The IPKat

A new battleground of innovative and generic drug manufacturers?

noreply@blogger.com (Norman) — Fri, 10 Feb 2012 14:37:00 +0000

This Kat must admit a general ignorance of the law relating to access to government information, but Merpel insisted on knowing more after reading that the “Supreme Court opens trade secrets in Merck ruling.” While Merck did lose its appeal to the Supreme Court in Merck Frosst Canada Ltd. v Canada (Health), 2012 SCC 3, the truth, as so often, is more subtle than the headlines. The decision as a whole is not hostile to the interests of innovator pharmaceutical companies; the Supreme Court chided Health Canada for an unduly aggressive stance towards releasing information, and it reversed the Court of Appeal on some important points of law that were unfavourable to Merck. Merck lost because it had seen this as a test case, in which it hoped to establish a very broad categorical exemption for regulatory information. It did not succeed in this goal, but nonetheless, in the future, innovator companies should be able to prevent disclosure of any significant confidential information.

The old battleground

The litigation in this case concerned a request made under the Access to Information Act by one of Merck’s competitors, for access to information submitted by Merck to Health Canada as part of the regulatory approval process for Singulair®. The Canadian Access to Information Act provides that the public is presumptively entitled to access “to any record under the control of a government institution.” There are, however, exemptions from disclosure for trade secrets, confidential information, and prejudicial information supplied by a third party to the government. (What I will call prejudicial information is defined as “information the disclosure of which could reasonably be expected to result in material financial loss or gain to, or could reasonably be expected to prejudice the competitive position of, a third party”.) Procedurally, where the government intends to disclose information that might be subject to one of the exemptions, notice must be given to the third party, who then has the opportunity to make representations as to whether the information should be disclosed.

In response to the AIA request, Health Canada released some information without notice to Merck, on the basis that it clearly was not subject to any of the exemptions. It then notified Merck of its intention to release more. Merck took the position that essentially all of the information was exempt, including that which had already been disclosed. Health Canada did not agree, and the dispute then went to the courts. The decision of the reviewing judge at first instance was relatively favourable to Merck, but the Court of Appeal essentially supported Health Canada’s position. This set the stage for the appeal to the Supreme Court.

The new battleground?

As one might expect, the Supreme Court made many general statement regarding the importance of transparency and freedom of information, but the Court also acknowledged that routine disclosure of commercially sensitive information “might even ultimately discourage research and innovation.” Consequently, the Court emphasized that Health Canada had “a duty both to disclose nonexempt material and to refuse to disclose exempted material” (original emphasis) which are “equally important,” and the Court reproached Health Canada for emphasizing the former duty over the latter.

The Court ruled against Merck, holding that there is no automatic right to notice prior to any disclosure, but it also said that there is a high threshold for disclosure without notice: in effect, if there is any reason to believe that an exemption might apply, notice must be given. On the question of establishing whether an exemption might apply, the Court of Appeal, relying on a strong presumption in favour of disclosure, said that Merck bore a “heavy” burden to show that the exemption applied. The Supreme Court reversed, holding that the standard was simply the balance of probabilities.

With respect to the exemptions themselves, the third exemption for prejudicial information is in some ways of most interest, as it is potentially the broadest. Here the Supreme Court held that in order to establish that the exception would apply, the party opposing disclosure must “do more than show that such harm is simply possible,” but because ““what is at issue is risk of future harm that depends on how future uncertain events unfold,” it was not necessary for the third party (Merck in this case) to establish the likelihood of harm on the balance of probabilities, as that might be “an impossible standard of proof.”

Thus the Court’s substantive holdings were quite favourable to Merck’s position. Where Merck lost is on the evidence. The majority in the Supreme Court sought to balance disclosure against protection of confidential information by requiring that the party opposing disclosure establish on the evidence that the exemptions applied. Nor did the Court insist on a particularly stringent evidentiary burden. The problem is that Merck adopted a very aggressive strategy of seeking, in effect, a blanket exemption for everything in the file, either as a matter of law, or by establishing a very low evidentiary standard. This strategy, while understandable, did not pay off. So, in an example given by the Court, the reviewing judge at first instance had refused to allow disclosure of what was, after the redactions agreed to by Health Canada, “an essentially blank page.”

The dissent argued forcefully that even this had gone too far, partly on the basis that an appellate court owes deference to the initial finder of fact which an error here or there could not vitiate, and partly on the basis that a categorical approach is appropriate in these cases. This Kat’s view is that the dissent’s arguments are persuasive, but it is significant that the difference between the dissent and the majority was on this technical point, rather than on the principles themselves. While the dissent worried that “[a]ccess to information may be becoming the favourite battleground of innovative and generic drug manufacturers,” this decision, viewed as a whole, does not encourage the opening of this new front.

For a more detailed discussion of the holdings, see here.

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 10 Feb 2012 09:29:00 +0000

Hurry -- for Gurry!

Hurry for Gurry! Earlier this week the IPKat reported on the World Intellectual Property Organization (WIPO) survey, which provides a golden opportunity for people who use its services, or who are otherwise affected by its many and varied activities, to tell WIPO exactly what they think of it. The Kat since discovered that the closing date for completing the stakeholder survey -- one of the boldest initiatives the organisation has launched under the leadership of Francis Gurry -- is Monday 13 February. Since no specific time during that day was indicated as the switch-off moment, this Kat urges everyone to make sure they complete the survey by Sunday 12 February to be on the safe side.

A tale of two seminars. The 1709 Blog has two free seminars coming up. The first, on Tuesday 21 February, is on the recent eye-catching Red Bus copyright decision in the Patents County Court, England and Wales. With Michael Edenborough QC and Brigitte Lindner speaking, it's no surprise that it's nearly fully-subscribed. There are still a few spare seats before the reserve list is opened -- click here for details and you might still be able to get in! The second seminar, on Tuesday 3 April, is a breakfast event at which William Patry speaks on "How to Fix Copyright", the challenging and question-begging title of his latest book. This event is being kindly hosted at the London office of Bird & Bird LLP [Merpel is most amused to discover that Bird & Bird tweets at @twobirdsIP]. Full details of this event, which is filling up fast, plus sign-up details, can be found here.

Talking tongues. On Wednesday this Kat reported on the latest intellectual property-flavoured dispute to be referred to the Court of Justice of the European Union for a preliminary ruling, Case C-657/11 Belgian Electronic Sorting Technology (BEST) v Bert Peelaers and Visys NV. The Kat was wondering what the background to this dispute might have been. Good news is that the much Kat-patted Chris Torrero has managed to unearth the original judgment leading to the reference; bad news, if you are as linguistically challenged as this Kat, is that it appears to be in Dutch. Can any Dutch-speaker come to the Kat's rescue and summarise it?

From the thoughtful pen of the IPKat's friend Ruth Soetendorp comes this little piece which, Ruth suggests, may be of interest to IPKat readers, "especially fashionistas and those of a certain age" [Merpel is shocked by the notion that this weblog might have readers of an uncertain age, though she's sure they are quite uncertain about lots of other things]. Says Ruth:

Sounds like a sun-resistant film ...

"I've recently become aware of glossy mag cosmetic ads including reference to their patented technology. The 29 January 2012 Sunday Times STYLE magazine published a two page spread entitled 'Miracles can happen -- the science behind anti-aging creams'. It mentioned tie-ups between cosmetic houses and research institutes - e.g. L'Oréal and Max Planck Institute, Berlin. It described endeavours by Fujifilm who, since the demise of the 35mm camera, have been diversifying into health and beauty. They are using their knowledge of collagen and antioxidants in making sun-resistant film to make creams that protect skin against the ageing effects of UV radiation. Newcastle University cell regeneration research and Manchester University's research tie-up with Boots [Merpel used to have boots with laces. Was that a tie-in, she wonders] to produce a top-secret anti-ageing product are both included. Unilever and Procter & Gamble, Shiseido and Elizabeth Arden are identified among the big players whose researches are dedicated to making looking in the mirror a more pleasant experience.

In the closing sentences the article's author (Lois Rogers) asks "are we on the brink of a breakthrough of a truly anti-ageing product, and if so will women be prevented from using it because regulators say it is a medicine?" Is this 'regulators' impeding access for health and safety reasons. Or patent 'regulators' disincentivising anti-wrinkle breakthroughs by classifying them as methods of treatment, and refusing patents? Julie McManus, director of science and regulatory affairs at L'Oréal, says 'Medicines are for ill health. Our products are designed to work on existing pathways in healthy skin that may not work as effectively any more because of the effects of ageing'.

The cosmetic companies have a conflict. They crave the respectability of well researched scientific breakthrough, but only so long, I imagine, as the resulting innovations can be patented as cosmetics".

The IPKat is amused at the thought that, just as we have seen convergence in the telecoms and electronics sectors, with phones that take photos, computers that carry phone calls virtually everything that runs on batteries now playing tunes and running computer programs, we are seeing the same thing here, where the healthcare, cosmetics, food, fashion and leisure/lifestyle sectors are increasing finding points of contact. Thoughts, anyone?

Thanks again to the efficiency of the UK's Intellectual Property Office, the Kats have received notification of yet another set of questions which those inquisitive Belgian judges (this time the Cour de Cassation itself) to the Court of Justice of the European Union for a preliminary ruling, This time it's Case C-661/11 Martin y Paz Diffusion SA v David Depuydt and Fabriek van Maroquinerie Gauquie SA. The case concerns the exclusive right conferred on the proprietor of a registered trade mark and the circumstances in which that right can no longer be asserted against a third party in respect of all goods covered by it at the time of registration. The questions referred go like this:

"1.1. Must Article 5(1) and Article 8(1) of ... Directive 89/104 ... to approximate the laws of the Member States relating to trade marks [which may as well not have been repealed and re-enacted for all the notice the courts take of its replacement, Directive 2008/95 of October 2008] be interpreted as meaning that the exclusive right conferred by the registered mark can definitely no longer be asserted by its proprietor against a third party, in respect of all goods covered by it at the time of registration:

where, for an extended period, the proprietor has shared the use of that mark with that third party in a form of co-ownership for part of the goods covered?

where, when that sharing was agreed, the proprietor gave the third party its irrevocable consent to use of that mark by the third party in respect of those goods? [Hmm. The IPKat thinks Question 1.1 is conflating issues of enforcement (assertion of rights) with those of validity of registration (no exclusive right at date of registration), though he can't be sure without knowing the background].

1.2. Must those articles be interpreted as meaning that application of a national rule, such as that according to which the proprietor of a right cannot exercise that right in a wrongful or abusive manner, can lead to a definitive prohibition on the exercise of that exclusive right for part of the goods covered or as meaning that that application must be restricted to penalising the wrongful or abusive exercise of that right in another way? [Doesn't the Directive just deal with trade mark law? National laws on abuse of rights, equitable estoppel etc must surely prevail]

2.1. Must Article 5(1) and Article 8(1) of ... Directive 89/104 ... be interpreted as meaning that, where the proprietor of a registered mark ends its undertaking to a third party not to use that mark for certain goods and thus intends to recommence that use itself, the national court can none the less definitively prohibit it from recommencing that use of the mark on the ground that it amounts to unfair competition because of the resulting advantage to the proprietor of the publicity previously made for the mark by the third party and possible confusion in customers' minds, or must they be interpreted as meaning that the national court must adopt a different penalty which does not definitively prohibit the proprietor from recommencing use of the mark? [Goodness! If a proprietor can be prohibited from ever resuming use of a mark previously licensed to another, a generation of licensing wisdom and accepted practices will vanish in a moment -- though one can imagine all sorts of facts in which a temporary restriction or prohibition would be perfectly reasonable]

2.2. Must those articles be interpreted as meaning that a definitive prohibition on use by the proprietor is justified where the third party has, over a number of years, made investments in order to bring to the attention of the public the goods in respect of which the proprietor has authorised it to use the mark?". [Again, without knowing the facts, it's difficult to make submissions at all. Doesn't every third party that advertises and markets its goods bearing third party marks make "investments in order to bring to the attention of the public"?]

As usual, if you would like to tell the UK government how they should respond to this reference, you can email Policy at policy@ipo.gsi.gov.uk before next Thursday, 16 February 2012.

It has been drawn to the attention of the IPKat that the European Commision's ~~Dictatorate~~ Directorate General for the Internal Market and Services, DGMARKT, now has a new head for its Industrial Property Unit D2, Kerstin Jorna. The IPKat wishes Kerstin the very best of luck in her new job and assures her that he, Merpel and the rest of the IP community will be happy to tell her how to do it ☺. As an aside, it has been noted that, despite half a century of increasing harmonisation in what is now the European Union, the name 'Kerstin' is still spelled in different ways. If you plan to search KJ online, neither Kirsten not Kirstin will do.

"Why has America stopped inventing?" or "It's not just Kats that rant"

noreply@blogger.com (Jeremy) — Thu, 09 Feb 2012 23:16:00 +0000

A very busy little book buzzed into this Kat's life a few days ago. It's called Why Has America Stopped Inventing? and its author is an energetic, indeed frenetic patent attorney by the name of Darin Gibby (his own website is here; his web page with Kilpatrick Townsend is here). Darin is not one of those people who likes to keep his readers waiting to find out what he's trying to tell them. His message is loud and clear. As this book's website says:

"Today, Americans invent less than half of what they did a century and a half ago [this assertion might seem a trifle surprising to readers and to compilers of WIPO statistics; it also raises interesting issues as to what constitutes an invention ...], and the question is why? The answer may well be found in how America’s patent system treated the likes of Sam Colt, Samuel Morse, Charles Goodyear, Isaac Singer and the Wright Brothers".

At this point the reader will already have guessed that Darin is a man with a mission. If further proof were needed, his publicity material continues:

"America loves innovation and the can-do spirit that made this country what it is -- a world leader in self-government, industry and technology, and pop culture. Everything about America has at one point or another been an experiment and a leap of faith. And one such experiment --upon which all others depend for success [Now, that is a whopping great assertion with which one may wish to take issue] -- is the U.S. Patent System.

Why Has America Stopped Inventing? takes a close look at why this experiment appears to be failing, at why America has all but stopped inventing. Our belief that we are the most innovative people on earth is mistaken. The hard cold numbers suggest that American innovators are losing their edge. Statistics show that today we invent less than half of what our counterparts did a century and a half ago [Is it the IPKat's imagination, or are statisticians the only people who never start sentences with the words "Statistics show ..."?]. While it's true that the world's cities are filled with American technology and gadgets like smart phones and athletic shoes, we've been lulled into thinking that we remain as inventive as ever, if not more so.

But that's just not so. Look around: Where are the groundbreaking inventions comparable to those from the Industrial Revolution? It's unbelievable (and unforgivable) that we've been using the same mode of transportation for over a century. And why are we still using coal and gasoline as our major energy sources, choking our cities with pollutants? [Well, that's an easy one -- it's because there are lots of folk out there who have a vested interest in coal and gasoline, including our governments and our pension funds] We've evolved from the steam engine [The ancient Greeks had Hero's Engine around 2,000 years ago, but it wasn't economically viable, what with all those slaves to do the work], the automobile and the airplane to what? Why aren't we driving automobiles that run on hydrogen extracted from ordinary tap water? Why are we giving a trillion dollars every year to hostile foreign nations for imported oil [Because American motorists aren't willing to pay for the cost of its possible replacements?] when we have the inventive talent in America to solve the nation's energy crisis?

We don't have these desperately needed technologies because regular Americans have given up on inventing [Really? Don't even some so-called trolls have a positive commitment to inventing? What would Intellectual Ventures have to say about this, Merpel wonders]. Their innovative spirit has been snuffed out...and Why Has America Stopped Inventing? explains why by comparing the experiences of America's most successful 19th century inventors with those of today. To do so, the book follows Jefferson refusing to waste any more weekends examining patent applications, Whitney being robbed of his fortune while the South's wealth exploded, the patent models that kept British soldiers from burning Washington's last-standing federal building, the formation of Lincoln's cabinet, and Selden crippling the entire U.S. Auto Industry. It also tells the story of the Wright brother's airplane monopoly, the Colt revolver's role in the Mexican American War, the Sewing Machine wars, the last six months of Daniel Webster's life, and the controversy behind the Bell telephone patent".

