For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 30 June 2009

Pirate Bay site sold to Swedish gaming company

Another chapter in the Pirate Bay saga (see the IPKat's collected (earlier) Pirate Bay postings here). The BBC today reports that the file-sharing site has been sold to the Swedish gaming company Global Gaming Factory, who has reportedly paid 60m Swedish kronor (£4.7m) for its famous purchase.


Global Gaming Factory was quick to announce in a very un-piratey manner that it would start paying copyright fees for all content linked to via the Pirate Bay site. Hans Pandeya, head of Global Gaming Factory, is cited by the BBC as saying "We would like to introduce models which entail that content providers and copyright owners get paid for content that is downloaded via the site. ... Content creators and providers need to control their content and get paid for it."

Peter Sunde, one of the famous four founders of the Pirate Bay site, is reported to have told the Swedish news agency TT: "We feel that we can't take The Pirate Bay any further. ... We're in a bit of a frozen situation where there's not much happening and there are neither people nor money to develop things."

It is not yet clear how Global Gaming Factory will charge for the download. The Pirate Bay site will be transferred in August. Whether this move will in any way affect the Pirate Bay founders appeal in the criminal proceedings, seems doubtful, says the IPKat. At least, it should ensure that Frederik Neij, Gottfrid Svartholm Warg, Carl Lundstrom and Peter Sunde will be able to pay their defense lawyers, muses Merpel.

Top Patent Blogs 2009: last chance to vote!

You have probably spotted by now that the US-based IP Watchdog weblog has been running for the past month a poll of Top Patent Blogs, with voters being asked to rate the 50 leading patent law blogs. There are actually two polls. First, you can cast one vote for the blog you like the best. Secondly you can cast as many votes as you need for the patent blogs you regularly read.

Right: once upon a time, voting was by show of hands -- but now it's all done online.

Both polls close today, so this is your last chance to vote. The results are promised early next month (i.e. soon).

This is the IPKat's first time in the poll and, even though it's not strictly speaking a patent blog but a general IP blog, in the race to head the Top Fifty it's currently in third position (well behind Patently-O, not far behind Patent Circle and just ahead of European Patent Case Law). In the second poll, for most-read status, the Kat is currently second (again well behind Patently-O but with its whiskers ahead of IP watchdog, Patent Circle and Patent Baristas).

If you'd like to vote, or are just curious to read the list of leading patent law blogs, you can visit the polling site here.

Patents, divisionals, legislative spaghetti and the faint-hearted

The following piece, by patent attorney Alexander Korenberg (Kilburn & Strode), raises some interesting issues. Entitled "Not For The Faint Hearted – The New Rules Relating To Filing A Divisional Application At The European Patent Office", it has just been published in the June 2009 (Volume 38, Number 6) issue of the CIPA Journal, p.388. The article reads as follows:

"Significant changes regarding the rules for filing divisional applications (and other procedural rules) will take effect from 1 April 2010. One of the EPO’s stated objectives behind the rule change relating to divisional applications is to increase legal certainty for third parties. Will this be achieved?

Introduction

Under the current rules, a European patent application can be divided at any time the application is still pending, that is it is not granted, withdrawn or refused. New rule 36(1) of the European Patent Convention introduces additional time limits for the filing of a divisional application:

Rule 36 (1)

(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

The new rule for filing a divisional application thus includes a time limit to do so by 24 months from the issuance of the first examination report for a family of parent and divisional applications (Rule 36(1)(a)). Additionally, the new rule provides for an independent time period to file a divisional of 24 months from an examination report raising an objection that the claims of the application relate to more than one invention and therefore lack unity (Article 82 EPC) providing that that specific objection is raised for the first time in the examination report (Rule 36(1)(b)). In the remainder of this report, this time limit to file a divisional application within 24 months of a first specific lack of unity objection is referred to as the “further time limit”. As will become clear below, understanding the consequences of the new rules, and specifically the further time limit, is far from straightforward – only the brave should read on.

“That Specific Objection”

There is a question as to what is meant by “specific” in the context of new Rule 36(1)(b). On the one hand, “specific” could simply refer back to Article 82, in which case only the very first non-unity objection raised for a family of applications would trigger the further time limit. On the other hand, “specific” could refer to non-unity objection relating to specific claimed subject matter, in which case a further time limit would be triggered each time a non-unity objection is raised for the first time for a specific claimed subject matter. In the absence of guidance from the EPO, it seems plausible to assume that the latter interpretation will be applied and that “that specific objection” means an objection specific to particular claimed subject matter not being in unity. This reading seems reasonable in light of Article 4G(1) of the Paris Convention which recites that the applicant may divide the application if a unity objection is raised. The further time limit appears to be intended to allow the filing of divisional applications occasioned by a lack of unity objection (as opposed to a “voluntary” divisional application filed on the applicant’s own volition), even if the 24 months time limit running from the first examination report has expired.

Limited effect of the further time limit

The question arises as to how the further time limit in the case of a lack of unity objection affects the prosecution strategy for a family of parent and divisional applications. Assuming that the EPO tends to raise any objections of lack of unity in the first examination report, any further time limit initiated by a lack of unity objection is likely only to apply in situations where a first examination report has already issued. The further time limit will then only apply if the applicant introduces a lack of unity by amendment after the first examination report or files a divisional application with claims which lack unity. What is the effect, then, of the new rules on such an amendment or divisional application?

Owing to the interaction with other rule changes taking effect at the same time, and in particular new Rule 62a EPC, matters are not quite as straightforward as they are currently. Rule 62a EPC will require a selection of a single independent claim per claim category (product or method/process, in accordance with existing Rule 43 (2) EPC) before a search is carried out.

Rule 62a

(1) If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.

(2) The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.

Rule 62a EPC thus requires a selection of a single independent claim per claim category (product or method/process) before a search is carried out (let alone an examination report issued). This limits the circumstances where a unity objection can arise, as non-selected claims will not be searched and a lack of unity objection cannot be raised in relation to their subject matter.

Case by Case

As a result of the interaction of the new rules, four cases need to be distinguished:

• A divisional application with claims comprising several groups of independent, product and method/process claims, each group of independent product and process claims relating to a respective invention (“a priori” non-unity): Although multiple inventions are present in the application as filed, the interaction of the new rules will require selection of one independent claim per category and a later deletion of any unsearched claims. If the applicant chooses independent claims relating to the same invention, a lack of unity of invention objection will never arise. Thus, the further time limit does not apply in this situation and the subject matter of the independent claims cannot be protected once the original 24 months time limit from the very first examination report issued for the family of applications has expired. If, on the other hand, the selected independent claims do not relate to the same invention, a lack of unity objection can be expected, which would initiate the further time limit. However, this comes at a price, since only the first such independent claim will be searched while the remaining non-unified unsearched independent claims can only be pursued in a further divisional application (with clear cost implications).

