screenshot from IPIB)
    IPIB further assesses the specific expertise of each firm based on the type of patents it worked on. A specialisation profile of a patent agent firm is the set of all IPC classes in which the firm is significantly more active than expected from its own activity profile and the whole market activities. The IPIB uses a Relative Specialisation Index (RSI) which allows to generate idiotypic and dichotomous specialisation profiles for each patent agent firm. The RSI specialisation is based on the the theory of comparative advantage and the ARCA measure.

    For Maiwald, the RSI reveals that in IPC A61P (specific therapeutic activity of chemical compounds or medicinal preparations), they have a lot of expertise - 860 practitioners filed patents in A61P and only 16 have more practical expertise than Maiwald. In C09C (treatment of inorganic materials, other than fibrous fillers, to enhance their pigmenting or filling properties), Maiwald is even the "most experienced" patent firm in the database, having worked on 136 patents in this class. More brutal to some will be that in the rightmost column of the expertise tab, the firm with the most expertise in a given field is listed.

    Maiwald's main competitors in similar markets
    If you are interested in finding a firm with relevant expertise in a given technical field, you can enter the IPC code in a search input and you get a ranking based on the number of patents worked on by the firms in this class. For F02 (combustion engines; hot-gas or combustion-product engine plants), this reveals that Dehns Ltd, London, is the absolute market leader with 1,958 patents worked on, followed by Cabinet Beau de Loménie (CBDL), Paris.

    In the "competitors" tab of the IPIB, you can find the main competitors of your firm, arranged by "doing the same, globally", "doing the same, in similar markets" and "doing the same, in similar regions".

    The IPIB also assigns a global "Performance Score". In their own words "the IPIB [Performance] score aims to assess the performance of IP Service Provider by following the theory of the resource-based view. Each capacity of an IP Service Provider, which is observable for the IPIB, adds points to the company's score. In example, having an office in Munich adds more points than having an office in Hannover. The rationale behind is that surviving in an environment with high competition indicates strong skills. Furthermore, a crowded environment provides access to a denser knowledge base. This is access is also considered as a valuable resource of the IP Service Provider. The IPIB score is re-calculated on a regular basis in order to provide insights into the industry dynamics." I know what a lot of you are going to be doing today… as mentioned, IPIB is free, so check your score. There is a link provided to correct incomplete or wrong data (the "key employments" tab seems outdated in most instances, for example). Although this does not pertain to your score, I am afraid.
    Maiwald's IPIB Score from January 2016 to April 2017 (screenshot from IPIB)

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