Merpel wonders if you really have to be American, paranoid and gullible if you are going to enjoy this book to the full -- the sort of person who is stirred into inventiveness by the patriotic naming of the America Invents Act and who takes great pride in the Great American Dream. It doesn't pretend to be a work of scholarship, but rather a work of provocation. The author knows a good yarn when he sees one and tells it to good effect. Apart from the book's content, the format is somewhat jarring too. Large print, small pages and narrow margins mean that the words positively shout at the reader, too.

This Kat agrees with this but he sees the point of a book like this if, for America, you substitute Europe -- or perhaps any other continent. In the new and increasingly harmonised, homogenised and pasteurised Europe, many of the EU's half a billion people -- twice the number in the US -- are wallowing in a quagmire of apathy, lack of personal commitment, loss of national identity, remoteness of government and decision-making and, worst of all, the erosion of any sort of moral or social compass by which to steer their lives. In many respects we are not individuals any more; we do not matter as people. We have become consumers, aggregated stake-holders and impotent pawns in a game with more rules than players. In these circumstances, we all need a clarion call to wake up and do something, perhaps even something inventive which will alleviate our lot, and even something as rough and unsophisticated as a kick in the pants -- or a book called Why Has Europe Stopped Inventing? -- might have the desired effect.

Darin is also a blogger and a patent applicant.

Bibliographic data: paperback, viii + 241 pages. ISBN 978 1 61448 048 8. Rupture factor: low. Book's web page here.

No self incrimination privilege for phone hacking

noreply@blogger.com (Darren Smyth) — Thu, 09 Feb 2012 18:29:00 +0000

This Kat finds that, as a patent attorney, just as in his previous life as a chemist, there is little about his day job that overlaps with anything that his non-IP friends have ever heard of. So while he was reading a racy report of another episode in the News of the World telephone hacking saga, he was astonished to come across the words “intellectual property”. So what was going on?

It all comes down to the Decision [2012] EWCA Civ 48 of the Court of Appeal, and the IPKat can do no better than defer to the Master of the Rolls (MR) giving the leading judgement in explaining the background (in this post, italics refer to direct quotations from the Decision):

1. The issues raised on these two appeals concern the extent and effect of section 72 of the Senior Courts Act 1981 ('section 72'), which cuts down the common law privilege against self-incrimination in relation to certain types of claim. The issues arise in the context of claims brought by two individuals who allege that their mobile telephone voice messages have been unlawfully intercepted (i.e. that their phones had been hacked into) by Glenn Mulcaire, a private investigator engaged by News Group Newspapers Ltd ('NGN'), the owners of the recently closed newspaper, the News of the World.

2. The claims are brought by (i) Nicola Phillips, a former assistant to Max Clifford, the well known public relations consultant, and (ii) Stephen Coogan, the well known comedian. Mr Coogan and Ms Phillips (together 'the claimants') each allege that voice messages on their mobile telephones ('voice messages') have been unlawfully intercepted by, or on the instructions of Mr Mulcaire and/or NGN, and that they have a cause of action in breach of confidence and in misuse of private information.

The IPKat notes that Glenn Mulcaire sought to avoid giving evidence relying, inter alia, on the privilege against self-incrimination (PSI). However, he ran into the problem of Section 72 of the above-mentioned Act. Returning to the MR:

10. The issues which have been debated on these appeals concern section 72, which is, so far as relevant, in the following terms:

'(1) In any proceedings to which this subsection applies a person shall not be excused, by reason that to do so would tend to expose that person … to proceedings for a related offence … :
(a)from answering any question put to that person in the first-mentioned proceedings; or
(b)from complying with any order made in those proceedings.

(2) Subsection (1) applies to the following civil proceedings in the High Court, namely:
(a) proceedings for infringement of rights pertaining to any intellectual property or for passing off;
(b) proceedings brought to obtain disclosure of information relating to any infringement of such rights or to any passing off;
(c) proceedings brought to prevent any apprehended infringement of such rights or any apprehended passing off.

(3) …. [N]o statement or admission made by a person:
(a) in answering a question put to him in any proceedings to which subsection (1) applies; or
(b) in complying with any order made in any such proceedings,
shall, in proceedings for any related offence ... , be admissible in evidence against that person …

(5) In this section:
"intellectual property" means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property;
"related offence", in relation to any proceedings to which subsection (1) applies, means:
(a) in the case of proceedings within subsection (2)(a) or (b):
(i) any offence committed by or in the course of the infringement or passing off to which those proceedings relate; or
(ii) any offence not within sub-paragraph (i) committed in connection with that infringement or passing off, being an offence involving fraud or dishonesty;
(b) in the case of proceedings within subsection (2)(c), any offence revealed by the facts on which the plaintiff relies in those proceedings;
….'.

So, in feline summary, Section 72 says that there is no protection against self incrimination in the case of intellectual property litigation. Instead, statements made by a person in the litigation are not admissible in evidence against that person in proceedings for a “related offence”.

Glenn Mulcaire put forward the following arguments “which appear to be of some general significance” according to the MR (presaging an appeal to the Supreme Court?) as to why privilege against self-incrimination should apply:

i) Information obtained by Mr Mulcaire from intercepting the voice messages of Ms Phillips and/or Mr Coogan was not 'intellectual property' and therefore section 72 cannot apply;

ii) If the information in question was 'intellectual property':
(a) Mr Mulcaire would, if he were required to provide all the information ordered by Mann J, and some of the information ordered by Vos J, be at risk of being prosecuted for an offence which is not a 'related offence', so section 72 does not apply;
(b) Section 72 is inconsistent with Article 6 of the European Convention on Human Rights ('the Convention'), and the court should accordingly make a declaration of incompatibility.

Observing first at para 18:

I would take this opportunity to express my support for the view that PSI has had its day in civil proceedings, provided that its removal is made subject to a provision along the lines of section 72(3). Whether or not one has that opinion, however, it is undoubtedly the case that, save to the extent that it has been cut down by statute, PSI remains part of the common law, and that it is for the legislature, not the judiciary, to remove it, or to cut it down.

(which Merpel notes was not a promising start for Mr Mulcaire)

In the USA they call it the
Fifth Amendment....

the MR went on to examine the slightly curious definition of “intellectual property” in sub-section (5) of s72. He had no difficulty in deciding that some of the voicemails would be “commercial information” according to the definition, and, moreover (at para 45) “that, as a matter of both principle and practice, non-commercial confidential information is within the ambit of the definition, because of the words 'or other intellectual property' ”

Mr Mulcaire did not even prevail in relation to non-confidential messages, with MR stating (at para 56): “if a defendant has intercepted a claimant's voice messages, it seems to me that, even where there is a significant preponderance of plainly non-confidential messages, he should nonetheless disclose them as part of the overall disclosure exercise.”

The MR also dismissed the arguments that Mr Mulcaire would be at risk of being prosecuted for an offence which is not a “related offence”, and that s 72 was incompatible with the Convention.

Therefore, the MR concluded (at para 83):

Accordingly, I would dismiss these appeals, as:

i) Much of the information on the voicemail messages of the claimants which have been intercepted by Mr Mulcaire is likely to have been 'commercial information or other intellectual property' within section 72(5);
ii) Although some of the information was not 'commercial information or other intellectual property', and, in Ms Phillips's case, the confidence may have been that of her clients, section 72 can be relied on against Mr Mulcaire in both cases;
iii) Para (a)(i) of the definition of 'related offence' in section 72(5) applies, and, while paras (a)(ii) and (b) do not, that does not assist Mr Mulcaire in resisting any aspect of the orders he is appealing;
iv) Section 72, as so interpreted, is not incompatible with the Convention, and in particular Article 6; so the orders requiring Mr Mulcaire to give the information ordered by Mann and Vos JJ were correct;
v) It would be inappropriate to impose any safeguards in favour of Mr Mulcaire over and above those contained in section 72(3);

Lord Justice Maurice Kay and the Lord Chief Justice simply agreed.

A local straw poll suggests that s72 is not well-known amongst non-litigating patent attorney types, so the IPKat would like to spread the word.

Merpel has heard that the provision was originally intended to help combat video music piracy by making Anton Piller orders more difficult to evade, but now wonders whether PSI is on its way out altogether. Merpel also suspects that our friends in the USA may be shocked by this, as PSI is enshrined in the US Constitution as the Fifth Amendment.

When Irish ISPs aren't smiling

noreply@blogger.com (David Brophy) — Thu, 09 Feb 2012 09:40:00 +0000

The mainstream news media in Ireland have been devoting an unusual amount of space to a proposed amendment to the Copyright and Related Rights Act, 2000. The amendment will provide copyright owners with the explicit right to obtain an injunction against an intermediary, such as an internet service provider, despite that intermediary's normal exemption from liability as a mere conduit.

It is sometimes hard to pin down exactly why one story grabs media attention and another fails to make a splash, but in this case the IPKat suspects that the publicity can largely be attributed to savvy marketing by opponents of the amendment. Upon seeing the attention given by the world's media to the blacking-out of the English Wikipedia site last month, Irish digital activists promptly dubbed the proposed new amendment to Irish copyright law "Ireland's SOPA" or "SOPA Ireland". The name stuck, and struck a resonance with reporters and editors, who promptly placed the story on their front pages and at the top of the news reports.

Leaving aside the question of whether the name is a clever piece of media manipulation or an accurate comparison with the Stop Online Piracy Act (hint: it's more the former than the latter, once you scratch the surface), why are many well-informed commentators and critics so opposed to this amendment, which has been strongly opposed by ISPAI, the umbrella group representing internet service providers (ISPs)

Down with this sort of thing. Careful now.

There are a few reasons for opposition, the strongest being firstly because it's being introduced by ministerial order (statutory instrument), rather than being fully debated through the Oireachtas (Ireland's legislature) with due parliamentary process; and secondly, because the published proposals are seen as being dangerously vague, allowing for injunctions to be granted against a wide class of intermediaries, not just ISPs, and not just to block particular works or sites. The parties injuncted are not guaranteed to be given any notice or the right to appear in court, and there are no criteria being laid down as to what factors a judge must take into account when deciding to grant or refuse an injunction.

The background to this story is a series of cases taken by the major record labels against Ireland's largest ISPs, namely Eircom and UPC.

In the litigation with Eircom, the ISP settled the action by agreeing to impose a "three strikes" mechanism upon its own customers who were accused of illegal downloads. Around the same time, Mr Justice Charleton granted an unopposed injunction against Eircom, forcing them to cut off all user access to the Pirate Bay website.

Charleton J., whose appearance on
this blog should not pass without noting that
"Judge Charleton" is an anagram of
"Jungle Cat Horde"

Emboldened by their easy successes, the record labels turned in pursuit of UPC, the next biggest ISP in the Irish market, and again ended up before Charleton J. They sought injunctions to force UPC to implement various technical solutions to block unauthorised downloads of their catalogues. Despite the judge expressing an evident sympathy for the copyright holders, he held himself unable to grant the requested injunction against UPC, and also held that he had been wrong in granting the Pirate Bay blocking injunction against Eircom.

Importantly, however, the only reason he held himself unable to grant the injunctions was because Ireland was, he held, in breach of its obligations under the EU Copyright Directive (2001/29/EC). And it was this finding that forced the hand of the Irish government.

Article 8(3) of that Directive provides that:

" Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right."

Although the government said it had always believed that injunctions were available according to the normal rules of equity and the existing provisions of the Copyright Act, it felt bound to respond by legislating to remedy a deficiency once this was the subject of a finding by a High Court judge.

When the legislation had failed to materialise by the start of this year, the major record labels rather helpfully sued the Irish state, in what was reported to be an attempt to hasten the promised legislation, and possibly also to add some backbone to the parliamentary draftsman, and avoid any watering down of the legislation.

The timing of this court action, and of the government responding with details of the proposed solution, were inauspicious, coming as they did in the midst of the furore over SOPA in the USA. The proposed amendment was to add the following subsection to section 40 (with a corresponding provision for performer's rights):

(5A) (a) The owner of the copyright in a work may, in respect of that work, apply to the High Court for an injunction against an intermediary to whom paragraph 3 of Article 8 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001[1] on the harmonisation of certain aspects of copyright and related rights in the information society applies.

(b) In considering an application for an injunction under this subsection, the court shall have due regard to the rights of any person likely to be affected by virtue of the grant of any such injunction and the court shall give such directions (including, where appropriate, a direction requiring a person be notified of the application) as the court considers appropriate in all of the circumstances.

(In fact, details of this proposal had been in the public domain since last summer, but they received little or no attention at the time. And anyway, that's the sort of detail that ruins an otherwise perfect story arc.)

The logo of the No SOPA pledge campaign,
which hoped to rally supporters to visit
their parliamentary representatives
in person to lobby opposition
to the copyright amendment

Reaction was immediate. Online campaigns were organised. Media outlets were contacted about SOPA Ireland. An online petition of protest received over 80,000 signatures in days and unusually, the fine detail of copyright law was the subject of reports on the main evening news.

The Irish Times carried an opinion piece by the digital rights activist and academic, TJ McIntyre, who set out the main criticisms as mentioned earlier. Another heavyweight contribution appeared in last weekend's Sunday Business Post, which carried an article written by Senior Counsel John Gordon, arguing that the legislation was unnecessary as a matter of law (behind a paywall, but quoted liberally by TJ here).

In spite of all this, the relevant Minister, Sean Sherlock, is reported to be determined to bring in the legislation by statutory instrument, in the terms set out above and with no concession on the requests made by critics of the proposal, and a decision along these lines is expected imminently.

From draft to wind of change? Guernsey proposes image rights

noreply@blogger.com (Jeremy) — Wed, 08 Feb 2012 22:14:00 +0000

A couple of eponymous Guernseys: will
infringers be cowed by the new proposals --
or are they just a load of bull?

The IPKat has been learning all about the consultation paper which the government of the cute little Channel Island of Guernsey has just issued. According to a circular which reached him earlier today:

" ... the Commerce and Employment department of the States of Guernsey has now sent the draft Image Rights legislation out for consultation.

The consultation period will last until 7 March 2012. We then expect the finalised legislation to be approved during the second quarter of this year.

This legislation will see Guernsey bringing in a registrable image right -- a world first.

It will enable rights holders to register and exploit their images through a recognisable, formal intellectual property right. These rights will have the added benefits of being able to be dealt with in the same way as other forms of Intellectual Property rights, which means they can be easily assigned or licensed to third parties.

As an active participant in the Image Rights process, [local law firm, and author of this circular] Collas Crill will continue to keep you informed on future developments in this exciting and groundbreaking area. We will be sending a further update on the Image Rights legislation in the next few days to fill you in on all the detail.

In the meantime, if you would like to see the draft legislation, you will need to contact the Guernsey Registry directly by emailing ipo@guernseyregistry.com".

This is your golden opportunity, says the IPKat. Email the Guernsey Registry now, ask to take a look at what might be a template for national legislation around the world, tell them what you think -- and don't forget to say the IPKat sent you.

Merpel is a little sceptical about the long-term effects of this initiative which, in the guise of creating intellectual property rights, may actually be demeaning them by trying to turn them into a second tier of protection against invasions of privacy. She also foresees all manner of grief when people who have assigned their image rights repent of doing so and find that there's not much they can do about it. But then, she hasn't yet emailed the Guernsey to read the draft legislation -- which she's now about to do.