• A divisional application having claims with a single independent claim each for a product and method/process not in unity: This situation is considered unlikely to arise often, as a single claim set is not usually created to include independent product and method/process claims to non-unified inventions. Nevertheless, for a set of claims containing a single independent claim per category in which the independent claims are not in unity (for example apparatus and method claims relating to separate inventions), a lack of unity objection triggering the further time limit can be expected. However, the same problem with unsearched subject matter as outlined above for the selection of independent claims for different inventions in different categories applies. The non-selected of the two independent claims can only be pursued in a divisional application.

• Lack of unity based on prior art (“a posteriori” non-unity): The EPO could raise a lack of unity of invention objection if the independent claims are found to be not novel or not inventive in light of prior art cited during the search of the application. A lack of unity objection should be raised if the dependent claims are considered not to be linked by a common inventive concept (“special technical feature”) in light of the prior art. This may be considered an “unexpected” lack of unity objection. If such a lack of unity objection raised at the search stage is confirmed in an examination report, this examination report triggers the further time limit for filing a divisional application (providing that the objection is being raised for the first time). Thus, the further time limit may apply where an “unexpected” lack of unity objection is raised based on the result of the search.

• The applicant introduces a new set of claims lacking unity after the first examination report: In accordance with the new rules, any amendments after the first examination report will be at the EPO’s discretion (as opposed to the present rules, where the applicant can amend once as of right after the first examination report). We speculate that non-unitary amendments after the first examination report are unlikely to be admitted (and thus no lack of unity objection would be raised).

Conclusion

As can be seen, the seemingly simple approach of providing a time limit for filing a divisional application triggered either by the very first examination report or by the first examination report raising a specific lack of unity objection, in fact is all but simple in its consequences. The result is a complicated set of scenarios depending predominantly on the structure of the claim set. A further factor, of course, is how consistent the EPO will be in applying the new rules. For example, if new Rule 62(a) (requiring selection of an independent claim per category) is not applied consistently, different scenarios will arise on a case by case basis. Likewise, much will depend on how lenient the EPO is in applying its discretion to allow amendments after the first examination report has issued. This will add further uncertainty.

It may be the intention of the EPO to limit the availability of the further time limit (where a lack of unity is raised). Nevertheless, the availability of this time limit is applicable to limited circumstances which are difficult to understand and/or in part, unpredictable. This could, in effect, be contrary to the EPO’s stated intention behind the rule changes, of increasing legal certainty for third parties. In many cases, determining whether further divisional applications can still be filed under the rules from 1 April 2010 will be more difficult, more costly and less certain than under the current system".
The IPKat considers this to be one of the most non-illustrable blog features he has ever posted. He is however concerned at the amount of effort and ingenuity that goes into drafting increasingly complex rules that can scarcely be understood by the layman and which seem to consist almost entirely of a sort of legislative spaghetti that tangles everyone up. If the system were designed from the point of view of what its users want -- and they appear to want both the facility of divisionals and the greatest effectiveness in being able to exercise that facility -- might it not be better to start from that position rather than keep worrying about the interests of third parties. If if weren't for patent applicants there would be no third parties. Merpel merely notes that the current rules on divisionals are a good deal longer than the entire text of the Venetian patent law of 1474: see Venetian Cat (no relation) here.

Tricky issues concerning divisionals have also been recently discussed on the IPKat's weblog here, here, here and here.

Monday, 29 June 2009

Gone to meet its drafter

It's a rare thing indeed for the IPKat to publish a Comment to an earlier blog as a substantive item in its own right. It's an even more unusual thing for the IPKat to do so without attribution, but this wonderful piece -- penned by the wily Anonymous -- has had him chuckling into his whiskers ever since he first read it. This comment was appended to the IPKat's rant last week which you can find here, though you don't need to read the original post to enjoy the full flavour of ...

"The Norwegian Patent Sketch

Customer: Hello Miss.

Assistant: What do you mean Miss?

Customer: I’m sorry I have a cold, I wish to register a complaint.

Assistant: I’m sorry, but it’s a public holiday in Wales.

Customer: Never mind that my lad, I wish to complain about this ‘ere patent, what I purchased from you not ‘alf an hour ago in this very boutique.

Assistant: Ah yes the Norwegian patent, what seems to be trouble sir?

Customer: I’ll tell you what the trouble is my good man, it appears that you neglected to pay the filing, search, examination, and renewal fees.

Assistant: Lovely claim drafting though.

Customer: Claim drafting don’t enter into it, the application is lapsed!

Assistant: No it isn’t, it’s just in suspension.

Customer: [sarcastically] Listen, my lad, I know a lapsed patent when I see one and I’m looking at one right now.

Assistant: But there are residual rights.

Customer: Residual rights are a function of the validity, which was never examined ipso facto, there ain’t any.

Assistant: You could write a cease and desist letter. These can be based on the residual rights.

Customer: Well, then if there are residual rights, I’ll try and invoke them shall I. [Holding patent up in front of his face] ‘Ello Mr Patent, ‘ow are we today, would you like me pay your renewal fees for you so we can go to court for a preliminary injunction?

Assistant: There you see, the residual rights can be invoked.

Customer: That, my good man is precisely my point, you cannot invoke residual rights on a lapsed patent!

Assistant: Ah yes, but if I hadn’t let it lapse, the resulting patent would have been litigated for nullification, incurring additional expenses for you, the client.

Customer: Nullification, nullification! This ‘ere patent could not be nullified if you threw 10,000 novelty disclosures at it. It is dead, deceased, gone to meet its drafter, cast off its mortal coil, it has ceased to be, if it wasn’t here, it would be pushing up the daisies and tripping the light fantastic at the legal library. It is lapsed, deemed to be withdrawn, refused, revoked, it has lost all rights in rem, ab initio, a posteriori, a priori, a forteriori and retroactively even!

[Smashing the rolled up papers on the table with great force]

That my good man, is an ex patent!

Assistant: But it was published.

Customer: Published you say? [Pause] I took the liberty of examining the file estoppel for this patent after I got it ‘ome and discovered that the only means by which it ‘ad been published, was by virtue of the fact that a photocopy had been nailed to a tree outside Concept House!

Assistant: Well I suppose I’d better replace it then [looks behind counter]. Well it looks as though we’re right out of patents.

Customer: I see, I get the picture.

Assistant: I’ve got an industrial design.

Customer: Does it protect a technical invention?

Assistant: Er, no.

Customer: WELL IT’S HARDLY A BLEEDING REPLACEMENT THEN IS IT!!!??@@##.

Assistant: [Sheepishly] No, I suppose not.

Customer: Well.

Assistant: D’you….., d’you want to come back to my place?

Customer: [Checks the shop] Yeah, all right, sure".

Letter from AmeriKat

Stop your relentless Twittering!

Despite the powerful protection afforded her by the First Amendment, the AmeriKat does not tweet, Twitter, or chirp. Hundreds of other people may be joining her, given the recent rash of claims against users who have published defamatory, private, or otherwise infringing statements on their Twitter accounts. Despite the internet begin heralded as “the most participatory form of mass speech yet developed” in ACLU v Reno, this participation may have come at a price. The Media Law and Resource Center has reported that over 250 claims have been brought against individuals using Twitter and other blogging sites this year.

