From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 30 March 2017

The Unitary Patent and Unified Patent Court - where are we now?

Over the last few weeks, this moggy has been scampering between several conferences and events about Brexit and Intellectual Property, and the progress of the Unitary Patent and Unified Patent Court.  At other events, these topics have loomed over the proceedings.

Back in the days before it was announced that Tim Moss would be the new Chief Executive of the UK IPO and he was happily in charge of Companies House, CIPA held a seminar on "The UPC: Where we are and why".  Laura Starrs, head of the IPO's hastily re-convened UPC Task Force, set out what the UK needs to do before being able to formally ratify the UPC Agreement.  All of the legislation to implement the provisions of the UPC Agreement itself into UK law were complete long ago in the heady era before the fateful referendum of 23 June 2016.  The legislative basis was provided in the IP Act 2014, and the detailed provisions are enshrined in the snappily-named The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (analysed in painful detail by this Kat here), which was made on 12 March 2016.

It starts with the Isle of Man
It however remained to extend this legislation to the Isle of Man.  The Isle of Man is not part of the United Kingdom, but the Patents Act extends there, and apparently the Isle of Man wished to be included in the new system.  Laura Starrs was back in action at the MIP International Patent Forum on 8 and 9 March to inform this moggy that The Patents (Isle of Man) (Amendment) Order 2017 was made in Privy Council on 15th February (under the provisions of section 132(2) of the Patents Act 1977) and laid as a negative resolution of Parliament on 22 February (as required by section 124(2) of the Patents Act 1977), during which period either House of Parliament could in principle object (apparently by means of a "prayer").  Astute observers of the minutiae of UK constitutional matters will know that the Order must sit for 40 days, but it seems unlikely that anyone will object to this territorial extension.

But there is more to be done by the UK
More significant is the Protocol on Privileges and Immunities. This is required for the UPC to sit in London as an international organisation, and the Protocol was signed on 14 December 2016 in Brussels, shortly after Baroness Neville-Rolfe (the then IP Minister - the position is now occupied by Jo Johnson) announced at Competitiveness Council meeting that UK would proceed to ratify UPCA.  It was laid before Parliament on 20 January 2017.  21 sitting days (days when both Houses are sitting) are required before a treaty can be ratified, but this period has now passed.  The (then) only UKIP MP Douglas Carswell did put forward a motion that the Protocol on Privileges and Immunities not be ratified, but this attracted no support.

However, before the Protocol on Privileges and Immunities can be ratified, secondary legislation is needed in both the Westminster and Scottish Parliaments to give effect to the Protocol under both English and Scottish law.  This is apparently in draft and should be appearing soon.

The UPC Task Force is expecting ratification of the UPC Agreement in "Spring".  Rumours that it might be before the Article 50 notification was sent have turned out to be over-optimistic.

But what about Germany?
Germany has of course still not ratified either, and parliamentary consent to ratification is apparently hoped for in May 2017 (which would allow the provisional application of the UPC to begin, provided enough countries have signed the Protocol allowing provisional application of the Agreement by then, and so enable judges to be appointed and other preparations to be completed).  Germany has long been of the view that it should be the last to ratify the Agreement and so determine the timing of its coming into force (being the first day of the fourth month after the deposit of its instrument of ratification, provided the UK has already ratified by then).  The Preparatory Committee hopes that German ratification will occur in September 2017, allowing the sunrise period to begin (when opt-outs from the UPC jurisdiction can be filed), leading to the Court opening in December. Merpel always expects some slippage, so maybe early 2018 is more realistic for the Court opening.  That also sets the date for when unitary patents can be obtained - if the grant date is after the UPC Agreement comes into force, then unitary effect can be registered for a European patent.

There was a rumour that Germany might be seeking to delay ratification in order to include the UPC as an aspect of the Brexit negotiations, but Merpel has not been able to establish any serious basis for them.

But will anyone want to use it?
This is the crux of the matter.  At an event on Brexit and IP convened by IPAN, there was some doubt about the attractiveness of a new patent and litigation system whose membership was, from the very beginning, in doubt.  Those interested in the effect of Brexit on IP should look out for IPAN's forthcoming report: “IP, Brexit and beyond – a blue-print for action in IP”, which will be based on the event.  Similar concerns were voiced at the MIP International Patent Forum.

On the one hand, some voices, especially from industry, have criticised the Government for taking the UK into UPC/UP system without the question of continuing membership being resolved.  On the other hand it was argued that there was never going to be any guarantee of the situation post-Brexit, and the alternative would have been for the UK to be definitely out of the system, which nobody really wanted as an ultimate outcome.  The latter view accepts short term uncertainty for a chance of a better long-term result.