How to improve your image here and here

A kat-pat to our friends at Freshfields Bruckhaus Deringer LLP for this lead

Eastern delight: two new titles on IP in Asia

noreply@blogger.com (Jeremy) — Wed, 08 Feb 2012 19:43:00 +0000

Copyright And The Public Interest In China, by Guan H. Tang (Shanghai University of Finance and Economics, China), is another bright and attractively-produced title from Edward Elgar Publishing's Intellectual Property and Global Development list, under the general editorship of the prolific and inspirational Professor Peter Yu, of Drake University. The text has evolved from Guan's PhD thesis which was supervised by the IPKat's friend Professor Hector McQueen (University of Edinburgh).

According to the publishers,

"Guan Hong Tang expertly highlights how the multidimensional concept of public interest has influenced the development and limitations of Chinese copyright.

Since 1990 China has awarded copyright – individual rights – but also provides for public, non-criminal enforcement. The author reveals that pressures of development, globalisation and participation in a world economy have hastened the loss of public interest from copyright. However, for a socialist country, placing the common ahead of the individual interest, the public interest also constitutes a phenomenological tool with which to limit copyright. The author also discusses how the rise of the Internet, which has had a major social and economic impact on China, raises problems for Chinese copyright law [Merpel moans: the problems faced by Chinese copyright law are nothing to the problems faced by people outside the jurisdiction who wonder whether, how and at what cost they can enforce it. All those phenomenological tools floating around don't help either!]. Comparing Chinese copyright law with the USA and the UK, topical issues are presented in this unique book including those arising within education, library and archives sectors.

This insightful book will strongly appeal to students and researchers in IP law, comparative law, Chinese studies, international commerce and information science. It will also prove invaluable for lawyers and consultants with expertise in IP and China".

Does the book match up to these claims? On balance, yes -- though this Kat found the description and analysis of the China content more interesting and compelling than the comparative material from the USA and the UK, which perhaps he has had to read once too often. It is open to argument as to whether the subject is fit for comparison at all, given the vast and all-but-unbridgeable gulf between the social, political, moral and economic bases upon which human activity is carried on in the China and the West and the consequent differences in perception as to how the public interest may be first defined and then applied. Yet there is a bridge, in the form of the norms of international copyright law to which, even as verbal formulae alone, both China and the two Western nations must adhere. The balance of competing private and public interests in the United States, the same principle --but adulterated by 'proportionality' -- in the European Union and the Confucianism that flavours so much Chinese sentiment all seem to drive in much the same direction, and all three seem to fulfill the same function: ideals that are easier to explain, to justify and to advocate than they are to apply consistently to the facts of the myriad real-life disputes than invoke them.

Bibliographical data: xiii + 283 pages. Hardback. ISBN 978 0 85793 106 1 (also available as an ebook as ISBN 978 0 85793 107 8). Hardback £79.95, but the publisher's online price is £71.96. Rupture factor: low. Web page here.

Intellectual Property, Competition Law and Economics in Asia, edited by R Ian McEwin, comes from the Hart Publishing stable. The editor, Professor of Law at the National University of Singapore, has a finger in both academic and practical pies sinc he is also Senior Economic and Regulatory Adviser to Rajah & Tann. In a previous existence he was economics adviser to the Singapore Department of Trade and Industry on competition law matters, before joining the Singapore Competition Commission as its inaugural Chief Economist [says Merpel, it's kudos to be linked with trade. industry and competition issues in a country with a strong economy in which both the public and the private sector seem to have somewhat entrepreneurial affections]. According to the publishers:

"This book results from a conference held in Singapore in September 2009 that brought together distinguished lawyers and economists to examine the differences and similarities in the intersection between intellectual property and competition laws in Asia. The prime focus was how best to balance these laws to improve economic welfare. Countries in Asia have different levels of development and experience with intellectual property and competition laws. Japan has the longest experience and now vigorously enforces both competition and intellectual property laws. Most other countries in Asia have only recently introduced intellectual property laws (due to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement) and competition laws (sometimes due to the World Bank, International Monetary Fund or free trade agreements).

It would be naïve to think that laws, even if similar on the surface, have the same goals or can be enforced similarly. Countries have differing degrees of acceptance of these laws, different economic circumstances and differing legal and political institutions. To set the scene, Judge Doug Ginsburg, Greg Sidak, David Teece and Bill Kovacic look at the intersection of intellectual property and competition laws in the United States. Next are country chapters on Asia, each jointly authored by a lawyer and an economist. The country chapters outline the institutional background to the intersection in each country, discuss the policy underpinnings (theoretically as well as describing actual policy initiatives), analyse the case law in the area, and make policy prescriptions".

Books based on conferences have both strengths and weaknesses. Their strengths lie in the fact that most speakers, having already done the hard work in preparing their papers, are happy to indulge in a bit of recycling and get extra mileage from their work in the form of a chapter in a book which, in their minds at least, everyone will buy and read. Their weaknesses lie in the fact that conference programmes are initially more limited than other collections of essays, since the selection of authors depends on such chance factors as their availability on a specific date and the need to provide real-time instruction and dialogue that segues through not just the topics but the diurnal demands of those attending. The papers in this collection are, however, very much more than the average conference paper and it is apparent that their authors have worked hard to enrich their topics to a higher level of analysis and detail than one might expect from a fresh bundle of conference papers.

This Kat was unfamiliar with the names of most of the contributors and, for that matter, with much of the content -- which means that he had a chance to learn something. If nothing else, he had not previously appreciated the difference between dynamic and static competition in antitrust law. However, having an IP background and with a knowledge of competition that has been picked up on a need-to-groan basis, he thought the country-by-country chapters more accessible to him than the analytic "Setting the Scene" section at the beginning.

Bibliographical data. Hardback. xxxiii + 334 pages. ISBN 9781849460873. Price £75. Rupture factor: low-to-medium. Web page here,

Wednesday whimsies

noreply@blogger.com (Jeremy) — Wed, 08 Feb 2012 12:53:00 +0000

Thanks to the zeal of the UK's Intellectual Property Office (IPO) this Kat has just learned of a Belgian dispute which is now coming before the Court of Justice of the European Union (CJEU) for a preliminary ruling. It's Case C-657/11 Belgian Electronic Sorting Technology (BEST) v Bert Peelaers and Visys NV. The question on which the Hof van Cassatie van Belgie seeks guidance is this:

"Is the term ‘advertising’ in Article 2 of Council Directive 84/450 ... relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising and in Article 2 of Directive 2006/114 ... concerning misleading and comparative advertising to be interpreted as encompassing, on the one hand, the registration and use of a domain name and, on the other, the use of metatags in a website’s metadata?"

The Kat doesn't know the factual background to this dispute and hopes that one of his Belgian readers will let him know. Merpel bets the CJEU will rule that (i) the registration of a domain name is not advertising; (ii) the use of a domain name may or may not be, and that this is a question for the national court to decide on the facts before it; (iii) the use of a metatag is not advertising within the meaning of the Directives concerned; (iv) the entrails of Google France will be dragged before the Advocate General and the CJEU, where they will be carefully examined for evidence as to what that court might have been thinking of back in March 2010.

If you would like to advise the IPO a to how it should advise the UK government to advise the CJEU, just email policy@ipo.gsi.gov.uk before next Thursday, 16 February 2012, and tell them the Kat sent you.

Advocate General Sharpston is
coming to London on a flying visit

Still on the subject of things with a European flavour, one lady who probably knows the answer to the question posed above is the excellent Eleanor Sharpston QC (Advocate General, CJEU). On 1 March 2012 she is forsaking the Dynamic Duchy in order to travel to London and speak on the topic of "European Competition Law, Fundamental Rights and the Luxembourg (EU) Courts". The reason for her decision to cross the Channel is her determination to participate in the Competition Law Association's 14th Annual Burrell Lecture. Details are available here so, if ever you have had the ambition to give an Advocate General your opinion rather than having to read through pages and pages of theirs, do attend!

Around the weblogs. First, congratulations to the Art & Artifice weblog -- which is currently planning its first event. A&A has just welcomed its 300th email subscriber, just a little over a year since its launch. Meanwhile, there's a most entertaining post on PatLit from Michael Thesen on the introduction of electronic document-sharing facilities in the German Bundespatentgericht (Federal Patent Court). On the MARQUES Class 46 blog, Laetitia Lagarde explains the General Court's take on the distinctiveness of elephants. Oh, and Ben Challis has directed 1709 Blog readers to the EFF's amazing "Dear Hollywood" letter from "The Internet", which has a guaranteed wind-up value ...

Readers of The 1709 Blog will know that it has a seminar coming up on Tuesday 3 April 2012. The seminar has a speaker, a subject and a time (William Patry, "How to Fix Copyright" and breakfast, 8.30am to 10am). What it doesn't yet have is a venue. An appeal to 1709 Blog readers didn't solve the problem so the IPKat is going to have a try. He says:

"If you wish to offer your premises, together with a breakfast buffet spread, for a bunch of copyright enthusiasts, in return for the eternal gratitude of the 1709 Blog team and even some half-decent publicity, please email the IPKat here and let him know".

Singing Cactus routs Olympic Committee, puts Prickly Pear to Flight

noreply@blogger.com (Jeremy) — Wed, 08 Feb 2012 10:11:00 +0000

Kishkashta

Olympic Committee Gets Sued. The IPKat had naively believed that one of the great truths of modern life is that, when national Olympic Committees go to court, their role is always that of the plaintiff -- and a successful plaintiff, at that. He was therefore most surprised to be directed to a Jerusalem Post article, "Singing cactus wins courtroom victory in copyright clash", by Joanna Paraszczuk [If you could have names in Scrabble, Joanna's surname would be worth a cool 36 even if you couldn't put it on a triple word score, notes Merpel, whose own surname, with an M, a C and a K, doesn't do too badly]. Technically speaking it was not the cactus but its rights owners who won the victory since, even in the very liberal legal atmosphere of the 2010s, fictional characters still don't have locus standi to bring infringement claims in their own names [The situation may soon change. The Kat notes that, as you read this, five Killer Whales are currently named as plaintiffs in legal proceedings against SeaWorld].

Anyway, it seems that a Tel-Aviv District Court judge concluded that the local Olympians had slipped up badly when they chose Shpitzik the Prickly Pear (below, left) as the Israeli mascot for the impending London 2012 Olympics on account of its similarity to children’s TV star Kishkashta the Singing Cactus (above, right), granting injunctive relief.

The ruling came after Israel Educational Television, which owns the rights to Kishkashta, filed an urgent request with the Tel Aviv District Court asking that the Israel OC be prevented from using Shpitzik, which it has chosen as Israel’s mascot in the London Olympics this summer.

According to the article, the judge (Deputy Court President Judge Gideon Ginat) concluded that Shpitzik had infringed Kishkashta’s copyright, ruled that no form of Shpitzik might be used by the Committee and ordered it to pay costs of some NIS 50,000 [just over 10,000 euro, or US$ 13,500] to Israel Educational Television, finding that the Committee had taken a well-known character and made use of it by adding some elements, making some minor changes and giving it another nickname.

The IPKat can't resist observing that, when he first saw Kishkashta the Singing Cactus, his immediate thought was, "Goodness, doesn't he look like Shrek!" (right). But what do readers think?

Prickly pear recipes here and here
Other singing cactuses here and here
3.54 million Google search results for 'cactus or cacti' here

A kat-pat to Shabtai Atlow for letting the Kats know about this.

ECHR: It's those human rights again... or: Princess Caroline and her quest for privacy

noreply@blogger.com (Birgit Clark) — Tue, 07 Feb 2012 22:52:00 +0000

Yes, it's those human rights again.... but no Max Mosley is not involved - this time.

Since the early 1990s Princess Caroline of Monaco (now Princess Caroline of Hanover, left) has been trying – often through the (German) courts – to prevent the publication of photos about her private life in the media (see IPKat reports here) and this Kat very fondly remembers some of the initial court cases from Germany involving the glamorous Princess which this Kat commented on in her doctoral thesis. Well, Princess Caroline's quest for privacy is still going on and this time we have news from the European Court of Human Rights in Strasbourg.

The Strasbourg court had to decide two cases from Germany and both cases relate to the delicate balance between freedom of expression of the media and a celebrity's right to privacy: Article 10 vs Article 8 of the European Convention on Human Rights. Interestingly and potentially also important for the Leveson inquiry in the UK, the court in both cases decided to shift the balance from privacy rights towards freedom of expression.

Now what had happened?

The first case (Axel Springer v Germany (App No 39954/08)) concerned media reports about a famous German TV personality who had been arrested for allegedly having used cocaine. This famous German TV personality successfully obtained a ban on the publication of further photos and articles regarding his cocaine arrest case arguing that these infringed his right to a private life as guaranteed by Article 8. The German courts agreed. However, this was appealed all the way to Strasbourg by the publisher of the media reports, German publishing house Axel Springer, who in turn argued that the German judgements infringed its right to freedom of expression under Article 10 of the European Convention on Human Rights.

In this case, the court assessed six points to establish whether the sanctions imposed by the German courts had been justified under Article 10(2): "Contribution to a debate of general interest"; "how well known is the person concerned and what is the subject of the report?"; "the method of obtaining the information and its veracity"; the" content, form and consequences of the impugned article" and the "severity of the sanctions".

The court found that report contributed to a debate of public interest. Secondly, the TV personality was well known. Regarding the subject of the publication, the Strasbourg court agreed with the German court ("The Court can broadly agree with that assessment"):

"... X was arrested in public, in a tent at the beer festival in Munich. In the Court of Appeal’s opinion, that fact was a matter of important public interest in this case, even if that interest did not extend to the description and characterisation of the offence in question as it had been committed out of public view."

The TV personality had further actively sought the limelight since...

"(he) had himself revealed details about his private life in a number of interviews (...). In the Court’s view, he had therefore actively sought the limelight, so that, having regard to the degree to which he was known to the public, his “legitimate expectation” that his private life would be effectively protected was henceforth reduced (see, mutatis mutandis, Hachette Filipacchi Associés (ICI PARIS), cited above, § 53, and, by converse implication, Eerikäinen and Others, cited above, § 66)." (... ) it should also be pointed out that all the information revealed by the applicant company on the day on which the first article appeared was confirmed by the prosecutor W. to other magazines and to television channels. "

Finally, the publication did not have serious consequences for the TV personality:

"The severity of the sanctions imposed on the applicant company, the Court considers that, although these were lenient, they were capable of having a chilling effect on the applicant company. In any event, they were not justified in the light of the factors set out above."

On balance, court held the interference with publisher's rights was not “necessary in a democratic society” and thus infringed its rights of freedom of expression, Article 10.

"Despite the margin of appreciation enjoyed by the Contracting States, the Court considers that there is no reasonable relationship of proportionality between, on the one hand, the restrictions imposed by the national courts on the applicant company’s right to freedom of expression and, on the other hand, the legitimate aim pursued."

The second case (von Hannover v Germany (No.2) (App Nos. 40660/08 ; 60641/08)) concerned Princess Caroline and involved the publication of a photograph showing Princess Caroline and her husband Ernst August von Hannover during a skiing holiday in St Moritz in 2002. The photo was accompanied by an article on Caroline's father's, Prince Rainier of Monaco, frail health. In essence, the German courts had held that the report concerned a topic of general interest. The German courts further found that the public had a legitimate interest to learn about how Prince Rainier's children were behaving during the time of his illness. Princess Caroline and her husband alleged that the refusal by the German courts to grant an injunct

ion against any further publication of the photos infringed their right to respect for their private life as guaranteed by Article 8 of the European Convention on Human Rights.

Here, the Strasbourg court upheld the German courts' decisions stressing that the photographs had neither been taken in “unfavourable circumstances” nor were they offensive in themselves. The court confirmed that the German courts had properly balanced the rights of the publisher's right to freedom of expression against the Princess's and her husbands rights under Article 8, since the accompanying article had contributed to a debate of general interest.

"120. ... that irrespective of the question whether and to what extent the first applicant (the Princess) assumes official functions on behalf of the Principality of Monaco, it cannot be claimed that the applicants, who are undeniably very well known, are ordinary private individuals. They must, on the contrary, be regarded as public figures... ."