As reported by The Independent in March, the first lawsuit against a Twitterer was brought against the notorious Courtney Love (left) by fashion designer Dawn Simorangkir. Love posted Twitter updates calling the designer, among other things, a liar and drug user. Under section 230 of the Communications Decency Act 1996, Love and not Twitter is responsible for the publication of libellous and private material. To counteract the immunity from liability afforded publishers, the president of the Media Bloggers Association, Robert Cox, has collaborated with Media Professional Insurance to establish a new insurance plan for bloggers to protect themselves in the event of a lawsuit.

But it is not only the world of libel, nor just the liability of independent bloggers that is at issue. At the beginning of this month, St. Louis Cardinals (a Major League Baseball team) manager Tony La Russa filed the first claim brought against Twitter in the Superior Court of California. The complaint states that Twitter is responsible for trade mark infringement, misappropriation of image and likeness and invasion of privacy by publishing the Twitter content of an impersonator of La Russa. As far as the AmeriKat is aware, the post of Twitter’s co-founder Biz Stone stating that Twitter has not settled the case means that the two parties will be proceeding to trial. If they do, the court will be asked to decide whether section 230 of the CDA is also applicable in cases of trade mark infringement. In the AmeriKat’s opinion, however, La Russa’s lawyers dressed up a defamation suit in the clothes of a trade mark claim to fall outside of section 230; she believes that the Court will be wise to such tactics.

In a recent case this month, Barnes v Yahoo!, Orgeon’s 9th Circuit has attempted to redress this imbalance by holding that, where an ISP has undertaken to remove infringing content and does not, it may not be able to bar a claim for promissory estoppel against them by virtue of section 230. Despite this case, the AmeriKat feels that it is inadequate for claimants to have to rely on a contractual claim when an actionable tort has been committed against them. The AmeriKat believes that with the comparative effortlessness, speed, and general brevity of these types of internet publications, the ease to which someone’s reputation is libelled or intellectual property infringed has surely increased. Since under section 230 a claimant, without the ability to sue the publishing website, is potentially left without adequate redress for a tort committed against it, the AmeriKat feels that the US needs to redress this current imbalance in the law.


Sotomayor Standing

Following every Supreme Court nomination comes the inevitable media and governmental interrogation of the nominee’s judicial, legal, and personal record. President Obama’s May 29 nomination of Sonia Maria Sotomayor to the Supreme Court has resulted in 54% of Americans stating they would like to see her confirmed as the next Supreme Court Justice, replacing Justice David Souter. Given the US public’s majority approval of Sotomayor, the AmeriKat has taken this opportunity to conduct a little research into our likely next Supreme Court Justice’s intellectual property law record.

Before her nomination to the bench by former President George H W Bush, Sotomayor was a partner at New York firm Pavia & Harcourt, specializing mainly in trade mark matters. For four years Sotomayor represented significant brands, such as Fendi, against producers of counterfeit goods and ran stringent anti-counterfeiting programmes to protect their brands. Responding to a 1986 event called the “Fendi Crush”, where to celebrate their success against counterfeits thousands of fake Fendi accessories were destroyed, Sotomayor stated that in representing brands the “aim is much like a drug operation. We attempt to go after suppliers and secure information that leads back to the manufacturers.” Besides obtaining several ex parte injunctions against counterfeit suppliers on behalf of Fendi every month, Sotomayor also established a group of prominent trade mark lawyers in New York City to lobby for changes in anti-counterfeiting laws. In an interview with The San Francisco Chronicle in 1992, Sotomayor stated that “In the next five or 10 years, trade mark owners will become more concentrated on changing state laws, changing penalties. They will rely more on local police to make arrests. A real threat of jail does have an impact.”

Unfortunately, it is Sotomayor’s subsequently reversed decision in Tasini v The New York Times 972 F.Supp. 804 (SDNY 1997) which is the most well known of all her intellectual property decisions. In this case, freelance journalists brought a claim against the Times alleging copyright infringement arising from the republication of their articles on electronic databases such as LexisNexis. The authors contended that their original licence granted to the Times was for publication in print form and therefore did not include electronic publication. Sotomayor was tasked in interpreting section 201(c) of the Copyright Act which deals the rights of owners of collective works, i.e. whether the Times as a collective works owner could reuse the journalists’ works absent any express authorization. In her liberal interpretation of this section, Sotomayor held that the Times had the right to reprint the journalists’ works, even if their initial licence did not include electronic reproduction. However, the Supreme Court reversed Sotomayor’s decision by 7-2. Justice Ginsburg gave the majority speech ruling that the Times republication of the journalists’ individual articles without the context of the entire newspaper in which the articles were first printed was an infringement and thus required the journalists’ consent and compensation.

If rumour is correct and President Obama’s administration manages to install Sotomayor to the Supreme Court by October in time for the Court’s next term, she may be presiding over the much-anticipated judgment in Bilski. The AmeriKat’s brief investigation into Sotomayor’s intellectual property decisions seems to show her leaning in favor of larger corporations and rights holders. However, this limited evidence and Sotomayor’s few judgments concerning patent cases have not given the AmeriKat any definitive guidance on how to predict Sotomayor’s approach to Bilski. If it is anything like her ex-husband’s stance, however, Sotomayor’s judgment will not be forming part of any ground-breaking judgment that many are hoping.
Where the AmeriKat has failed to predict Sotomayor’s attitude towards patent claims, she is eager to hear your views. To help you along your way, the AmeriKat suggests you look Sotomayor’s responses to the required Senate Committee of the Judiciary questionnaire.


Michael Jackson

This week’s Letter would not be an accurate reflection of the current discussions in the US if the AmierKat did not mention the death of Michael Jackson. The AmeriKat herself remembers dancing around to the Thriller vinyl record in her purple corduroy flairs and joining her parents exercising to “Can You Feel It” on Jane Fonda’s Workout cassette (vinyl and cassettes – those were vintage days for intellectual property law!). Besides his enduring earlier hits and his later bizarre press appearances, it was Jackson’s purchase of ATV Publishing, the owner of the rights to 251 Beatles’ songs, and his own catalogue of valuable copyright works, that will be preoccupying numerous lawyers handling the administration of his estate in the coming months. As reported in Rolling Stone, since Jackson’s death on Thursday, sales of his music on iTunes have soared. The AmeriKat wonders whether, with his death, the increase in value of Jackson’s intellectual property assets will now go somewhere in handling the reported $400 million in debt facing his estate.