This Kat believes that there must be a very high degree of confidence that if the UK leaves the Unitary Patent system, there will be provided a mechanism by which existing unitary patents can revert to having national effect in the UK as an EP(UK).  Such a mechanism is actually easier to provide than to provide continuing protection in the UK after Brexit for EU trade marks and designs (the issues of which are admirably set out by CITMA) and plant variety rights (as this Kat is reminded to mention after the IPAN event).  For patents, it would only be necessary to provide that a Unitary Patent revert to the status it had, with respect to the UK, before the unitary effect was requested.  But with all the uncertainties inherent in a new system and a new court, is the additional certainty of what happens after Brexit one variable too far?  Will potential users simply decline to request unitary effect and opt out their patents?  For patentees with a significant presence in the UK, this may well be the case.  But readers are invited to give their own opinions.

If the UK is peripheral to the operations of a company, then the question of whether the UK is in or out of the scope of the unitary patent is simply the quantum of possible damage in an infringement action, so there must be at least some patentees who will not care much either way.  But will they be enough to get the system off to a reasonable start?  There will be likely at least a year of uncertainty between the UPC opening, and the question of the continuing participation of the UK being resolved.  If there are no enough users of the system, it may not be financially viable and then again its future would be open to doubt.  Here again, readers will doubtless have their views.

Wednesday, 29 March 2017

GS Media and its implications for the construction of the right of communication to the public within EU copyright architecture: a new article

Just a copyright-related research ...
In its 2016 decision in GS Media [Katposts here] the Court of Justice of the European Union (CJEU) sought to clarify under what conditions the provision of a link to a work protected by copyright made available on a third-party website (where it is freely accessible) without a licence from the relevant rightholder falls within the scope of the right of communication to the public within Article 3(1) of the InfoSoc Directive.

In its decision the CJEU held that whether linking to unlicensed content falls within or outside the scope of Article 3(1) of the InfoSoc Directive depends – crucially – on whether the link provider has a profit-making intention or knowledge of the unlicensed character of the work linked to.

In this new article that I have written and will be published in Common Market Law Review, I attempt to assess the implications of the GS Media decision: (1) in respect of linking, and - more generally - (2) the construction of the right of communication to the public.

My main conclusions are that:

1) GS Media imposes a re-consideration of what amounts to an act of communication to the public

GS Media marks a departure or, at least, signals a re-thinking of the understanding of the right of communication in the context of linking to copyright-protected content, as first provided in Svensson [Katposts here]

Mindful of the importance of links to the overall functioning of the internet, as well as the need to provide an appropriate balance of different interests, the CJEU attempted to mitigate the harsh consequences that a rigorous application of Svensson would have had. 

In doing so, the court vested criteria so far only sporadically considered, eg the profit-making intention of the defendant, with a central role. It also introduced an element that in most Member States’ is not present as far as primary liability for copyright infringement is concerned, ie the knowledge by the defendant of the unlicensed character of the content linked to. 

As far as the construction of the right of communication to the public in cases other than linking is concerned, similarly to Reha Training [here]GS Media regards the ‘indispensable intervention’ of the defendant as a central element: in doing so, the CJEU appeared to construe the notion of indispensability strictly.

2) Towards a relaxation of the GS Media notion of 'indispensable intervention'?

In their (post-GS Media) Opinions in Filmspeler [here] and Ziggo [here], AG Campos Sánchez-Bordona and AG Szpunar, respectively, proposed a broader construction of the notion of ‘indispensability’. 

While the impact of Filmspeler might be somewhat reduced by the highly specific factual context from which this CJEU reference originated (multimedia players with pre-installed hyperlinks to websites that, without the authorization of the copyright holder, offer unrestricted access to copyright-protected works, eg films, series and live programmes), the implications of Ziggo promise to be more far-reaching. 

If the CJEU followed its AGs in both cases (particularly in Ziggo), then the relevance of GS Media could be scaled down, both as far as the understanding of Article 3(1) is concerned and the type of defendants that might be regarded as committing acts of communication to the public. 

In this sense, not only users, but also online intermediaries – read: hosting providers – could be regarded as primarily liable for copyright infringement in relation to user-uploaded materials that infringe third-party rights, in line with the construction of Article 13 of the draft DSM Directive as proposed by the European Commission.

3) The next big question for the right of communication to the public is not just what amounts to an act of communication to the public but also determination of who makes it

Ultimately the discussion above suggests that the concept of ‘communication to the public’ has been undergoing an evolution. 