"122. The Court observes that the Federal Court of Justice concluded that the applicants had not adduced evidence of unfavourable circumstances in that connection and that there was nothing to indicate that the photos had been taken surreptitiously or by equivalent secret means such as to render their publication illegal. The Federal Constitutional Court, for its part, stated that the publishing company concerned had provided details of how the photo that had appeared in the Frau im Spiegel magazine had been taken, but that the first applicant had neither complained before the civil courts that those details were inadequate nor submitted that the photo in question had been taken in conditions that were unfavourable to her.

123. The Court observes that, according to the case-law of the German courts, the circumstances in which photos have been taken constitutes one of the factors that are normally examined when the competing interests are balanced against each other. In the present case it can be seen from the decisions of the national courts that this factor did not require a more thorough examination as the applicants did not put forward any relevant arguments and there were no particular circumstances justifying an injunction against publishing the photos. The Court notes, moreover, as pointed out by the Federal Court of Justice, that the photos of the applicants in the middle of a street in St. Moritz in winter were not in themselves offensive to the point of justifying their prohibition."

The Strasbourg "court concludes that the [national courts] have not failed to comply with their positive obligations under Article 8 of the Convention. Accordingly, there has not been a violation of [Article 8]". The magazine had not therefore infringed Princess Caroline's privacy rights under Article 8.

Both decisions are well worth a much, much closer read, in particular since they summarise the case law very well and are properly reasoned. This Kat will also be interested to see whether the reasoning of these two judgments will be discussed in the Leveson inquiry in the UK. There is one thing this Kat is quite convinced of: Princess Caroline will continue her quest for privacy and the next generation is following in her footsteps. Her daughter, the beautiful Charlotte Casiraghi, has herself already filed several high profile privacy law suits in Germany, see here (in German). This litigious family might indeed provide this Kat with interesting case law until her retirement....

Pub football and the Kitchin sink ...

noreply@blogger.com (Jeremy) — Tue, 07 Feb 2012 16:38:00 +0000

It's not quite eleven-a-side, but the much-contested case of Football Association Premier League Ltd, NetMed Hellas SA, Multichoice Hellas SA, Union de Associations de Football, British Sky Broadcasting Limited, Setanta Sports SARL, Group Canal Plus SA and The Motion Picture Association v QC Leisure, David Richardson, AV Station plc, Malcolm Chamberlain, Michael Madden, Sanjay Raval, David Greenslade, SR Leisure Ltd, Philip George Charles Houghton and Derek Owen; The Secretary of State for Business, Innovation and Skills intervening [2012] EWHC 108 (Ch) does have that sort of feeling to it.

The return of a High Court Judge from the lofty
heights of the Court of Appeal is no everyday event

The decision handed down late last week is the latest in a long line of decisions going back to 2008 when Mr Justice Kitchin (as he then was), in [2008] EWHC 1411 (Ch) (noted here by the IPKat), decided in a monumental 385-paragraph to refer a number of copyright-related questions to the Court of Justice of the European Union for a preliminary ruling. On 4 October 2011 the Court of Justice duly delivered its ruling in Joined Cases C-403/08 Football Association Premier League Ltd, NetMed Hellas SA, Multichoice Hellas SA v QC Leisure, David Richardson, AV Station plc, Malcolm Chamberlain, Michael Madden, SR Leisure Ltd, Philip George Charles Houghton and Derek Owen and C-429/08 Karen Murphy v Media Protection Services Ltd (see IPKat post here), following which Mr Justice Kitchin -- having metaphorically vanished as Gandalf the Grey and returned as Gandalf the White -- swooped down from the lofty heights of the Court of Appeal, England and Wales, in his new guise as Lord Justice Kitchin in order to apply the December ruling to the facts of the dispute he had referred some three and a half years earlier.

At 102 paragraphs, last week's ruling was a doddle compared with the 385 paragraphs of the original and the 211 paragraphs of the Court of Justice ruling [Merpel says, have you noticed how each judgment is shorter than its predecessor? If it should ever get to the Supreme Court, it'll be tiny], but what was it all about -- and what happens now? Let the Kat explain.

Essentially, the Football Association Premier League (FAPL) controlled all the rights to the best football matches across Europe and licensed broadcasters to broadcast them to subscribers. To make sure that only paying subscribers watched the broadcast matches, those matches were encrypted so that you had to buy a decryption box. It was a lot cheaper to buy decryption boxes in Greece, where the market for encrypted soccer was not so lucrative, but broadcasts were licensed on a country-by-country basis so that broadcasters who had to pay more for their licences in bigger countries where football broadcasting was worth more could recoup their outlay and make their profit without worrying about people buying their decryptors in cheaper jurisdictions and import them. So were people who bought Greek decoders, imported them into England and used them for watching English Premier League football matches infringing copyright or anti-decryption rules -- or was it the FAPL and its cohorts which were the villains for perpetrating anti-competitive practices and dividing up the European Union into separate national markets?

The Court of Justice couldn't actually say who was the winner of the loser, since in theory it's only there to give a ruling on a set of hypothetical questions which the referring court then rules on -- though it did more or less say that the pub-owners who were importing the decoders so that their customers could watch the matches were a little bit naughty since, while there was no copyright in a football match, there were other subsidiary copyrights that were being infringed. However, the FAPL and Co. were naughtier since they were behaving contrary to the EU's competition laws.

Did Kitchin LJ agree with all of this? Basically, yes -- but there was still some fine-tuning to do. First, considering whether the showing of such matches was a communication to the public, he turned to s.72(1)(c) which of the Copyright, Designs and Patents Act 1988, which states:

"The showing or playing in public of a broadcast to an audience who have not paid for admission to the place where the broadcast is to be seen or heard does not infringe any copyright in

(a) the broadcast;

(b) any sound recording (except so far as it is an excepted sound recording) included in it; or

(c) any film included in it".

Construing the provision in as literal a manner as one might ever hope to see in the 21st century, he said:

"I recognise that Article 3 of the Copyright Directive does not permit a defence in the terms of s.72(1)(c) and ... I am satisfied that the legislature intended to implement this provision .... I am also conscious that the obligation on this court to construe domestic legislation consistently with Community law obligations is both broad and far reaching. It may require the court to depart from the unambiguous meaning of a statute and to read it down by implying words into it. It may also require the court to adopt an interpretation which is not the natural one. Further, a conforming interpretation necessarily applies retrospectively" [para.73].

However,

"In my judgment s.72(1)(c) means what it says. The showing or playing of a broadcast in a public house to members of the public who have not paid for admission does not infringe any copyright in any film included in the broadcast" [para.78].

Had there been an authorisation to commit copyright infringement? Yes, this was an authorisation in physical form*:

" ... the supply of the decoder cards to customers constituted an authorisation to use the decoder cards for the purpose for which they were supplied. In the case of publicans, they were supplied to allow customers to watch television programming in their public houses" [para.81].

What about the communicating to the public of the official Barclays Premier League Anthem that accompanied some of the matches? This claim, the judge said, would fail in any event unless the claimant could establish that, when the broadcast took place, the Anthem was actually played aloud [para.83].

In view of the fact that some infringement had been established, what would the FAPL and fellow claimants get out of it? Probably not a lot. Said Kitchin LJ:

"I am satisfied that it is appropriate to make an order for an inquiry or account but that in the light of the scale of the infringements it is appropriate that the cases should be transferred to the [bargain-basement] Patents County Court. At a relatively late stage the claimants have introduced into the draft order directions for disclosure of the extent of the defendants' dealings in and use of decoder cards. I have reached the conclusion it is not appropriate to make such an order at this stage. This is not a matter in relation to which the defendants have had an opportunity properly to consider their position and it appears they may already have given substantial disclosure in the course of the main proceedings. The judge hearing this matter in the Patents County Court [Merpel's giving odds of 7/2 that this will be Lord Justice Kitchin again, sinking a little further into the murky abyss of judicial life in the raw ...] will be in a much better position to assess what, if any, further orders for disclosure are necessary and proportionate to enable any outstanding issues to be disposed of" [para.102].

Purrcival

A survey of the media suggests that the winner is the FAPL, but both teams have claimed to be satisfied with the outcome. The IPKat, whose cousin Purrcival made his Premier League debut at Anfield last night in the Liverpool v Spurs fixture, thinks that it's very sad when disputes of this nature, would like to see these matters sorted out by realistic and affordable licensing policies on the part of the rights owners, matched by a willingness to pay realistic and affordable licence fees on the part of the publicans. Then, with luck, we can have a realistic and affordable pint of ale while we watch our footie.

* The IPKat thanks Daniel Gallagher (Mayer Brown International LLP) for picking up a small but significant error in the original version of this post. Merpel says: shame on everyone else who missed it!

Katonomics 11: Patent harmonisation and a little romance

noreply@blogger.com (Jeremy) — Tue, 07 Feb 2012 10:07:00 +0000

Many people do love
harmonisation --
especially when it's
on their own terms

Following last week's foray into the football transfer market, our very own Katonomist Dr Nicola Searle continues her mission to make IP enthusiasts more familiar with the principles of economics -- and to make the principles of economics more accessible at the point where they affect intellectual property rights and interests -- by taking a look at one of the hottest potatoes of recent years: the harmonisation of patents in Europe. At this point the IPKat can almost hear readers gasp, "You mean it's not just about politics?" Indeed, it isn't, so read on:

"In anticipation of Saint Valentine’s Day, readers will be delighted to know that this post concerns e-harmony. No, not the dating website, but the harmonisation of European patenting. Nothing says romance like the economics of the EU unitary patent ...
Changes to patent law and harmonisation in general have long been popular topics for economic analysis. There are decades of scholarship examining international discrepancies in law such as the U.S. first-to-invent system and the lack of a European unitary patent. These studies typically examine the interaction of policy, firm behaviour and innovation, and evaluate competing policies in terms of their effects on social welfare (often using cost-benefit analysis).

Economic analysis of the unitary patent follows this tradition. The main economic argument in favour of a European unitary patent is the relatively high cost of patenting in Europe. As commenters on this IPKat post noted, this has been the focus of commissioned reports by Harhoff (here), Danguy and van Pottelsberghe (here and here).

First, the patenting process itself is relatively expensive in Europe. Van Pottelsberghe and Danguy calculate the per-million-inhabitants cost for the first ten years of patent protection as €26 for Japan and €12 for the U.S. This compares to €55 for six EU countries and €76 for 13. Patenting in Europe is more expensive as filing in multiple jurisdictions entails significant fees, resources and translation costs. Unlike the comparable economies of Japan and the U.S., there is no one-stop shop for European patenting.

A second costly part of EU patent protection is that of litigation. The lack of a central court means that litigation can occur in multiple jurisdictions. This is wasteful as multiple courts may try the same case. It is also creates uncertainty for all parties as cases in different jurisdictions may result in conflicting infringement or invalidation outcomes.

If patents encourage innovation, then cheaper patenting should encourage innovation more. Patent protection under a unitary patent system would cost roughly €26 per-million-inhabitants and be on par with Japan (van Pottelsberghe and Danguy). The unified system, complete with a unified litigation system, should reduce the uncertainty associated with patenting in Europe. A central repository should improve dissemination of knowledge associated with innovation and therefore encourage further innovation. A cheaper, less fragmented patenting system should do a better job of encouraging innovation than the current system.

The distribution of the benefits of cheaper patenting is also important. The cost of patenting is relatively high for smaller firms. For larger firms with more resources and in-house counsel, patenting costs are relatively low. Cheaper patenting could provide more incentives to innovate for smaller firms. As van Pottelsberghe and Danguy note, the U.S. and Japanese patent systems offer discounted fees for small-to-medium enterprises.

However, the costs associated with patenting don’t simply disappear into a black hole. Patenting fees fund national IP offices and pay wages. Translation and procedural costs support the translating and legal service industries. The Commission’s 2011 Impact Assessment notes that the proposed changes will have transitional and long-term negative impact on translators and patent attorneys. Unfortunately for those in favour of the unitary patent, the stakeholders most likely to lose out from the system are those well equipped to fight it.

Another consideration is that cheaper isn’t necessarily better for innovation policy. Patent fees constitute an important policy tool. In the social contract, the patent represents a temporary monopoly. If that monopoly is too cheap, you invite frivolous patenting and patent backlogs. It gets particularly interesting when look at application versus renewal fees. Cornelli and Schankerman argue here that patent renewal fees should be more expensive, and rise sharply over the course of the patent. Only the most valuable patents would be maintained (the interaction of fees and patentees’ behaviour is summarised on page 11 of van Pottelsberghe and Danguy.

At a practical level, questions remain as to the setting of fees, the distribution of those fees and the litigation system. The patent system is often expected to pay for itself, thus the question of sustainability of the system and the distribution of fees amongst member nations are key. Planning will also have to consider the demand for patents and litigation. In the U.S., Jaffe and Lerner devoted a book to arguing that creation of the patent-specific Court of Appeals for the Federal Circuit (CAFC) led to the weakening of patent standards and helped foster tro…, ahem, non-practicing entities (NPEs). Harhoff’s report also argues that the system should be NPE-proofed. The debate continues.

However, these arguments must consider the international competitive context of patenting. A relatively more expensive patenting system potentially puts Europe at a comparative disadvantage to cheaper systems. Unless we want to run an international IP cartel, cheaper may be a better strategy.

As Pitkethly has noted in 1999, European history and cultural diversity have contributed to the lack of progress on a unitary patent. Given the competing economic interests and national differences of the patent system, we can look forward to more lively debates.

How do you think fees should be set? Is the cost-benefit analysis a compelling argument in favour of the EU unitary patent?

P.S. My apologies to lawmakers who hoped this article would lead them to love; I couldn’t find an international dating site for legal professionals, I only found national ones".

What is obvious – the route or the destination?

noreply@blogger.com (Darren Smyth) — Tue, 07 Feb 2012 09:56:00 +0000

When this Kat was an IPKitten, he learnt that, in the case of a product claim defined structurally (as opposed to functionally), the approach taken by patent offices such as the EPO to the analysis of inventive step was to investigate whether the structural features themselves were obvious, not to enquire whether the process of arriving at the structure was obvious.

For this reason, he was a little surprised by the EPO Board of Appeal Decision T 777/08 Atorvastatin Polymorphs (OJEPO 12/11). This Kat has already blogged a factual note about this case, but, in essence, the Decision states that a claim to a crystalline form or polymorph of a compound [defined, for example, by its X-ray diffraction data] will in general lack inventive step over prior art disclosing the amorphous form of the same compound, unless in any particular case there is a technical prejudice or unexpected property of the polymorph discovered. The main reason given was that screening for polymorphs is a routine procedure.

[Note for non-chemists – in a crystalline form the molecules of a solid substance are packed in a regular manner; if more than one such packing exists for the same substance it is termed polymorphism, and polymorphs have different X-ray diffraction data from each other; while in an amorphous form the molecules of a solid are not packed regularly.]

The counter view, following the reasoning to which this Kat has been accustomed, is that although it may be routine to look for crystalline forms, there is absolutely no way to predict what crystalline form(s) will be found, and therefore any specifically defined crystalline form is not obvious.

Last week this Kat was listening to Stephen Ingham’s CIPA Webinar on Antibody Patenting, in which technical field a similar dichotomy arises – the EPO since T 735/00 only acknowledges inventive step for an antibody (claimed structurally) “if and when there is evidence that a claimed monoclonal antibody prepared by routine methods shows unexpected properties”.

Stephen pointed out that this was inconsistent with the approach taken in the field of small molecule chemistry. And now within the field of small molecule chemistry we have another inconsistency.

Which leaves this Kat pondering:

1) Can there be any justification for applying the tests of obviousness differently in different technical fields?

2) Should the patentability of a claim defined in structural terms be determined by reference to features other than the structural features recited?

What do our readers think?