Friday, 26 June 2009

Blacklight fail yet again


As regular IPKat readers will know, this particular Kat has been intrigued by the progress of the strange and mysterious US company Blacklight Power, and in particular by their continued attempts to get UK patent protection for their alleged inventions. Two of their inventions have previously featured in a hearing at the UK-IPO (commented on by the IPKat here), which resulted in a finding that the applications fell foul of sections 1(1)(c) and 14(3) of the Patents Act 1977. The hearing officer considered that, because the inventions relied on a controversial scientific hypothesis known by the self-contradictory acronym 'GUTQCM' (now apparently called the "Grand Unified Theory of Classical Physics"), it was necessary to determine whether the alleged theory was, on the balance of probabilities, likely to turn out to be true. For various reasons, the hearing officer considered that it was not at all likely.

Blacklight then appealed against the decision, and came before Mr Justice Floyd in the Patents Court to argue their case (on which the IPKat commented here). Floyd J in general agreed with the UK-IPO hearing officer but nevertheless sent the applications back to the IPO so that what he considered to be the correct question could be answered, which was whether there was any reasonable prospect that the theory would be found to be true on a full investigation with the benefit of expert evidence.

The same hearing officer then went on to consider this question, which has now resulted in a second decision coming out of the UK-IPO on these applications, available from the IPO here. Unsurprisingly, the hearing officer has not miraculously found that the theory would stand a reasonable prospect of success of being found to be true, and has again refused the applications. The key statement of the decision (which at times ventures into the outer realms of speculative physics) appears to be this one:

"So how does the question of GUTCQM’s reasonable prospect of being shown to be valid fare in this scheme of things? If an applicant for a patent put forward an invention based on one of the current candidate theories for the fundamental nature of space time, such as string theory, or loop quantum gravity, etc, the question whether the theory had a reasonable prospect of turning out to be valid would raise real issues. It would by no means be guaranteed that the answer in any of those cases would be in the affirmative. Those are well recognised and intensively researched ideas familiar to thousands of physicists. GUTCQM is not even a candidate theory in those terms. It is not a theory that has received any acknowledgement let alone critical assessment by the scientific community at large. Assessing it on the basis of the observations I have made above concerning the two different routes to acceptance of theories, it has neither demonstrated that it provides an underlying principle nor is it a theory that is receiving attention and work by researchers in the scientific community. If I may refer to a consideration of the landscape of rival theories from the Roger Penrose book referred to above; on page 1017 he mentions a survey of scientific articles which lists eight different theoretical bases for research in the field of quantum gravity, the most popular theory in that survey attracting 69 articles in a month and the two least popular just one article each. This was in 1997 but I don’t think the picture would be very different now. GUTCQM is not one of the eight; it does not attract one single article. It simply is not within the consideration of serious scientists in the field. It does not in my view get off the starting blocks for inclusion among the group of such theories which might eventually turn out to be valid."
The IPKat has no doubt that Blacklight Power's applications will not succeed as long as they carry on being dependent on a theory that has such little possibility of being right, or at least being accepted by proper physicists. Perhaps they should try a different tack and try to patent inventions that have some basis in reality?

Citing prior art in European patent applications

The IPKat has noticed a recent decision of an EPO Board of Appeal that relates to the question of whether it is necessary, rather than merely preferable, for a European patent application to mention relevant prior art known at the time of filing. The issue relates to Rule 42(1)(b), which states that the description shall "indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art".

Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result. The applicant, Samsung Electronics, unsurprisingly appealed.

In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments. There was no reason to depart from the long-standing EPO practice of allowing amendments to be made to the description to cite relevant documents.

The IPKat wonders what on Earth the examining division in this case were thinking of, but is very glad that the Board reached the decision they did, not least because the consequences of the decision going the other way would have been very bad indeed. The well-known consequences in the US of not citing relevant documents are bad enough, but following the examining division's reasoning in this case would inevitably result in many currently pending European applications and granted patents becoming invalid without any hope of recovery. Following the decisions in G 1/05 and G 1/06, the IPKat finds it surprising that an examining division could even contemplate such a draconian interpretation of the rules.

Friday frissons

Don't forget to check the IPKat's side bar. There are so many exciting events on offer. Some are free; some are discounted; some are not.


Around the blogs. Specialist copyright blog The 1709 Blog, launched this April, has now achieved its 200th email subscriber -- well done!And take a look at GlobalIPWatch, a cooperative venture concerning which Arif Mahmood has written:
"I was wondering if IPKat could help European students learn about unique opportunities with Global IPWatch.com. We are a non-commercial international electronic IP case law reporter and have law students from the US and Canada produce case summaries of notable IP decisions from both jurisdictions. While we cover some EU decisions at the moment we are trying to reach out to ambitious young IP professionals who want to volunteer as Associate Editors and contribute EU IP cases".
If you're volunteering, then email Arif here. Another blog that is crying out for attention is IP Finance, which last week notched up its 500th email subscriber. IP Finance is experimenting with regular themed features: one is Louise O'Callaghan's Tuesday Articles on IP insolvency, which has now been running for five weeks (details are available in the side-bar); the other is Neil Wilkof's posts on the drafting of IP licensing contracts -- the first two of which are here and here.


Good news if you're one of the young IP enthusiasts who either attended the Intellectual Property Institute's informal (pay-for-your-own-drinks) session at The Old Nick last year or who contacted the IPI to say you'd like to keep in touch. There are two forthcoming events in the pipeline. One is a "show and tell" social, to be hosted by Wedlake Bell: turn up and be sure to bring an item of IP interest, so we can all discuss it over a refreshing drink or two. The other is a chat with IP Minister David Lammy MP, who has kindly agreed to join us -- again at The Old Nick -- for a strictly off-the-record chat about IP and what it feels like to be making one's career in that sector. Dates and further details to be supplied in due course.


Several good souls have taken the trouble to inform the IPKat of a patent, US 5255452, issued to the late Michael Jackson. This was for a "method and means of creating anti-gravity illusion". The IPKat doesn't want to speak ill of the dead, but he has a long memory and wonders whether the equally late but prior in time Roy Castle performed a similar illusion using a similar device back in the 1960s, in the days of black-and-white telly.


The Chartered Institute of Patent Attorneys (CIPA) in the UK has had a big week. On Wednesday it launched the latest supplement to its must-read/steal Guide to the Patents Acts (details here).

Left: a patent attorney, unable to bear the new burden of regulatory review, decides to chuck it in and get a job for life with a decent pension ... in the civil service

Then it publishes, for a most reasonable £25, the 9th edition of Doug Ealey's Study Guide to the Patents Acts (details here: review to follow). Then it gets maligned by the formerly friendly Intellectual Property Office. Who said that being a patent attorney was boring!


The IPKat's friend and 1709 Blog colleague Hugo Cox is currently looking for a fresh challenge. If you've got one, click here for further information and contact details.

Right: a dogged character looking for a fresh challenge ...


Events in the forthcoming week include the seminar led by Cambridge IP buff Dr Patricia Akester entitled "The Impact of DRM on Access to Exceptions: First Empirical Assessment". This is another excellent Intellectual Property Institute event. Please don't let the fact that it clashes with the second week of the Wimbledon tennis tournament distract you -- if you like an ace, then Dr A is the person for you. Details here.