Footy broadcasts online: the saga of Optus v Telstra

noreply@blogger.com (Catherine Lee) — Mon, 06 Feb 2012 16:35:00 +0000

Sports broadcasts are big business. As many readers will know, there are two main football codes in Australia. 'Aussie Rules' (sometimes referred to as 'aerial ping pong' due to the football going up and down the ground via long, high kicks) is played by 18 players on an oval grass field or modified cricket ground and is governed by the the Australian Football League (AFL). 'Rugby League' (a modified version of rugby union) is played by two teams of 13 players on a rectangular grass field and is governed by the National Rugby League (NRL). The AFL and the NRL own the copyright in broadcasts made on free-to-air television of games played between the teams in their respective competitions. Both the AFL and NRL have granted exclusive licences to Telstra (the largest media and communications company in Australia) to exploit footage of matches by communicating them to the public or or via the internet and mobile telephony enabled devices.

In July 2011, Optus (the second largest media and communications company in Australia) began offering a new service called 'TV Now' in July 2011 to its private, as well as small to medium-sized business, customers in Sydney, Melbourne, Brisbane, Adelaide and Perth. The service provided users with the ability to record free-to-air television programs, including AFL and NRL games, and play them back on any one of four compatible devices, namely, PCs, Apple devices, Android devices and 3G devices. Optus had established a complex recording system to operate the TV Now service. The user of the TV Now service could select a program from an electronic program guide and click 'record'. Unknown to the user, Optus’s technology then caused a set of four unique recordings to be made of the program its user had selected, for the sole use of that person (ie one each for PCs, Apple, Android, and 3G devices). These copies were then stored in at Optus’ computer data storage centre. When a user clicked 'play', Optus’s data storage centre streamed the copy of the program in the appropriate format to that device so that the user can watch it. Users with Apple iPads or iPhones could watch a program selected for recording 'almost live' (that is, within about two minutes of the commencement of the actual free to air broadcast). Users with other compatible devices (PCs, Android and 3G devices) could only watch a recorded program after the broadcast had finished. Users of any compatible devices could view the recording within 30 days of the original broadcast. Importantly, the streamed copy is not downloaded to the users’ device.

Not surprisingly, the AFL, NRL and Telstra were none too happy about Optus's TV Now service. The AFL and NRL claimed that the TV Now service infringed their copyright in broadcasts in a number of AFL and NRL games. They also said that they would seek an injunction against Optus, to restrain it from continuing to provide its TV Now service. Optus commenced proceedings in the Federal Court of Australia, claiming that the AFL and NRL had made unjustified threats of infringement against it within the meaning of section 202 of the Copyright Act 1968 (Cth) ('the Act'). The Court later added Telstra as a party to assert similar claims to the AFL and NRL as exclusive licensee.

Did Optus, through the operation of its TV Now service, infringe the copyright interests of the AFL, NRL and Telstra (the 'Rightholders') in the free to air broadcasts of some live and filmed AFL and NRL games played in September and October 2011?

The Rightholders alleged that Optus made cinematograph films within the meaning of section 10(1) of the Act which infringed their copyright interests in the free to air broadcasts of some live and pre-recorded AFL and NRL games. The Rightholders further alleged that Optus later communicated the recordings or copies to users of the TV Now service when they viewed these on their compatible devices.

Optus contended that the users, rather than it, had made the films or copies and played them without any infringement of copyright because of the exception for private and domestic recording in section 111 of the Act. That section provides that a person can make a film, or copy, or recording of a broadcast solely for their private and domestic use by watching or listening to the material broadcast at a time more convenient than when the broadcast was made. If the person does make a copy in those circumstances, then the making of the recording will not infringe copyright in the broadcast.

Rares J delivered his judgment last week: Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) [2012] FCA 34 . The parties agreed that there were seven issues for him to decide:

1. Who performed the acts involved in recording the NRL broadcasts, AFL broadcasts and AFL films (collectively 'the Copyright Works') for the operation of the TV Now service?

2. Does section 111 mean that the recording was not an infringement of copyright? If section 111(2) does not apply, is Optus liable for copyright infringement by way of authorisation?

3. When the recording was viewed, who did the acts of electronically transmitting the Copyright Works?

4. When recordings were streamed to a user, was this a communication 'to the public'?

5. Did Optus make the Copyright Works available online?

6. If the answer to 5 is 'yes', was this to the public?

7. Is the digital file comprising the NRL footage streamed to users an 'article' within the meaning of section 103 or an 'article or thing' within the meaning of section 111(3)(d) and, if so, was it distributed for the purpose of trade? (This issue was pressed only by the NRL).

Question 1: Who did the recording?

Rares J found (at [63]) that the user made each recording of a broadcast by clicking on the 'record' button on their compatible device. He explained that this was because the user was solely responsible for the creation of those films. They decided whether to make the films and only they had the means of being able to view them. If the user did not click 'record', no films would be brought into existence that they could play back later. In that regard, the service that TV Now offered its users was substantially similar to the position where a person used a VCR, DVR or similar device to copy a television broadcast. Even though Optus provided all the significant technology for making, keeping and playing the recording, Rares J considered that in substance this was no different to a person using equipment or technology in their home or elsewhere to copy or record a broadcast.

Question 2: Was recording the films an infringement of copyright?

No. Rares J was satisfied (at [85]) that when users clicked the 'record' button, they did not infringe the rightholders’ copyright in the broadcasts of the AFL and NRL games because of section 111(1) and (2) of the Act. That was because the evidence (at [74]) suggested that individual users watching a broadcast or film of a football game or television program, on their mobile device or PC would only be doing so for personal pleasure or interest. Indeed, Rares J noted (at [75]) that the users agreed with the terms and conditions of the TV Now service that limited their use of it to a non-infringing use that complied with the purposes in section 111(1).

As noted above, one feature of the Apple devices is that they permit a person to view a film of a broadcast 'near live'. This additional feature did not alter Rares J's above finding. He stated (at [81]) that if a person can watch a broadcast 'near live', away from a television, that may enable them to do something else. For Rares J, watching such a broadcast at a more convenient time, even if only by minutes, was still consistent with the definition of 'private and domestic use'.

Questions 3 and 5: Did Optus communicate the film when the user plays it?

No. Rares J (at [90]) was of the opinion that the user was responsible for any such communication made to their device by seeking to play the program that they had earlier selected for recording. This was because the TV Now service operated so as to make the user the person responsible for determining the content of any communication to them of a recorded program when they made a 'play' request. The user must click 'play' if any communication, by way of an electronic transmission, of the film to them is to occur.

Further, Rares J observed (at [91]) that the situation of a user of the TV Now service clicking 'play' was 'quite unlike' that of a person browsing the internet who was unaware or uncertain of what content may be delivered by clicking on a link. The user of the TV Now service had previously determined that the content of what they caused to be recorded would be the program that they had selected. By seeking to play it, the user determined that their device would display the recording just as if they had inserted a video cassette or DVD into a VCR or DVD player and pressed 'play'.

Questions 4 and 6: Was the communication to the public?

No. Rares J was of the opinion (at [105]) that no communication 'to the public' could occur if the user made the recording they communicate by clicking the 'play' button, 'solely for private and domestic use by watching or listening to the material broadcast at a time more convenient then the time when the broadcast is made' within the meaning of section 111. Rares J further observed (at [106]) that the fact that the user may be with one or more other persons, such as family members or friends, when the communication is received will not, ordinarily, convert its private and domestic nature to being that of a communication 'to the public'.

Question 7: Was the digital file streamed to a user an 'article' or 'article or thing'?

No. According to Rares J (at [110]), infringement of these sections could only occur if the making of the article (that is, the recording) constituted an infringement of copyright. In Rares J's view, both when the user made the recording and when he or she made the communication of it, no infringement occurred. It followed that Optus could not infringe any of the NRL’s rights under these sections because no infringement of the NRL’s copyright occurred by the streaming of the recording to a user in the format compatible with the device on which that user had clicked the 'play' button.

Decision

Accordingly, Rares J decided (at [113]) that Optus’s TV Now service did not infringe copyright in the broadcasts of the AFL and NRL games in the particular ways that the rightholders alleged.

However, some other issues may still need to be resolved. These include whether Optus infringes copyright because the technology used to make a recording in the format suitable for certain Apple devices via QuickTime creates and stores six temporary files of 10 seconds duration every minute, and then deletes the first 10 second file as the latest one is added one minute later. They parties agreed that, as a consequence, the issue of whether Optus has established its claims of unjustified threats under section 202 of the Act cannot be determined finally until the discrete issue concerning the QuickTime Streaming is resolved.

Comment

This Kat doubts that Rares J's decision will be the final word on this issue. He notes that the parties agreed at the hearing that leave to appeal to the Full Federal Court should be granted to any unsuccessful party without it having to make a formal application for leave to appeal from what was, technically, an interlocutory order.

AFL chief operating officer Gillon McLachlan was disappointed at the decision. He stated: 'We maintain that the Optus action is a breach of copyright ... However, we are only in the pre-season of this issue - it is highly likely we will appeal.'

NRL boss David Gallop expressed similar sentiments and said that the decision was 'very likely' to be appealed. He stated: 'It is a major concern as it clearly has the capacity to devalue the ability of the sports to sell exclusive rights'.

Telstra spokesman Craig Middleton also did not rule out an appeal. He said: 'This is an early stage. We believe that protecting content rights is in the interest of Telstra, the sporting codes and sporting fans who ultimately benefit from the investments that flow from broadcast rights'.

Not surprisingly, Optus spokeswoman Clare Gill said that the company is extremely pleased with decision. She said:

'For us it's always been about free-to-air television, recording it and playing it back at a time more convenient, that's how we developed the product. It was not category-specific in anything to do with the categories of television, whether it be light entertainment, documentaries, news or sport. Optus is committed to delivering choice and convenience to Australians and the result of the TV Now court proceedings is a major win for consumers, innovation and the law'.

The IPKat dares to ask: have the rights holders been wronged by Rares J's decision?

Monday miscellany Part 2

noreply@blogger.com (Jeremy) — Mon, 06 Feb 2012 15:30:00 +0000

Westminster: before the Parliamentary
hot air melts the snow ...

The UK Parliament's House of Commons, in beautiful downtown Westminster, is having a debate tomorrow morning on the topic of "Intellectual property and its contribution to economic growth". This is believed to be the initiative of the All Party Parliamentary Intellectual Property Group's Pete Wishart MP and is rumoured to be some sort of follow-up to last year's Hargreaves Review. The debate runs from 9.30am to 11am. Says Merpel, no wonder our legislators don't really get the point of intellectual property when they have just 90 minutes to discuss it, inclusive of breathing ...

The IPKat is gratified to have received some good responses to his post last week ("SOS -- can you hear the ducks?") on a curiously misguided attempt to promote Intellectual Passports as a way of protecting inventions via copyright. Apart from the comments posted below the original feature, he had some notable emails. One, from a discreetly anonymous correspondent, reads thus:

"I had someone approach me as well with this idea back in November 2011, and I conducted some research and found that their claims that their system had beaten many patents and returned ownership of IP to the rightful owner a tad misleading. The research I conducted identified several cases in which several patents were challenged on the basis of prior disclosure or prior invention. The result was that several patents were invalidated, but it does not provide an alternative to seeking IP protection. In essence, their system seems to surrender IP protection and place inventions in the public domain.

IP Passport Control

Needless to say, at a recent event at which I was speaking, proponents of the IP Passport were in attendance handing out their brochures. During my presentation to the inventors, I raised the differences between the various "traditional" IP instruments and how they applied to each situation. Strangely enough during the question period, no one asked about the IP Passport. I did get many inventors coming up to me, on a one-on-one situation, asking me about the IP Passport and, after they realized the IP Passport system did not grant them exclusive rights to their invention, and that copyright is not the instrument to protect an invention, they threw the brochures in the recycle bin".
Another reader, C. Marc Benoît (Benoît & Côté, Montréal, who also submitted a catpic which was far too good to use on a Monday Miscellany round-up), adds:

"I come across this intellectual fraud once or twice per year. I have to explain to potential clients that the only protection that they get from this is the right to exclude others from copying their book, not from making their invention.

I am glad that I am not the only one who publicly denounces this kind of “Ineffectual Passport”. I hope this will help warn the public against the uselessness of this product and the waste of their hard-earned money".

No, it's not a sepia tint: it's
the annual surge of maple syrup
as it makes its way down to
the sea ...

Remaining for the while in Canada, the IPKat's old friend Steven Preece earns his kat-pat for this link to the news that a British Columbia Senator, Nancy Greene Raine (real name), has been agitating for Canada to adopt new maple syrup labelling rules. Why?

"You need to have proper protections on the quality and origins", Greene Raine said. "This is definitely the first step".

It seems that Canada is to maple syrup what France is to cheese, a sort of spiritual home. The proposal, if adopted by the Senate, would lead to the definition of four classes of syrup: Golden (light with a mild taste), Amber (full-bodied); Dark (with a stronger taste than its lighter-coloured brethren) and Very Dark (strong taste: recommended for cooking purposes). Product labels would also be required to data concerning the include province, state or country of origin, to avoid overseas imitations. The IPKat is fascinated at the thought of anyone importing maple syrup into Canada, a jurisdiction which is literally awash with it. But, yes, the Chinese are at it already, with maple flavoured syrup already looming large ...

The name IP Protect Expo (see previous post here) is so clunky that even its organiser Ian Shircore has to concede that it's in need of repair. He writes:

"I agree (who would dare disagree?) with Merpel that the name IP Protect Expo lacks a certain, er, poetry. We would be delighted if anyone could come up with a more charismatic label for next year's event.

The Kats have a soft
spot for this product ...

For the moment, the only bright idea I have is to use and abuse the initial letters of The IP Protect Expo to create the memorable new name, TIPPEx. This has a certain resonance, but I fear it might take us into dangerous waters. We might be seen to be infringing the intellectual property rights of Société Bic, which now owns Tipp-Ex (which, I'm told, is now "the tenth most recognized German brand name in the world" -- so that's behind VW, BMW, Mercedes, Audi, Porsche, Adidas, Lufthansa, Steinway and Hugo Boss, I suppose), and I wouldn't want Merpel to be thrown into jail with me as an accessory to such a crime".

Meanwhile, all the way from Austria -- where the snow doesn't melt even when the politicians are debating -- comes an email from student Sandra Gallistl, who agrees that the name is in need of repair but confesses that she has no idea if her own proposal, "Pro IP EXPO", is any better. No, the Kats chorus, it isn't-- but at least it has the virtue of being one syllable shorter.

Monday miscellany Part 1

noreply@blogger.com (Jeremy) — Mon, 06 Feb 2012 10:37:00 +0000

That World Intellectual Property Organization (WIPO) survey. If you've not yet completed the WIPO survey on Stakeholders' Perceptions, please do. It's a golden opportunity to tell the world's highest-profile intellectual property agency what you think of it. Whether it's praise or scorn, helpful hints or critical comments, your opinion does count, if you don't mind it being aggregated with everyone else's, that is. The IPKat doesn't know the closing date for completing the survey, which is why he urges haste. Merpel will get round to completing it soon, once she has finished trying to recall whether any other United Nations agency has taken the trouble to ask everyone what they think of it. Does any reader know?

More secret legislation? In contrast with WIPO's determination to be as open as the burden of diplomacy permits, the IPKat scents some more depressing news about the hatching of plans for legislation via deliberately secret means. Following in the footsteps of ACTA, it seems from Ars Technica that the Intellectual Property chapter of the Trans Pacific Partnership, a regional trade treaty, is also to be negotiated behind closed doors [Merpel wonders, shouldn't that read "even more closed doors than usual"? It's easier to get ringside seats for the Olympic Beach Volleyball event than to get in to watch any IP treaty being agreed ...]. The IPKat is reluctant to raise his voice, so he hopes that his readers will do it for him and that they will respectfully draw to the attention the fact that, if those who are negotiating it are doing nothing wrong, they have nothing to hide -- and everything to gain.