Fending off allegations that he himself is biased, the judge in the proceedings to establish whether the Swedish Pirate Bay judge was biased has concluded that he was not and that, accordingly, the Pirate Bay Four were properly convicted of criminal copyright infringement (see earlier posts here and here). Reports on these latest proceedings can be read on The Register, Reuters and Ars technica.

You want to complain?

The current issue of IPInsight ("the free e-newsletter brought to you by the Business Outreach and Education team" of the UK's Intellectual Property Office), leads with a feature entitled IP complaints. Its text reads as follows:

"Unhappy with your IP adviser? Your chances of holding them to account are about to improve.

A bill for £2,000 lands on your desk. It is from your IP attorney. Sure, they have been working on your case. But where has this bill come from? Did anyone ask whether you wanted the work doing? Actually, you might have liked it done differently. Or not at all.

At the moment, you can complain, of course. First, you raise it with your attorney. Then, go to one of the two professional institutes: The Chartered Institute of Patent Attorneys (CIPA) for patents, or the Institute of Trade Mark Attorneys (ITMA) for trade marks. But it feels as if they are all in the same boat. Nobody sees it your way round.

Next year, any such cosiness is being blown away. The professional institutes are losing their regulatory role. In future, they are being freed to concentrate on representing their members. From early next year, a new regulator, The Intellectual Property Regulation Board (IPREG), also known as IP Reg, will be responsible for ensuring high professional standards. The chief executive is Mike Knight, a former examiner at the Intellectual Property Office, who is used to casting a sceptical eye over IP attorneys.

In drawing up new policies for conduct, discipline and qualifications, he is under the direction of a board that includes IP users as well as attorneys. It will mean a big change in how the profession works. "We are turning it the other way round. We will be setting down standards in light of what the public expects. It will be no longer a question of what professionals think they ought to have achieved."

Knight will have little tolerance for anyone saying that IP varies too much from case to case. "Everyone is providing a legal service. We want to make sure attorneys tell their clients where they are going, what they are doing for them, what they can expect and how much it will cost. The best attorneys do it already. We want to spread these practices throughout the profession, so on each the client knows what to expect."

As a user, you can go to the IPREG website to take a look at the code of conduct and the qualifications expected of attorneys. Because the needs of a lone inventor and a global brand are so different, Knight is wary of producing a template for IP agreements, but in the code of conduct, you will find examples of what IPREG expects to see in a contract.

These standards, written under the influence of IP users, will be how the profession is judged in future. If you are unhappy, you will have a clear framework on which to base any complaint. If your attorney gives an inadequate response, you then go to another new independent body: the Office of Legal Complaints.

After taking an initial look at whether you have a genuine grievance, they will ask your attorney to put up a hefty sum to cover the cost of the investigation and any redress. If they are cleared, it will be returned to them.

But the principle is there that 'the polluter should pay', says Knight. "We want to win respect for a profession with high standards. If you are a bad attorney, you will pay for it."
The IPKat is happy to see all professions regulated, and he sees no reason why the IP professions should be treated differently. He is also pleased to see that IP users are being brought in to the review process. However, he wonders whether he is alone in considering the tone of this article to be unnecessarily offensive. It demeans the work that has gone into regulating the patent and trade mark professions in the past and the comment about cosiness strikes a gratuitiously unpleasant tone. Has the IPO fallen out with the professions, or is it merely sticking pins into them for the fun of it, to remind them that, while a dissatisfied client can change his professional representative, you can't change IPOs if you fall out with people working in the one you've already got?

IPReg website here
Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons here
"You want to complain!" -- the Monty Python sketch

Thursday, 25 June 2009

Is the ruling in L'Oréal v Bellure against the law?

Swedish Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB) is one of the IPKat's favourite correspondents because he likes to use his brain in order to exercise the brains of others. He is very concerned about the recent ruling of the Court of Justice of the European Communities in Case C-487/07 L'Oréal v Bellure (discussed here by the IPKat and here, on the same blog, by another of the IPKat's favourite correspondents, Professor Dirk Visser). Writes Mats:

"I wonder if you can help me in this matter?

Concerning ECJ´s ruling in L'Oréal v Bellure I wonder if this decision is consistent with EC´s Directive 2005/29 on Unfair Commercial Practices (UCPD)?

In Wetherill and Bernitz, The Regulation of Unfair Commercial Practices under EC Directive 2005/29, New Rules and New Techniques, Hart, 2007, p. 42, you can read the following:

“The standard of assessment is touched upon in one of the Recitals (14), which declares that it is not the intention of the Directive to reduce consumer choice by prohibiting the promotion of products which look similar to other products unless this similarity confuses consumers as to the commercial origin of the product and is therefore misleading. This recital can be read as a pronouncement in favour of a rather restrictive view of the scope of protection offered… This would be more in line with the rather restrictive view on passing-off prevailing in English law than with the elaborate German case law”.

Professor Ulf Bernitz -- you may call him Mr IP in the north -- confirms in his chapter "Misleading Packaging, Copycats and Look-alikes: an Unfair Commercial Practices", in Ezrachi et al, Private Labels, Brands, and Competition Policy, Oxford 2009, p. 218:

“From a legal point of view, trade mark law constitutes the basis. However, trade mark protection is often not broad enough to catch the use of copycats and look-alikes. They often avoid being so confusingly similar that they would constitute trade mark infringement. In this regard, it is of fundamental importance to which extent there exist principles of unfair competition law suitable to the problems. On this point, the law is far from uniform. The possibility of taking successful legal action against the practice seems to be particularly restricted in the UK; English law on passing off tends to require proof of actual misleading. In other countries, e.g. Germany and the Nordic countries, unfair competition or marketing law offers wider possibilities for successful legal action in this kind of cases. However, the recent EC Directive 2005/29 on Unfair Commercial Practices has changes the basic legal perspective substantially”. And at p. 229: “This recital (14) can be read as a pronouncement in favour of a rather restrictive view on the scope of protection offered, indicating the priority of consumer perception and thus possibly reducing the application of the Directive to instances of clear deception of consumers looking for a particular brand or the like. This would be more in line with the rather restrictive view on passing-off prevailing in English law…”

The ECJ´s ruling in L'Oréal v Bellure is based, as I believe, on the notion of protection of investments, cf AG´s opinion in Case C-206/01 Arsenal v Reed. But is it consistent with the law?

I´m rather confused, and wonder if any IPKat friends, including Professor Visser, can bring order to all of this?"
Who would like to rise to this challenge, wonders the IPKat. Merpel reminds readers that there are still a couple of days in which to cast your vote on the poll (you can find it at the top of the side-bar) as to whether L'Oréal v Bellure is the best thing since sliced bread or an unmitigated evil, or something in between.

German file-sharing site fined 24m euros

The Register reports that a German court has fined file-sharing service Rapidshare 24 million euros for copyright infringement in respect of 5,000 tracks which were shared through the site. The court has held that it is the responsibility of the hosting service, and not the copyright owners, to ensure that copyright infringement was not taking place.

The IPKat has relatively little sympathy for file-sharing websites when they know that the main use for their websites is to exchange copyright material. However, he wonders what this judgment means for services like UTube where some files may infringe but others may either be completely original, or at least involve transformative use.

ECJ puts the finger on PURE DIGITAL's problem

For those who love recent history, Case C-542/07 P Imagination Technologies Ltd v Office for Harmonisation in the Internal Market is a Community trade mark appeal which the Court of Justice of the European Communities heard way back on 11 June but which has hitherto escaped the vigilant Kats.

Imagination applied to register as a Community trade mark the word sign PURE DIGITAL for goods and services in classes 9 and 38 (electric and electronic apparatus for use with multi-media entertaining systems and telecommunication of information, etc). The examiner refused the application on the ground that the mark was descriptive and devoid of either inherent or acquired distinctive character. The Second Board of Appeal dismissed Imagination's appeal, as did the Court of First Instance. Imagination then appealed to the Court of Justice, maintaining that the Court of First Instance had wrongly taken the view that the distinctive character of a trade mark for which registration had been sought must be acquired before the date of filing of the application.

The ECJ dismissed the appeal and explained as follows:

* Distinctive character, if not inherent, had to be acquired through use of the trade mark before the date of application for registration. This was apparent from the very wording of Article 7(3) of the Community Trade Mark Regulation, particularly from the use of the verbs in the past tense in the phrases 'the mark has become' and 'in consequence of the use which has been made of it': the mark must already have acquired distinctive character through prior use by the time of filing of the application.

* It was the intention of the Community legislature to grant protection as a Community trade mark only to those marks whose distinctive character had been acquired through use before the date of application and the literal interpretation of Article 7(3) was the only one which was compatible with the logic of the system of absolute and relative grounds for refusal.

* If the contrary were correct, that would lead to the unacceptable proposition that, in opposition proceedings based on an earlier mark which had not yet acquired distinctive character, the opposition would succeed where the second mark already had distinctive character at its time of filing while the first had not yet acquired it through use.
The IPKat thinks this is right and that the final point is the real clincher. Merpel agrees and says, how refreshingly pleasant it is to see a court these days which has a kind word for any sort of literal interpretation: I'd almost forgotten that words come with meanings and are not all wrapped in meta-text. Tufty, not wanting to be left out, adds that the words 'pure digital' are likely to run into relative grounds oppositions even if there are no problems with absolute grounds such as decriptiveness and lack of distinctive character, if you look at the logos decorating this post.

Pure digital products here
Pure digitalis here

Wednesday, 24 June 2009

IP foresight: a new forum for SCRIPT

The IPKat's learned friend and scholar, Professor Charlotte Waelde, writes to inform him as follows:

"At SCRIPT (the AHRC funded research centre for studies in intellectual property and technology law at the University of Edinburgh) we have set up an independent 'think tank' called the Intellectual Property Foresight Forum (IPFF). The main purpose of the IPFF is to 'bring together intellectual property and media lawyers, postgraduates and others with related interests to discuss and collaborate on issues of importance in the development of intellectual property and media laws and policies'. Details can be found here.

We are aiming to engage in a variety of activities including the preparation and submission of opinions and responses to consultations and the development of joint funding bids.

We also want to build up databases of academics and PhD students working in these fields and hope that you might be interested in having your details included in the academic database and that your PhD students might be keen to have their details in the student database.

IPFF Academic Database

The purpose of this database is to make available information on Intellectual Property and Media academics in order to facilitate networking and foster research collaborations in IP and media law development and policy.

If you would like to be included in the database, please click here and fill out the online form.

IPFF PhD Database

The purpose of this database, which builds on the work of Professor Lionel Bently at CIPIL, University of Cambridge, is to facilitate the development of a UK wide community of Postgraduates and to act as a resource for both students and PhD Supervisors.
If you have PhD students working in the area of IP or media law who might like to be included, please ask them to click here and fill in the online form.

Other work

If you would like to get involved in any of the work of the Forum, such as submissions to consultations and joint funding bids, please do get in touch. I would be very pleased to hear from you".
If you are interested, you know where to click -- and if you want more information you can email Charlotte here.

UK customs procedures and the burden of proof

Via the IPKat's friend Anat Paz and her colleagues at Lovells comes the transcipt of a letter from Her Majesty's Revenue & Customs' Customs & International Supply Chain Integrity & Facilitation unit. The changes in UK Customs procedures relating to allegedly counterfeit goods can have very serious implications for rights holders. The letter, dated 22 June 2009, reads:

"Changes to the way goods suspected of infringing an Intellectual Property Right are to be dealt with at the frontier.

I am writing to inform you that with immediate effect the way we administer the intellectual property regime in respect of Trademark and Copyright infringing goods will change to comply fully with Article 13 of Council Regulation 1383/2003. We will no longer seize items based upon a witness statement alone but will detain them pending the outcome of court proceedings instituted by the right holder and only seize the goods if directed to do so by the appropriate court.

Why the change?
The UK implementation of Regulation (EC) 1383/2003 via SI 2004 No. 1473 “The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004” provides for procedures similar to, but not identical with, those required under the Council Regulation. We have been advised that departure from the precise requirements of the Council Regulation is not permissible as the Regulation is directly applicable within the UK. We are therefore obliged to modify our procedures to align fully with the requirements of the Council Regulation. This change will not weaken our ability to enforce IP rights legislation at the frontier.

What does this mean for the right holder?
The change will significantly impact upon goods that may infringe either a trademark or copyright. Our practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.

We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgement and we are directed by the court to seize the items in question.

How we will administer the regime
When goods that we believe may infringe an intellectual property right are detected we will contact the right holder or the nominated representative as set out in the IP application and detain the goods for ten working days.

At the time of contact the case officer should supply to the nominated contact all the information, as set out in Article 9 of the Council Regulation, which is required to decide whether an intellectual property right has been infringed.

To maintain the detention beyond ten working days the right holder must initiate proceedings to determine whether an intellectual property right has been infringed or reach agreement with the declarant, holder or owner of the goods to abandon the goods.

The period may, upon request, be extended by a maximum of a further ten working days so it is important that right holders keep the case officer informed of any delay. Right holders should note that the detention period cannot exceed 20 working days in the absence of court action.

In the case of perishable goods the detention period set aside within which court proceedings must be initiated shall not exceed three working days and may not be extended.

The proceedings for all IP rights are those that are set out in Regulation 9 of Statutory Instrument 2004 no 1473.

Until the adoption of a new Statutory Instrument, which will set out clearly our powers of seizure in IP cases, right holders should as part of their proceedings arrange for the disposal of any infringing goods via an order of the Court.

Will Article 11 be applied?
With the agreement of the Minister we intend to introduce legislation to implement a simplified procedure based on Article 11 of the Council Regulation, however in its absence we will apply the article in the following manner.

These arrangements apply to all IP rights covered under the Council Regulation and are not limited to trademark and copyright.