Prepared for every eventuality. The Office for Harmonisation in the Internal Market (OHIM) has helpfully issued an Alert relating to The Manual of Trade Mark Practice, for Part M. (International Marks).

Page 36: The Manual on International Marks has been changed in order to reflect Rule 17 (2) (v) Common Regulations that require that when an opposition is filed against and international registration, the International Bureau shall be notified, among other, of the list of all the goods and services of the earlier mark on which the opposition is based.

The Office has incorporated their newly published Classication [Merpel thinks this should be Classification, but you can't be sure ...] Manual in the Examination Manual as part B.3. which entered into force on 01.02.2012. The document reflects the current practice of the Office and has also been brought in line with the 10th edition of the Nice Classification. The Office is, nevertheless, aware of Case C-307/10 “IP TRANSLATOR” [click here for a note on the Advocate General's Opinion] and the fact that the preliminary ruling, which will be handed down, may affect it. The Office is also working with a number of National Offices in the Class Headings Project with a view, precisely, to converge with them on a common approach to the interpretation of the Nice Classification Class Headings. Whenever any of the two issues described matures previously the Office will certainly, and without delay, take the necessary steps to amend the practice as reflected in this manual [Merpel's not certain what this means, in the English version at any rate, but it sounds like good news and she welcomes it]."

While on the subject of OHIM, the IPKat has discovered that Phase II of the new OHIM Building has now got underway. The information was posted on the OHIM website on 4 January (at least, that's the date of the notice) but expressions of interest had to be submitted by 9 January. This would appear to be a fairly ungenerous window of opportunity for telling the lads and lasses in Alicante that you want to construct a new building extension, especially since some people were still on their Christmas holidays and, if this Kat remembers correctly, 7 and 8 January were, respectively, a Saturday and Sunday.

The truth is that, while the identity of the building contractor is still unknown, the design for the building has already been decided. Anyone who knows a thing or two about building in Spain can tell you that, in a city that gets about 360 days of blinding, sweltering sun every year, you want to minimise the number of windows in order to keep the place comfortably cool. The current OHIM HQ is however about as full of windows as you can get. The plan is therefore to build an extension (left) which has no windows at all and in which Examiners, Board of Appeal Members and even Legal Department staff can, er, chill out ...

The IPKat has noted with great interest the travails of Inez and Gus Bodur in their various legal battles with those who have caused them hassle, not least in the continuing saga of their GOLDEN BALLS Community trade mark, to which the owners of the BALLON D'OR have taken a deep and meaningful dislike. The Bodurs won before the Opposition Division (here) but lost before the Board of Appeal (the dispute is now before the General Court). Meanwhile, various people have asked whether David Beckham, whose nickname is "Golden Balls" (see eg here), objects to Inez and Gus making commercial use of that august appellation. Now the truth can be told: David and Inez are on the best of terms, as the picture on the right shows. Merpel reminds readers that Inez and Gus are no strangers to legal controversy: in 2010 they successfully fended off the might of Gucci, which considered its famous GUCCI brand was jeopardised by their UK registration of a word-and-device mark for GUSSY THE ICE CREAM MAN (here).

Last month the IPKat noted that Moldova was denouncing the Eurasian Patent Convention. Now it seems there is a specific reason for it to do so. The archival records of the European Patent Office (EPO) reveal that the little Central European state has been authorised to enter into negotiations on a validation and co-operation agreement with the EPO. A kat-pat goes to Nick Bassil (Kilburn & Strode) for spotting this.

Around the weblogs. Visiting Morocco, Afro-IP's Kingsley Egbuonu finds some positive news to report from that country's official IP websites here. The excellent Mark Anderson has emailed the IPKat with news that, this January, his firm's IP Draughts weblog, which is dedicated to those messy things that come unexpectedly apart and which we affectionately call contracts, achieved its best ever month, with 3,660 hits. The 1709 Blog asks readers if they know anything of Takedown Piracy and its business model, while Keith Mallinson (WiseHarbor) returns as a guest contributor to the IP Finance blog with his latest piece, "ICT esperanto and competition among standards".

If you've nothing to do on 25 and 26 June and you're feeling vaguely historical, take note: the fourth annual workshop of ISHTIP, the International Society for the History and Theory of Intellectual Property, will be held at the Department of Law, London School of Economics. The theme is Intellectual Property as Cultural Technology and the call for papers is open until 1 March 2012. Further details are available here.

Tea and Sympathy? Baroness Wilcox's appearance before the Scrutiny Committee on the unitary patent proposals (Part II)

noreply@blogger.com (Annsley Merelle Ward) — Mon, 06 Feb 2012 00:39:00 +0000

Mr. Kelvin Hopkins MP

Mr. Kelvin Hopkins MP turned to the question of the impact assessment and referred to the issue that the Committee had heard the previous week that the impact assessment was out of date given that the EU was no longer going to fund the setting up and running of the Court system. Ms. Coleman’s reply seemed to indicate that this had been factored into calculations – but the AmeriKat is unsure whether her saying that the UK was aware that there needed to be contributions from Member States, was the same as saying that this fact was the basis of the impact assessments. She also stated that the Government’s view was that the system would be “self-funded” by its users through Court fees. ["Those would be quite high court fees, would they not? “ asks Merpel] Merpel’s point was raised by Mr. Michael Connarty MP who picked up this point in relation to the SMEs who would be having to fund this court – a court which appeared to be much more expensive than the current system.

Mr. Michael Connarty MP

Mr. Connarty MP continued to his question relating to the EU Council’s statement issued last Monday which confirmed that the EU intended to reach final agreement on the “last outstanding issue on the patent package”. He asked the Minister to explain why despite stakeholders being incredibly panicked about the substantive system as a whole, the only thing that seemed to be outstanding, according to the EU Council’s statement, was the location of the court. He asked the unanswered question that has exasperated the AmeriKat for several months about whether the negotiations have really come to the point where the only thing to be decided is the seat of the Central Division

“And if it’s come to that why can’t we be honest about it?”

Baroness Wilcox began to answer the question by emphasizing the importance for SME’s to protect and enforce their patents quickly and cheaply throughout the entire EU. Mr. Cannarty MP interrupted the Minister stating that he did not need to be lectured as he had been on the Committee since 1998 and had followed this proposal in some detail. He repeated that his only question was whether or not the only thing outstanding was the seat of the court. Mr. Feinson stated that:

“One of the problems that have been bedeviled this dossier is that there is political interest in certain in high profile issues and underneath that there is an awful lot of technical detail. I certainly do not recognize what was in the EU Council communiqué as being the situation in the negotiations. I think it’s a simplification of the situation in the negotiations. There is a negotiation where there is a question of the location of the court on one hand and a jockeying for position - horse trading - on the technical issues”

The kind of (be)-devilling the AmeriKat likes to see....

with differing issues being addressed by different Member States. He stated that the Danish Presidency is trying to pick up these concerns and issues in bilateral discussions with the Member States. The United Kingdom is currently having those bilateral discussions with the Danish Presidency. He stated, therefore, that he thought the statement from the EU Council was a “gross simplification” Mr. Cannarty MP asked Mr. Feinson to explain which issues were being discussed. He stated that the removal of Articles 6 to 8 was under discussion as one of the biggest requests. Equally, was the concern on the issue of bifurcation which Mr. Feinson was being dealt with in reference to how bifurcation could be managed vis-à-vis the Rules of Procedure.

In response to a question from Mr. Cash MP, Baroness Wilcox stated that she has met with Business Secretary Vince Cable regularly and officials from the IPO on this issue. She also stated that the one thing the Ministry of Business will be sure of is that they would not sign up to anything that would be disadvantageous for SMEs. Echoing the evidence of the experts the previous week, she also stated that it would be foolish for the UK not to be part of the discussion or in the negotiating rooms shaping the court and the rules. Mr. Cash MP asked if there was then still scope for amendments. Baroness Wilcox replied stating:

"There is scope all the way along for amendments. I find it very difficult to work in this way, in the Competitiveness Council - I have had to get used to it. It does seem that if you keep talking and you stay in the room long enough, then you are likely to get the things that will help this process move forward. We are fortunate that there are other countries who feel as we do, and therefore are prepared to support us. That does make things very much easier. "

Mr. Stephen Phillips MP

The next “questioner” from the Committee was Mr. Stephen Phillips MP – who from last time – established himself as a pointed examiner of witnesses (which may have something to do with being a QC). In a question that was designed to illicit a “yes” or “no” answer, i.e,”Is it your evidence to this committee that the EU Council’s statement is untrue and there is more than one outstanding issue?”, Mr. Fienson understandably replied with “I think it’s a simplification.” Mr. Phillips MP persisted with trying to get Mr. Fienson to say that the EU Council’s statement was incorrect, but Mr. Fienson was very diplomatic in refusing to answer “yes” or “no” that question.

Mr. Phillips MP turned to the question of bifurcation, asking how the current proposals could assist SMEs or any British company in protecting their rights inexpensively if they could be faced with bifurcated litigation and the problems that bifurcation can entail. The witnesses did not really answer and to the AmeriKat greatly stumbled over the question. Mr. Fienson did state that these effects were hoped to be addressed by the Rules of Procedure. Mr. Phillips MP questioned whether the price of agreeing to the patent court was at the cost of exposing UK business to German bifurcation and that the issue of bifurcation should have been a line drawn in the sand. Mr. Feinson admitted that “if we had it our way we would not allow for bifurcation in this agreement” but that it was something that had been dealt with long ago to keep the proposals afloat. Mr. Phillips MP replied stating that this pretty much confirmed his statement about the price of agreeing on the unitary patent system was the cost of bifurcation. Mr. Feinson said that he respectfully disagreed and that the UK was holding on the Rules of Procedure to ensure the timing and treatment of validity and infringement cases would lessen the worst effects of bifurcation. Mr. Feinson stated because of the UK’s staunch position on this and on not agreeing to sign anything until the final version of the Rules of Procedure were produced, people thought they “were being darn awkward” during the negotiating process.

The Unified Patent Court system - a haven for
trolls and forum shoppers?

Mr. Phillips MP also asked whether the UPC could be a charter for forum-shopping. Mr. Fernandes replied stating that there were already rules to limit forum shopping and forum shopping existed in the current system already. However, again the replies were not, at least to the AmeriKat, fully answering the questions. Mr. Phillips MP then closed his questioning saying that it had appeared to him that the Minister and her team had not done a lot of thinking on this issue and that no lines in the sand appeared to have been drawn to protect British interests, which there ought to be. Baroness Wilcox stated that she viewed the Unified Patent Court as an opportunity to improve things within the EU and to move closer to away of proceeding with the protection of patents that is better than the current system. [It was during this line of questioning, that an exasperated Mr. Connarty MP seemed to have reached his limit and criticized the witnesses for not answering the questions of a Committee of the House in a straightforward manner.]

The session came to an early close because Baroness Wilcox had to fly to Copenhagen. Mr. Cash MP stated that the session was adjourned and was to be continued at another day and time.

What's Next?

Time is running out to get
your evidence to the
Scrutiny Committee...

Since the first Committee hearing with evidence given by the IP Bar Association, CIPA and EPLAW, the AmeriKat knows that the requested paper on issues and questions raised during that hearing has been submitted by the IP Bar Association to the Scrutiny Committee (to be published when the all-clear horn is sounded by the powers that be). After Baroness Wilcox finishes her evidence before the House of Commons European Scrutiny Committee she will then be before the House of Lords EU Select Committee who requested her presence last December. The AmeriKat is unsure what date Baroness Wilcox will be before the House of Lords. However she does know, by virtue of a press release from the House of Commons, that that Committee will not be accepting further new written evidence after 7 February 2012. So if any of the readers out there wish to get in some final comments to the Scrutiny Committee you have 2 days to do so!

In the meantime, there is still a lot of momentum in the UK and in Europe regarding the substantive provisions of the proposals. The AmeriKat is heartened to hear, according to Baroness Wilcox, that the UK government and other Member States governments are concerned and are taking the time to negotiate on these key substantive issues in Brussels. However, her positive outlook is sure to be dashed by the next over-egged European press release....

To listen to the Scrutiny Committee's questioning of Baroness Wilcox click here and fast forward to 15:14.

Tea and Sympathy? Baroness Wilcox's appearance before the Scrutiny Committee on the unitary patent proposals (Part I)

noreply@blogger.com (Annsley Merelle Ward) — Mon, 06 Feb 2012 00:39:00 +0000

At 4:20 PM when the Committee adjourned, this
is probably what the Houses of Parliament looked like...

Last Wednesday, a week after the first hearing of evidence by the House of Commons Scrutiny Committee given by the IP Bar Association, CIPA and EPLAW (see reports here and here and transcript here), the Minister in charge of the proposed unitary patent and unified patent court package – Baroness Wilcox – was again before the Scrutiny Committee. The hearing, which was due to start at 2:30, started late at 3:14 PM due to a vote on the Welfare Reform Bill. The witnesses this week were Baroness Wilcox (Minister of State, Depart of Business, Invocation and Skills), Nicolas Fernandes (Legal Adviser, Department for Business, Innovation and Skills), Neil Feinson (Director of International Policy, Intellectual Property Office) and Liz Coleman (Director, Intellectual Property and Innovation Directorate, Patent Office). Chaired by William Cash MP, the Committee members sitting were Stephen Phillips MP (Conservative), Henry Smith MP (Conservative), Michael Connarty MP (Labour), Nia Griffth MP (Labour) and Kelvin Hopkins MP (Labour).

Mr. William Cash MP

The hour of questioning crescendoed into an uncomfortable arc when two MPs on the Committee, arguably justifiably frustrated with some of the responses they were receiving from the witnesses, demanded that the witnesses provide straightforward answers to their questions. But before that climax, Chairman Cash MP opened the proceedings:

“Welcome Minister, we have just one or two thoughts I would like to convey to you just as we start. It is this - there seems to be something of an assumption, and this comes from many quarters, that this is all a frightfully good idea. But actually, I have to say to we took evidence the other day and that was not the view that was expressed by the expert witnesses who came in front of us , including one from Austria. I would like to say the sort of statements I have received regarding your statement of 30 January – the statement is strong on hopes and weak on certainties, the danger of bifurcation is grossly underestimated, and what has arguably worked adequately in Germany will not translate to Europe as a whole, that if the system proves not to work we have no redress, and however valuable the objective may be in principle to have a unitary patent there is too much wrong with this proposal as it stands, and then of course there are all the questions about the location of the court and impact on the UK and so on. I just wanted to get that on the record as we start, because you will see how that sort of thing fits in with the questions."

Mr. Cash MP then turned to his first question to the Minister which was for her to explain how much consultation there had been with stakeholders on the agreement to set up the Unified Patent Court and how much had the stakeholders views been reflected in the current draft. Baroness Wilcox stated that:

Baroness Wilcox

“As you know, our government is very keen that we should, wherever possible, help British business to get their patents and their copyrights as fast, efficiently and inexpensive as possible and this looks to be a way. They have been trying to get it right for 41 years or so. If it is possible for us to do it we will do it, but we won’t do it without looking very carefully and listening very carefully to what the stakeholders say. As the Committee knows, the Intellectual Property Office itself has a consultation group that meets regularly to discuss the patent and the negotiations, and when I go to Brussels or wherever it is, I have with me in my head ringing the things that the stakeholders are concerned about, that they are worried about and that they want us to fight for when we get there. You will know that the people who have given you evidence the last time around, the lawyers etc, we have heard what they have said and in a lot of cases we are very sympathetic to what they have said and we have make those points when we get there. That’s important for us to do. And as you will know the last time, on the 5^th when I was in Brussels, that was why we didn’t agree a deal on the Competitiveness Council on 5th of December because we felt there have not been enough discussion and we did not have a stable enough text agreement long enough to assess it properly. So, there is no question that we are just trying to charge ahead and get something – it is important that it works. And just last, if I may say, we have been before this Committee twice before and we are aware of its concerns as well and therefore when we went forward keenly to get a single patent underway, we did have a caveat on the court on how it was to be put together and how it was to be progressed. So, I think that shows evidence from us that we are being very carefully with this.”