The right holder may seek the permission of the declarant, holder or owner of the goods to abandon the goods.

The agreement should be in writing and must be communicated to the case officer either by the right holder or the declarant, holder or owner of the goods.

It should be noted that the time periods set out in Article 11 and Article 13 run concurrently. The owner of the goods has the certainty that steps must be taken to establish the IP status of the goods within twenty working days at most or the detention of the goods, for IP purposes, must cease. Article 7 of Commission Regulation 1891/2004 agrees that it is reasonable to accept that first seeking disposal under a simplified procedure is justification for extending the initial ten working day period but right holders must act with alacrity as goods cannot be detained for IP purposes beyond a total of twenty working days.

Destruction will be carried out at the expense and under the responsibility of the right holder. Right holders should therefore ensure that they obtain prior permission from the person with authority to abandon the goods to the Crown.

Is there a transition period?
Suspect consignments that have already been detected and action started under the old procedure will continue to be processed under the old procedure and if appropriate goods will be seized. However right holders who seek an extension of a further ten working days will be informed that they should use that period to initiate court proceedings. In absence of a court order goods will not be seized for an intellectual property breach after Friday 3 July.

Should you have any queries arising from the changes announced above, please contact:

Ron Johnson
IP Policy Team
Tel 01702 367980
e-mail ron.johnson@hmrc.gsi.gov.uk"

The IPKat urges his British readers to take careful note of this sudden shift, for their own sakes and for the sake of their consumers. Merpel wonders why HMRC is spelling 'trade mark' as 'trademark'. Is this a major policy shift in terms of traditional British spelling, or merely the result of its eagerness to save time when sending important letters by omitting the spaces between words?

Tuesday, 23 June 2009

Letter from AmeriKat

The IPKat is pleased to introduce a new member of the blogging team, the AmeriKat. Her real name is Annsley Merelle Ward and you can read all about her if you scroll down to her piccie on the side bar. Annsley is right at the bottom, below Tufty, in keeping with the Kats' traditional adherence to alphabetical order.

The AmeriKat will be providing letters from America on a regular basis, throwing some light on events in the US for the benefit of those of us who know it is but not what it is about. Here's her first offering:

Will Waxman's axe chop biologics? And has pay-to-delay had its day?
The summer sun has brought to Washington a flurry of activity in the area of patent law. As was previously reported by the IPKat in March, Representative Henry Waxman’s (D-California) Bill, if passed, aims to reduce the exclusive marketing currently enjoyed by brand-name biologics to five years and provide for a mechanism for FDA approval of these drugs where currently there is none.

Right: Senator Waxman (right), celebrating his first appearance on the IPKat weblog

This means that currently, along with “pay-for-delay” settlements where brand-name drug manufacturers pay generic competitors to stay out of the market, the current state of the law has prevented generic biologics from entering the market and competing with the brand-name versions at all. This has had the effect of prohibiting access by U.S. consumers to lower priced drugs.

Since March, Washington has seen two significant events occur that may be signalling a change of fortune for the pharmaceutical industry in this area. First, in dealing with “pay-for-delay settlements”, the U.S. House Energy and Commerce Committee’s Commerce, Trade, and Consumer Protection Subcommittee has voted 16-10 in favour of Representative Bobby Rush’s (D-Illinois) Protecting Consumer Access to Generic Drugs Act of 2009 (H.R. 1706). This Act prohibits these types of anticompetitive settlements and, if passed, may have the effect of reducing the cost of prescription drugs.

Second, the Federal Trade Commission on 10 June released its report “Follow-on Biologic Drug Competition” which examined whether competition from “follow-on biologics” (FOBs) or generic biologics could reduce the price of brand-name biologic drugs. Rep. Waxman stated that the FTC’s report “completely disposes of the drug industry's argument that they need 12 to 14 years of exclusive marketing, indeed that they need any additional exclusivity, to sustain innovation.”Responding earlier to the introduction of Waxman’s Bill, the Biotechnology Industry Organization’s President and CEO Jim Greenwood argued that the Bill “does not strike the necessary balance for patients or the economy” as it would de-incentivise investment into research and new drugs by enabling competition from FOBs. The FTC conclusion, however, is explicitly at odds with the view held by Greenwood.

The FTC’s report and the sub-committee’s vote in favour of Rush’s Bill possibly strengthens the prospects of Waxman’s Bill and may assist in its passage through the Committee and Congress. Because Rush’s Bill received a favorable vote it stands a strong chance of being accepted by the Democratic controlled House and Senate. Its passage may ease the way for Waxman’s Bill, which was previously heralded by Mr Kailian, a moderator of the BIO 2009 International Conference session aptly entitled "Weathering the Perfect Storm of Financial Distress and Political Pressure”, as being “dead in the water”.

For some entertaining and pointed questioning of brand-name pharmaceutical companies ‘anti-competitive’ behaviour, the AmeriKat strongly suggests watching the examination of the witnesses during the Sub-Committee’s hearings.

Has Jammie got off lightly?

Over a thousand miles away from the legislative chambers of D.C., Jammie Thomas-Rasset, the Minnesotan mother who illegally downloaded and shared 24 songs, has been ordered to pay $1.92 million to four major music labels, a sum which works out at $80,000 per track. Although this figure seems legally, if not morally,excessive, it must be remembered that section 504(c)(2) of the U.S. Copyright Act allows upwards to $150,000 per wilfully infringed work. The sting in this case is that, two years previously, Thomas-Rasset had been convicted on similar charges of copyright infringement and ordered to only pay about $200,000. However, due to the judge’s faulty jury instructions in this previous case, the verdict was thrown out and a retrial rescheduled. The attorney for Thomas-Rasset, Kiwi Camara, stated that he was surprised by the size of the award and, although he was prepared to negotiate with the RIAA, he shortlisted issues on which he would appeal the judgment.

Needless to say, where the RIAA received poor press previously for their litigious activity, the astronomically high award of damages in this case against one individual is set to continue to diminish their standing in U.S. court of popular opinion. With the support of powerful Democrats in Washington, popular opinion is not something that the RIAA is overly-concerned with for the time being – although the AmeriKat argues that they probably should be. Regardless of a settlement or appeal in this case, Thomas-Rasset is set to be used as a poster child of the RIAA’s unwinnable litigious battle against file-sharing and the need for proper reform in the area of digital music piracy.

Kappos and the wind of reform

Maybe the AmeriKat was less interested in intellectual property matters under the previous administration, or maybe there was in fact just less reform in the field, but she can’t help but notice a distinct wind of reform in the air. This has been highlighted by President Obama’s nomination of David Kappos to head the United States Patent and Trademark Office. Kappos, the Vice President and Assistant General Counsel at IBM, previously testified before the Senate Judiciary Committee that “excessive [patent] litigation threatens to sap America's innovative capacity and its ability to compete in the world if left unaddressed".