William Cash MP’s tone in his response to this answer set the scene for the rest of the hearing - it was clear that the Committee was not going to let any answer pass without, dare she say it, scrutiny. Mr. Cash MP replied:

WILLIAM CASH MP: It certainly shows evidence that you are aware of the fact that there is deep concern. The question I would put to you is whether or not you have taken any notice at all of the evidence that has been received by us, for example last week, or indeed any evidence that you have really been listening to what they’ve been saying, although you have obviously heard what they ‘ve said. The question is still as far as I can judge from the evidence that we have received, that everybody we have interviewed so far – who represents very substantial opinion and very significant number of people of imminence in the field –that they are all against it despite what you have just told us. How would you comment on that? Is it not just the case of tea and sympathy?

Tea is here, but where is the sympathy...

BARONESS WILCOX: No. As I have said we have been working very carefully with the stakeholders [with the IPO] to a large extent their evidence to the Committee has already informed our negotiating position, so we go with the negotiating position of having absorbed and taken on board and taken forward what they are worried about. We have pursuing the option of a specialist patent court outside the ECJ structure precisely because this is what stakeholders told us this is what they preferred. More recently we have seen small improvements to the text of the Agreement and discussions on the Rules of Procedure have started up again after they had stopped in 2009. These improvements in particular concern the transitional provisions, the opportunity to start more cases in the Central Division rather than the Regional or Local Divisions. You will know, of course, from having listened to their evidence, how complex this is – we are working with countries who have very different ways of progressing their courts and so therefore if we are to get this through, which we very much hope– the Government hopes that the unitary patent and Unified Patent Court - which is a priority in the Government’s growth agenda - we very much hope it will go forward. We certainly have not come to the situation with the people who are giving evidence to you and ourselves whereby they’ve walked away saying we are doing absolutely nothing and it will absolutely not work. That is absolutely not the case."

One of these inclines could be dubbed
a Polish incline - i.e. it is less inclined,
than the other....

Mr. Cash MP replied stating that there “are some indications that it is a government and EU stitch up” and it was against this backdrop that there was some remaining concerns. He then asked the Minister to turn her attention to a line in a letter she wrote to the Committee in December in which she referred to the Polish Presidency as being “less inclined to take on board amendments of a technical nature" in the negotiations. Mr. Cash MP asked what the Minister meant by that statement. She replied:

“Throughout the negotiations the delegations and the chairs have been very focused on taking texts forward rather than renegotiating them. In the last 6 months the draft agreement has been negotiated on an inter-governmental basis as there is no formal EU involvement and EU legislative procedures do not apply. The basis for the draft agreement has been the text reached in 2009, before the ECJ opinion, the main amendments taken on board were those we needed to ensure that the draft agreement was compatible with EU law in response to the ECJ Opinion. Only recently was there an opportunity to make some small improvements in response to the stakeholders’ concerns.”

Mr. Cash MP questioned how satisfactory such an approach was in light of the significant industry and patent profession concern. Neil Feinson answered that it was important to view the negotiations in the context in which they were being negotiated. He stated:

Camping on consensus....

“The issue for the Polish Chairmanship vis-a-vis these talks was very much around that they wanted for their own purposes – they wanted to drive this dossier very quickly to conclusion. They thought they could camp on consensus that had been achieved earlier. We indeed, I remember discussing with this team, who were negotiating this quite hard "how do we get the Presidency to talk about the sort of issues we want to talk about and the sort of issues the stakeholders had been raising with us?" One of the issues with these sorts of negotiations is that you are sort of in the hands of the people who frame how the negotiations proceed. Unfortunately, we were unsuccessful in persuading the Poles to allow us to raise these issues early enough. That is why when we got to the 5^th of December, we just said to them “Here are our the other points, we have been telling you what these points are, these are the points our stakeholders have been raising with us”, and this is one of the reasons the Minister would not agree on the 5^th of December."

Mr. Cash MP observed that there seemed to be a “driving force [that is] built in the dynamics of the European establishment" but that it was not shared by the practitioners.

Continued in Part II

So, confidentially, what DO you think of WIPO?

noreply@blogger.com (Jeremy) — Sun, 05 Feb 2012 21:04:00 +0000

A rare first: the IPKat
keeps his comments
on WIPO to himself

You may have been waiting for years to tell the World Intellectual Property Organization (WIPO) what you think of it. If so, your chance has come. WIPO informs him that subscribers to "one or several WIPO e-newsletters" will by now have received a circular entitled "Survey on Stakeholder Perceptions of WIPO". This tells them that WIPO

"... seeks to deliver high quality services and fully engage with all its stakeholders. In an effort to better understand our stakeholders’ expectations and perceptions, and to evaluate and improve our external communications, we are carrying out a perceptions survey.

Your insights will help us engage more effectively with our stakeholders and the overall IP community. The survey should take less than fifteen minutes of your valuable time.

The survey is being conducted by a specialized research firm [it's called Zoomerang] on behalf of WIPO. All information gathered will be treated confidentially [well, that's half the fun gone already, moans Merpel] and reported to WIPO in aggregate form only.

We hope that you will take this opportunity to help us shape our future communications efforts for the benefit of all our stakeholders. We are grateful for your participation".

The circular concludes with the ever-so-slightly hopeful line: "Thank you for your continuing support of WIPO".

This member of the IPKat team hopes that his readers will complete the survey. He has already done so: it took him 18 minutes rather than the 15 mentioned in the circular, but that was because it forced him to do quite a bit of serious thinking. Some of the questions are politically sensitive and rather surprised him. For example

Who do you believe is the global leader in the protection and promotion of IP?

United Nations Educational, Scientific and Cultural Organization (UNESCO)

World Intellectual Property Organization (WIPO)

World Trade Organization (WTO)

United Nations Conference on Trade and Development (UNCTAD)

Don’t know

Other, please specify

In his lecturing days, this Kat used to mention how some United Nations Agencies appeared to be in favour of IP, others against it and others again both for and against it. Might this survey mark the beginning of a re-think as to whether the interests of IP creators, their competitors, consumers and beneficiaries can be better balanced across the spread of international agency portfolios?

An even more difficult question was this one:

Who do you believe is the global leader in the provision of IP-related products and services?

European Patent Office (EPO)

United States Patent and Trademark Office (USPTO)

World Intellectual Property Organization (WIPO)

State Intellectual Property Office of China (SIPO)

Korean Intellectual Property Office (KIPO)

Japan Patent Office (JPO)

Office of Harmonization for the Internal Market (OHIM)

Don’t know

Other, please specify

In one sense there is no comparison of like with like, yet each of the bodies listed above exercises a strong gravitational pull and respondents' answers may depend on how they understand the concept of the "global leader": is it the body which leads right across the world, or is it the body which, out of all the organisations in the world, does the most leading within its own sphere of influence?

Other questions boldly ask respondents about their use of blogs and online resources, how (in)effective they find WIPO's services, which adjectives best fit the organisation's operations and its responsiveness, and so on.

This Kat urges readers who use WIPO's services and/or read its publications to respond to the call and complete the survey. We all have our views, which we express to each other both publicly and privately, but this time WIPO is carefully listening. Let's not let this opportunity pass.

Illustration at top right from Cat Confidential, which you can purr-chase here

Letter from AmeriKat: Blue Ivy Carter, the Crimson Tide, Motorola v Apple and Prior User Rights

noreply@blogger.com (Annsley Merelle Ward) — Sun, 05 Feb 2012 15:35:00 +0000

The AmeriKat all bundled up
in London's 1 inch of snow...

This past week the AmeriKat has been trying to keep her paws and nose leather warm – a massive challenge given the Arctic cold that has been blowing through the silvery streets of London. Preparing one’s self for the impending wall of cold one will face when stepping outside takes some planning. Collating the requisite gloves, cashmere scarfs and wooly hats, together with fuzzy boots and earmuffs takes planning. When one has a little kitten to dress, as the AmeriKat did this past Christmas with her niece, the planning takes a new level. Layers of clothes have to be acquired and layered on said wiggly kitten, mittens adhered to slippery paws and scarves expertly wrapped to ensure maximum warmth but also ability to breathe.

Bottles – check. Diapers – check. USPTO trade mark application - check.

USPTO App 85526099 for BLUE IVY CARTER

There is always a level of planning required when taking care of kittens. Besides the winter outfits, there is the feeding, play, and nap time schedules to address. But on the long list of To-Dos, after buy more Cheddar Bunnies, most people do not have “File baby’s name as a trade mark with the USPTO”. Most people, except Beyoncé and Jay-Z that is, who on 26 January 2012, four weeks after their baby girl – Blue Ivy Carter– was born, filed a trade mark application for the name with the USPTO. The application made by Beyoncé’s company, BGK Trademark Holdings, is for the name BLUE IVY CARTER for goods that span the music mogul merchandise spectrum , including CDs, basketballs, baby carriers, baby rattles, fragrances, and earmuffs.

Will this baby soon to be bathing in
Blue Ivy Carter's own line of baby
bubble bath?

Trade mark registrations afford you the exclusive right to use the mark in connection to those classes of goods under the mark. Importantly it allows you to stop others from doing the same without your permission. That is where the true value in Beyoncé/Jay-Z’s potential trade mark registration lies – in preventing the use of their child’s name being plastered over every polyester bib and sad looking bear from New York to L.A. Indeed, earlier third-party applications for the name were rejected by the USPTO on the grounds that the name belonged to a “very famous infant” and consumers would falsely assume that the goods under the mark were approved by or in association with Beyoncé and Jay-Z. The AmeriKat is going to guess that like her mom and dad, Blue Ivy will also obtain a trade mark registration from the USPTO and that a business and design team is already working on the first line of Blue Ivy baby care accessories. It's not a bad deal to have the potential to make money off of your name before you even know where your nose is....

For more information see articles in the Washington Post and the Philadelphia Inquirer.

Florida filing latest in Motorola v Apple war

Nothing warms patent lawyers' cockles during these freezing winter months than more mobile patent disputes. The latest in the line is Motorola who has filed a brand, new bouncing lawsuit in Florida federal court against Apple Inc. last Wednesday. Motorola Mobility, who Google agreed to purchase last August for $12.5 billion, runs its phones with Google’s Android software – the biggest rival to the iPhone’s iOS system. The claim concerns two Apple products – the iPhone 4s and iCloud remote storage system – and six patents related to wireless antennae (U.S. Patent No. 5,710,987) , multiple pager status synchronization system and method (U.S. Patent No. 5,754,119), method and apparatus for communicating summarized data (U.S. Patent No. 5,958,006), a system for communicating user-selected criteria filter between wireless client and server, (U.S. Patent No. 6,101,531), an apparatus for controlling use of software added to a mobile device (U.S. Patent No. 6,008,737) and finally, a method and apparatus in a mobile device for facilitating and exchange of address information (U.S. Patent No. 6,377,161).

The federal court filing comes after the US International Trade Commission (ITC) issued an early ruling that Motorola had not infringed the patents at dispute in an ITC claim brought by Apple. The ruling is still subject to a final decision by a 6-person panel. The filing also coincides with the ruling of Judge Andreas Voss of the Mannheim Regional Court in Germany granting a permanent injunction against Apple in Germany in respect of the push e-mail service of Apple’s iCloud and any devise that can access it.

According to this article in the Guardian, this legal agreement signed between Google and Motorola which governs the purchase by Google of Motorola for $12.5 billion states that Motorola cannot commence new IP proceedings without written agreement from Google. The AmeriKat has previously written on Google’s patent portfolio stance in its long-running fight with Apple. The latest actions against Apple, via Motorola, have been heralded by some commentators as being another building block in the escalating mobile patent war with the iPhone

Free-riding the Crimson Tide? Dispute over artist’s use of football trade marks hits 11^th Circuit Appeals Court

Guest Kat Tara posted yesterday on the beauty of Super Bowl Sunday. Not wishing to be left out in this most of American of pastimes, the AmeriKat has her own football story. Last Thursday the Circuit Court of Appeals for the 11^th Circuit in Atlanta, Georgia heard arguments in the trade mark infringement battle between sports artist Daniel Moore and the University of Alabama. In 2005, the University of Alabama sued Moore for trade mark infringement alleging that his paintings, which depicted scenes from the University’s football games and players in their crimson and white uniforms (“the Crimson Tide”) infringed their trade marks. Moore also used the marks on coffee cups.

Moore's "The Sack"

In 2009, District Judge Robert Propst held that Moore’s paintings per se did not infringe UA’s trademarks but the sale of the paintings on mugs, t-shirts and other goods did. The judge explained that there was no reason why consumers of Moore’s paintings and larger prints would assume that those prints were either licensed from or associated with the university when making their purchasing decision. It was more likely that consumers were purchasing the paintings because of their allegiance to the team, not because the paintings were thought to be originated or affiliated with the University of Alabama (dare the AmeriKat cite Arsenal v Reed's "badge of allegiance" argument?) . Moore has denied infringing UA’s trade marks and claimed that his art is protected under the US Constitution as free speech. The artist likens his paintings, which document important plays and events in the team’s sporting history to that of Sports Illustrated documenting the moments with photography.

Alabama's football helmet

In a statement, university spokeswoman Deborah Lane stated that :

“The University of Alabama believes the court ruled correctly when it found that Daniel Moore and his company engaged in activities that infringe on the University’s trademarks. While we regret the necessity of having to involve the courts in this matter, the lawsuit was necessary since UA must protect the value and reputation of our trademarks, name, colors, indicia and logos, by determining who uses them, as well as when and how they are used.”

Moore’s lawyer, Stephen Heninger argued:

“All they are saying is any time, anywhere, our marks are shown, somebody has to pay us. And that’s not what trade mark law says. What they’re trying to gain here is an expansion of trade mark law. The law of trade mark infringement is if you use somebody else’s mark to try to pass their work off as yours, that’s a trade mark violation.”

Numerous universities had filed amicus briefs in support of the University of Alabama, while Moore’s case has been supported by media organizations, like the American Society of Media Photographers, who claim that like Claude Monet’s water lilies in France, Moore was just expressing “the culture of his surroundings”.

The three-judge appeals bench has yet to issue a decision.

For more information see these articles from CBS , the New York Times and the Huffington Post.

The expansion of "Prior User Rights" under AIA good for business

USPTO Director Kappos defending
the prior user rights defence before
the House of Representatives

Last week, USPTO Director David Kappos, was before the House of Representative’s Subcommittee on Intellectual Property, Competition and the Internet and Committee on the Judiciary on the hot topic of “prior user rights” defence following singing into law of the Leahy-Smith America Invents Act (AIA) last September. Director Kappos’s testimony can be read here. Of the numerous changes to the US patent law system, not least of which was the change to the first-to-file system, one of the key changes was the expansion of “prior user rights” defence to patent infringement. Third parties who can show that they were commercially using an invention for at least one year prior to the filing date of a patent application can benefit from the “prior user rights” defence. Kappos stated that the expansion of this defence was “pro-manufacturer, pro-small business, and, on balance, good policy."

Prior to the AIA, US law provided for prior user rights but it was limited to patents for methods of doing or conducting business (thus, it was of little utility). The AIA extended the prior user rights defence to cover all technologies, not just business method patents. However, the AIA also provides for limitations and exceptions to the prior user rights defence. There was much legistative debate and concern about the impact of the expanded user rights defence on the patent system and innovation. As such the USPTO conducted a study on the operation and impact of the prior user rights (including fun little comparison between some European countries, including the UK), as well as its relationship with a first-to-file patent system. Following public hearings and comments, the USPTO made several findings and recommendations – all basically saying that the expansion of the prior user rights defence was unproblematic. Director Kappos concluded saying:

The expansion of prior user rights - not as
bad for America;s (economic) health than
some might have thought?