The AmeriKat urges readers to watch Kappos’s testimony and to also to take a look at IBM’s Intellectual Property Policy Statement, one of the better ones she has read. Not afraid of the prospect of reform, Kappos may be the energy needed in Washington to support the latest raft of much-needed intellectual property reforms.

The German Piratenpartei: a preliminary assessment

The IPKat, concerned at the rise of the political Pirate Movement within Europe, asked his friend and fellow blogger Axel Horns of IP:JUR fame if he could explain to the Kat's readers about the position in Germany, where there seems to be an increasing degree of pro-pirate sentiment. Axel has produced a full document on the subject, which you can read here. His executive summary is as follows:

"A process of getting rapidly politicised can currently be observed especially in the age group of 18 to 30 years old persons in Germany. We have not yet seen any high-profile lawsuit comparable to the Pirate Bay case in Sweden where big entertainment cartels fight against individuals sharing files or against maintainers of P2P infrastructure and helped the Piratpartiet getting their decisive boost for the European election. The incidents igniting this process in Germany were different.

While, between 1995 and 2008 the Internet was by and large and in general seen by the public in Germany (despite certain pitfalls like Internet fraud) more or less as cutting edge of positive innovation, the mood turned caustic in 2009. In traditional mass media, in particular in broadsheets, we saw some sort of Luddism 2.0 emerging. These fierce eruptions of anti-Internet phobia alone alienated many individuals in the above-identified age group and helped to bring the Piraten in Germany up to the share of 0.8 % as reached in the elections to the European Parliament.

However, some sort of Big Bang, which might perhaps later be seen as decisive in history, appeared on June 18, 2009, shortly after the European elections.
On April 22, 2009, the German cabinet under Chancellor Angela Merkel finalised a Draft Bill making Internet filtering mandatory. The reason given was to fight child pornography on the Internet. It took only until June 18, 2009, to push the Bill through all stages of Parliamentary processing. Even an expert hearing held in a Parliamentary committee resulting in very bad marks for the Bill as well as an Official on-line petition against that Bill hosted on the web server of the Bundestag, ending up by some 134.000+ supporters, could not stop the project.

Caused by that Bill, the time from April to June 2009 saw an hitherto unprecedenced kind of rising polarisation of the German public in two adversary camps: some of the proponents of the Bill argued in a populist manner, stressing the the Internet must not be a zone extraterritorial to the Law - pretending to know the Internet as of today being something that comes close to a lawless anarchist no-go area. One of the more important points for the castigators is that it appears to be easily possible to strengthen endeavours to take websites offering child pornography off the net instead of merely blocking access to them.

Regular monitoring of Internet publications in various blogs and on Twitter related to the Piratenpartei showed that the debate on and passing of the Bill by the German Bundestag had an instantaneous impact on driving many people, in particular former supporters of the Social Democratic Party, to the Piratenpartei in droves, driven by fears that civil liberties might be further curbed on the Internet.

If the main headaches of those politicised 'Digital Natives' in Germany are due to civil liberties endangered by the state, why does that have influence on Intellectual Property politics, too?

Today's Piraten are quite pragmatic people, and they tend to put their refusal of state surveillance in the same box as their frustration with, say, having paid for a DRM-protected music track but being unable to listen to it on all of the gadgets they own. And, those who work as software developers might be inclined to put some - at least as of today - widely theoretical threat of being sued on the basis of a software patent into just the same box. These kinds of problems are caused on a first level by private entities but, seen on a secondary level, the state gives those entities the powers of IP rights which are perceived as overbroad. Suddenly, things like DRM or software patents are categorised by Piratenpartei folks in the vicinity of civil liberties issues.

While, if measured by their political statements available on the Web, the Swedish Piratpartiet pushed by the Pirate Bay case clearly is a patent abolitionist party, the picture given by the German Piratenpartei is more fuzzy. Their programmatic statements concerning patent and copyright law appear to be pretty vague but in their tonality somewhere between censorious and openly hostile. If so desired politically, they might well be changed more abolitionist as well as evaluated in a more moderate direction.
Whoever defines himself as part of the new digital era, equipped with some sort of an own blog, a RSS feed aggregator, and with accounts on major social websites like Twitter, Facebook and the like will find it extremely easy to tune in on a broad flow of information concerning the Piratenpartei and their political issues and make contact with relevant people, if so desired. However, the profile of the entire matter in Germany's mainstream media is fairly low. Yes, now there is some media coverage, but in most cases merely on the inner pages of newspapers or in the late night hours on TV. If your daily life is not interwoven with the Internet, many of the issues involving the Piratenpartei might be quite invisible for you.

So, we in fact are witness of a new type of 'Digital Divide' which is not measured in terms of having access to broadband Internet or not. Being a DSL subscriber but in fact being limited to painstakingly operate the own email account due to lack of Internet savvyness does not put you on the right side of this new divide. And, let us face it, many IP experts and professionals effectively today are still on the wrong side of that divide.

Hence, a worst case scenario might see the Piraten clientele breed on some sort of IP aboli-tionist revolution without traditional IP circles even duly taking notice.
The German Piraten might well become the new Greens of the 21th century, and the system of Intellectual Property as we know it would then likely suffer heavy collateral damages".

Monday, 22 June 2009

A tricky European patent question

A friend of the IPKat has been pondering a particularly tricky question relating to European patent law, which has so far eluded a straightforward answer, even from the EPO. Any trade mark practitioners can look away now.

The question relates to what happens when an international application is objected to by the EPO acting as the international search authority (ISA) on grounds of lack of unity. Before the International Search Report (ISR) is established, the applicant is 'invited', under PCT Article 17(3)(a), to pay additional search fees to cover other inventions that have not been searched, giving a very tight one month deadline for paying the fee(s), under Rule 40.1. According to Annex D of the PCT Applicant's Guide, the EPO charges 1700 Euros for every search, which means that doing this can get very expensive for some applications.

Until last year, it didn't really matter whether any additional search fees were paid during the international stage, because extra searches could always be paid in the European regional phase. Following the implementation of Rule 164(2) EPC, however, this is no longer possible. Instead, it is now only possible to pursue inventions not searched during the international phase by filing a divisional application. Filing divisional applications at the EPO can also be a very expensive business.

The question is then what happens when an applicant is no longer interested in the invention searched by the ISA but wants to pursue another invention in the European regional phase that was not searched, and for which no additional search fees were paid. Is the applicant required to file a request to enter the European regional phase, meeting all the requirements of Rule 159 EPC for the claims he doesn't want, and then file a divisional application for the claims he does want? Is it possible instead to file the request for the parent application, but not pay any fees, and file the divisional before the fees become due? Is it possible just to file the European request as a divisional application and not bother with the parent? Or is there some other clever solution that has not been considered?

The IPKat does not have a clear answer, so would very much like to hear from any of his readers who might have ideas or, more preferably, who have done something in this situation that actually works. All contributions, preferably only by means of the comments facility so that all can obtain the benefit (anonymous/pseudonymous, if necessary), would be gratefully received.

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