"The prior user rights defense as set forth in the AIA is narrowly tailored and not expected to be asserted frequently in patent litigation. There is no substantial evidence that prior user rights will negatively impact innovation, start-up enterprises, venture capital, small businesses, universities or individual inventors. The USPTO will, however, reevaluate the economic impacts of prior user rights as part of its 2015 report to Congress on the implementation of the AIA when better evidence as to these impacts might be available.

A prior use defense to patent infringement, and specifically the one set forth in the AIA, is neither unconstitutional nor unlawful, as the defense is consistent with the Constitution and Supreme Court precedent recognizing that trade secret law and patent law can and do legally co-exist in the United States as they have for hundreds of years. Trade secret protection is of considerable value to United States businesses and the United States economy, and as such, there are compelling economic and policy justifications for providing a prior user rights defense to patent infringement. Providing a suitably limited prior user rights defense in a first-inventor-to-file system is an appropriate response to an inherent inequity such a system creates as between an earlier commercial user of the subject matter and a later patentee. Additionally, there is a strong preference that United States businesses be afforded the same advantages in terms of prior use protections in the United States that their competitors enjoy abroad. "

It should be welcomed that the USPTO and Congress are engaged with this issue and are conducting such analyses, but wouldn't it have been better had this report been published before the AIA was enacted, not retrospectively? For debate about the problems or lack of problems with prior-user rights see this article here in Patently-O.

Are all spots the same?: Sainsbury's renames Tiger Bread

noreply@blogger.com (Catherine Lee) — Sat, 04 Feb 2012 11:31:00 +0000

For your 'awww-shucks-IP-feel-good-story-of-the-week', this Kat brings you news that a letter from an English toddler and a FaceBook campaign has resulted in major English supermarket chain Sainsbury's changing the name of one of its home brand breads.

For those new to the intricacies of the world of bread, 'Tiger Bread' (also known as 'Dutch Crunch' in the US and 'tijgerbrood' in the Netherlands) refers to a loaf of bread with a unique crust which was first made in the 1970s. Usually, Tiger Bread is made as a white bread bloomer loaf or bread roll and rice paste is brushed on to the surface before baking so that a distinctive patterns is formed as the paste dries and cracks during the baking stage. Once baked, Tiger Bread has a crusty exterior but is soft inside and has a particular flavour due to the rice paste crust.

In May 2011, Lily Robinson wrote to Sainsbury's:

'Why is tiger bread c\alled tiger bread? It should be c\alled giraffe bread. Love from Lily Robinson age 3 1/2'.

Chris King, Customer Manager at Sainbury's responded in June 2011 that:

'I think that renaming tiger bread as giraffe bread is a brilliant idea - it looks more like the blotches of a giraffe than the stripes on a tiger, doesn't it?'

He went on to explain that:

'It is called tiger bread because the first baker who made it a looong (sic) time ago thought it looked stripey like a tiger. Maybe they were a bit silly'.

He included a £3 gift card for Lily and signed the letter 'Chris King (age 27 & 1/3)'.

Lily's mother Lucy posted the letters on her blog and they soon became a hot topic of conversation on social media networks. A FaceBook Group was started 'Campaign to change Tiger Bread to Giraffe Bread at Sainsbury's' which was liked over 150,000 times and shared over 48,000 times.

Last week, in a Press Release Sainsbury's stated:

'In response to overwhelming customer feedback that our Tiger Bread has more resemblance to a giraffe, from today we will be changing our Tiger Bread to Giraffe Bread and seeing how that goes ... We think that naming tiger bread to giraffe bread is a great idea and want to thank Lily for helping us see the spots for what they are'.

The IPKat remembers that old saying 'the customer is always right'. Is this excellent customer service by Sainsbury's or just clever marketing?

Merpel cheekily suggests that Merpel Bread could be even more appropriate than Giraffe Bread. She also cheekily wonders whether bakeries and supermarkets who continue to label the bread as Tiger Bread instead of Giraffe Bread or Merpel Bread are now mislabelling their products?

The Super Bowl Goes Digital, and Yonjo Quiroa Goes to Jail

noreply@blogger.com (Tara Aaron) — Fri, 03 Feb 2012 23:47:00 +0000

It’s Super Bowl weekend in America! This Kat applauds AmeriKat for the great enthusiasm she showed for the championship game of American football last year. This guest Kat will likely find a comfy couch at a friend’s house, where she will consume nachos, pizza and beer in quantities which she will deeply regret on Monday morning, while being amused by all the clever ads which will be occasionally interrupted by a football match between the New York Giants and the New England Patriots. Recent reports have suggested that Las Vegas bookies are sweating profusely at the thought of a Giants win - the team started the season at 80:1 odds to win it all, so some payouts could be huge. Add to that the fact that the Giants beat the Patriots earlier this season and the last time the two played in the Super Bowl 4 years ago, and there is some serious consternation in Sin City this weekend.

In a somewhat surprising and perhaps refreshing acknowledgement of the inevitable fact that consumers will, one way or another, get their entertainment online, NBC, the network which will broadcast the Super Bowl, is broadcasting it live over the internet for the first time. So one can only wonder how much nudging NBC did over at the U.S. Department of Homeland Security to set in motion the shutdown of 16 unauthorized sports event streaming websites and the arrest of the alleged operator of 9 of those sites which occurred yesterday.

Yonjo Quiroa, a/k/a “Ronaldo Solano” was arrested yesterday in New York for his alleged operation of nine websites, including www.sports95.net, www.sports95.com, www.sports95.me, www.sportswwe.tv, which allegedly operated as indexes and linking sites to other sites which hosted unauthorized copyrighted content belonging to the National Football League, National Basketball Association, National Hockey League, and World Wrestling Entertainment, and other professional sports organizations. Mr. Quiroa has been accused of violating the U.S. Copyright Act, 17 U.S.C. §506(a), which makes it a crime to commit copyright infringement “for purposes of commercial advantage or private financial gain,” and 17 U.S.C. §506(b), under which it is criminal to commit copyright infringement “by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000.”

The allegation under §506(a), that Quiroa committed infringement for purposes of commercial advantage or private financial gain, is supported by the alleged fact that Quiroa made $13,256.62 in the second half of last year from its Google Adsense account attributable to ads being posted on the various sites in question. (The complaint does not address whether any of Quiroa’s sites attempted to seek safe harbor from liability under the Digital Millennium Copyright Act, in which case financial benefit by itself would not be enough to find Quiroa guilty if he could show that he had no actual knowledge of the infringement. (The statute that says this is at 17 U.S.C. §512(d)). Of course, given the fact that the sites in question allegedly operated a search index which allowed users to access unauthorized live streams of content currently in play, showing a lack of knowledge might be a challenge.

The allegation under § 506(b), that Quiroa committed infringement by the "reproduction or distribution of . . . copies or phonorecords” allows this guest Kat the perfect opportunity to bring IPKat readers into the fray of the question that this Kat’s partner recently brought to her attention, and which has been dominating the conversation in this tiny office ever since. This Kat will now shamelessly use this chance to link you all to her partner’s blog on the subject and will acquiescence to all the necessary disclaimers that that entails, but in sum, “copies” and “phonorecords” are both defined in the Copyright Act as “material objects,” which computer files just might not be.

We will have to wait and see whether Quiroa’s counsel raises the question that Rick Sanders did - is the sharing of an MP3 file really a “distribution of a phonorecord”? Is there a “material object” involved? Of course, the answer to this question may have broader implications than how long Mr. Quiroa is likely to spend in jail (either way, one wonders whether the $13,256.62 in six months was worth the year he may face for a § 506(a) violation). If online files do not implicate the exclusive rights of distribution and reproduction, then many of the strategies currently in play by the content industries to shut down online music and movie sites may be in jeopardy.

On a separate note, this Kat is still working through the issue of what statutory authority permits the U.S. government to seize these websites prior to a conviction for infringement. She is sure that such authority must exist, and will report promptly when she finds it. If any readers of IPKat out there might be able to explain, this guest Kat would be happy for the input.

Friday Fantasies

noreply@blogger.com (Jeremy) — Fri, 03 Feb 2012 15:32:00 +0000

This Kat has been overwhelmed by not just the quantity of mail he has received in the past few days but also by its quality. He hopes to get most if not all of this material on to this blog and its little cousins (listed in the side bar on the left of this weblog's home page), so please don't lose hope of reading about some of the truly exciting topics and breaking news that have surfaced of late.

Katnews 1: Annsley Merelle Ward is the latest Kat to undergo a career shift. Within the next few days she will be saying farewell to the Happy Hunting Ground of Holborn, waving goodbye to the Old Nick and packing her bags for One Bishop Square, where she will be celebrating the true joys and subtle mysteries of intellectual property litigation with global super-power Allen & Overy LLP. Annsley is not just the AmeriKat: in the past few weeks she has established herself as a powerful writer and information-gatherer on Europe's precipitate haste to establish a new patent order. The Kats all wish Annsley well in her new position in which, they are sure, she will excel.

Anxiously scanning the latest
site-visit figures ...

Katnews 2: The IPKat is always fretting about whether anyone apart from a few family members, dedicated supporters and hard-boiled critics ever reads this weblog -- but he is comforted by the fact that, if the number of readers is low, the number of site visitors is comfortingly high. In January of this year a total of 116,098 visits were made to the IPKat's weblog. This is a new record for any month (the previous best, 96,531, being notched up in December; it's also the first time our tally of hits has exceeded the 100,000 mark. Week 4 of 2012 saw another record being broken, with 28,708 web visit. And yesterday, moments after guest Kat Darren posted his piece on the European Patent Office's somewhat pointless Catalogue of Differing Practices, we welcomed our 6,500th email subscriber. Merpel joins the IPKat and all of the crew in once again thanking all of their readers, friends and foes alike, for their continuing involvement, interest and (dare we say it) passion in reading, responding and debating IP topics from around the world. Without you, none of this would be worthwhile.

The builders of tomorrow's
world need work
experience today

Only one reader is needed to fulfil the dreams of a bright and interested 15 year old schoolboy from North West London who is seeking a work experience placement, either in a law firm or in the legal department of a company, between 2 and 13 July. No-one responded to this request on Monday and the IPKat is certain that this was because readers were probably thinking to themselves "since this weblog has so many readers, some else is bound to have offered him a place already so there's no point in me replying". If you do have a space in your office and are prepared to share it with him, please email the IPKat here and let him know, with the subject line "Work Experience".

Bird & Bird. A discussion item on LinkedIn's Fashion+IP group caught the IPKat's eye. Following on from the recent demise of the Peacocks retail clothing chain, Rebecca Tilbury (Harrison Goddard Foote) posted Peacocks attracting multiple offers -- which is presumably why they have such pretty feathers in the first place. But birds have been in the news on the other side of the Atlantic too. Thus the IPKat was a little disconcerted by a discussion started on LinkedIn's Canadian Copyright & Trade-mark Law group by Started by Lorraine Fleck (Hoffer Adler LLP) with the alarming title Target apparel sued by Canada Goose over parkas. This title surely calls for a good graphic or two ...

SOS -- can you hear the ducks?

noreply@blogger.com (Jeremy) — Fri, 03 Feb 2012 11:28:00 +0000

"Have brains, will travel", was the IPKat's first thought when he first encountered the term "Intellectual Passport". One of his readers would however like to know a little more about the term. He writes:

"I hope you are well [Yes, thanks, says the IPKat, about as well as a fictional feline can be -- though he's due for a reality check some time soon ...]. I am emailing to ask if you would post a query on the IPKat blog [If the Kat wasn't feeling well before, this is the sort of thing that acts as a wonderful tonic: a chance to pose a problem to that wonderful body of crowd-sourced intellectual property wisdom, this blog's excellent readers].

A client has just mentioned that she is being encouraged by a Canadian customer to apply for an “Intellectual Passport” with regard to a particular technology. I hadn’t come across this before and, upon looking into it, it seems to be (to put it politely) of dubious effectiveness.

I wondered if any IPKat reader had come across this before, and could point me to any case law or authoritative discussion and/or debunking of it. The information I have found comes from the originating company and can hardly be considered unbiased. See for example here [French, document but with the option of reading in English and Spanish] and also here".

The Kat notes that the business concerned is called SOSInvention.com and he found this on its website:

"If you are the Creator of an invention, or of an original concept, and legitimately want to own your creation, the Intellectual Passport CB can help.

The principle behind the Intellectual Passport CB is simple: to own a creation using the laws surrounding a copyright, also known as a ‘work of the mind’.

An Inventor can be transformed into a recognized Creator by developing a document containing his creation. This document must be written by professionals following the parameters particular to the category of recognized art in which the creation belongs. In this case, literature.

The Intellectual Passport CB is the result of such a transformation. It affordably embodies the medium par excellence to transform an innovative concept into a literary and artistic document, perfected following the norms ruling copyrights. Your intellectual property is thus legally established. From that time, no one can produce, reproduce or interpret, in whole or in part, your literary and artistic creation (Intellectual Passport CB) for commercial purposes without your authorization.

Endowed with a great quality-price ratio, the Intellectual Passport CB helps you become the owner of your creation and preserve its secrets, while you are establishing an international strategy for its commercialization. It is therefore the instrument of choice to serenely attain the status of Creator".

A little quackery?

It would be unchivalrous to accuse a business that peddles this sort of thing of quackery, but this Kat can almost hear a celestial chorus of ducks chanting in unison, "S.O.S!" ("Save our souls!") Merpel says, the whole thing actually makes perfect sense if you go through it and change the word "intellectual" to "ineffectual".

Do readers have any experiences of this business? If so, please share them with us!

Catalogue of Interest: Spot the Difference

noreply@blogger.com (Darren Smyth) — Thu, 02 Feb 2012 14:45:00 +0000

This new guest Kat was hoping to find something really exciting to blog about for his first proper post.

A Cat-a-log

He thought he had found it when he read with interest the item posted by the EPO, concerning the Catalogue of Differing Practices, said by the EPO to show the remaining differences in substantive practice between the Trilateral Offices (EPO, USPTO and JPO) as well as KIPO (South Korea) and SIPO (China), and to be an “important milestone”.

Thinking that this sounded jolly useful, and having a particular affinity for Cat-alogues, the Kat investigated further.

The linked report on the Trilateral Office website was rather more muted than the EPO, calling the Catalogue a “tool aimed at identifying the differences” and “a first step towards a reference guide”.

On coming to the document itself, the Kat became rather disappointed. Weighing in at 95 pages, the text is entitled a “Catalogue of Remaining Differences”. The trouble is that for each “difference”, each office simply describes its own practice in its own terms, leaving the reader to try to work out whether there is in fact a substantive difference or not.

Each “difference” in practice of each office is assigned to one (or sometimes more) of four categories, explained at the beginning of the document: Category I - an office can change the practice of its own motion; Category II - the difference in practice requires a separate statutory body to be consulted; Category III – the difference in practice requires legislative change; Category IV – the practice arises from judicial decision. However, it is hard to see how this classification is arrived at – with the potentially different practice of 5 offices being compared, what is the comparator against which the difference is being considered? So this superficially helpful classification leaves the reader little better informed.

It is as though the document is lacking some explanatory portion, but there does not appear to be any further explanation which is readily available.

The Catalogue is doubtless of great use to those involved in the Trilateral Cooperation and Five IP Offices projects. Its publication fulfils the promise made at the meeting of the Trilateral Offices in November 2011. However, in its current form it appears of limited wider use except as a synoptic statement of the law of five jurisdictions in certain areas.

The IPKat wonders whether anyone at the EPO, the Trilateral Offices or the Five IP Offices has yet taken the next step of summarising what the actual differences are. Suspecting not, this Kat will offer a reward of the new Edition (19^th) of his colleague Derk Visser’s The Annotated European Patent Convention, the seminal commentary on the EPC, to anyone who takes the trouble to read through the 95 pages and explain the differences. The IPKat would then happily and gratefully post the results for his readers.