The next frontier for Article 3(1) of the InfoSoc Directive appears to be not just a determination of what amounts to an act of communication to the public, but also who makes an act of communication to the public. 

The latter in particular is the next question for the CJEU to tackle, and also poses significant – and not entirely worked out – challenges to EU policy- and law-making.

Preview of the new Danish trade secrets proposal

Opening the door for new legislation,
the EU Trade Secrets Directive may prove
to create a busy year for Member States
Dark clouds rolled into London today.  Plainly fitting given the news of the Article 50 trigger. So while a generation of stomachs continue to churn in the wake of an unplanned and, for her generation, unwanted exit from the EU, the AmeriKat turned to happier news from her European friends.  The IPKat's Danish friends Sture Rygaard and Emil Jurcenoks from Plesner report on the exciting new national trade secrets law that will come into effect following the EU Trade Secrets Directive.  Sture and Emil report:
"In Denmark, the EU Trade Secrets Directive which came into force on 5 July 2016 (as reported on the IPKat here), will be implemented in an entirely new and independent act on trade secrets. 
Although we have yet to see the proposal for the new act (which we cannot wait to get our paws on), the implementation of the directive
  • will introduce a legal definition of trade secrets (which does not exist in Denmark today);
  • is expected to improve the right holder's possibilities of being awarded damages in case of unlawful acquisition, use or disclosure of trade secrets, as it follows from Article 14 of the Directive that the court when setting damages should also be able to take into ac-count any unfair profits made by the infringer, which is not possible under the current rules (as opposed to damages for IP infringements governed by the IP Enforcement Directive);
  • is expected to lead to new, clearer rules concerning preservation of confidentiality of trade secrets in the course of legal proceedings. The present rules do not allow for a guarantee of confidentiality of trade secrets submitted in court proceedings and do not allow for limiting the access to trade secrets to a limited number of persons; and
  • may make it possible to obtain measures for preservation of evidence (search and seizure orders), if the right holder can render it probable that an unlawful acquisition, use and/or disclosure of trade secrets has occurred or will occur, which is today only possible in case of infringement of intellectual property rights (all Kats know that the difficulties connected with obtaining the necessary evidence are, in practice, one of the main reasons right holders often decide not to pursue misappropriation of trade secrets. During a meeting at the Patent and Trademark Office, these GuestKats therefore meowed that the office should consider to either extend the existing rules on preservation of evidence regarding intellectual property rights or adopt a similar set of rules, which the office promised to consider).
The proposal for the new act is supposed to be published just before or after the summer break, and the final act is expected to be adopted with effect as of 9 June 2018, i.e. the date of the deadline for implementation of the directive."
Like in the US, these are exciting times for trade secrets in Europe.  The AmeriKat will be back to report on other Member States efforts in implementing the EU Trade Secrets Directive.

WIPO's statistics for 2016: Asia continues to roar

Top FIVE PCT applicants 2016
In mid-March, the World Intellectual Property Organisation (WIPO) published its statistics for 2016 for filings under the Patent Cooperation Treaty (PCT).

Overall, applicants based in the United States maintained their number one ranking for the 39th year running, accounting for roughly a quarter (24.3%) of the 233,000 applications filed under the PCT in 2016 – itself a 7.3 percent year-on-year increase  – followed by applicants in Japan (19.4%) and China (18.5%), with the latter driving the overall growth in demand. If this current trend continues, China will overtake the U.S. within two years as the largest user of the PCT System. Germany and the Republic of Korea with 18,315 and 15,560 applications were ranked fourth and fifth, respectively (Annex 1).

In total, Asia accounted for 47.4% of total PCT applications, just short of the combined share of Europe (25.6%) and North America (25.3%).

Among the top 15 origins, China recorded extraordinary growth (+44.7%), while Italy (+9.3%), Israel (+9.1%), India (+8.3%) and the Netherlands (+8%) also saw strong growth rates. In contrast, Canada (-17.3%) – for the second consecutive year – saw a substantial decline in filings, linked to declining applications from RIM/Blackberry and Nortel.

ZTE Corporation (4,123 published PCT applications) and Huawei Technologies (3,692) –  occupied the top two spots in the list of top PCT applicants, with ZTE moving up two spots to push Huawei out of the leader position.

IPKat is adapting
Trade mark applications under the Madrid System also showed strong growth (+7.2%), again with China (+68%) as the fastest growing country of origin. L'Oréal, Glaxo Group and BMW are the biggest filers. China (with 22,314 designations), the European Union (21,526) and the U.S. (20,979) were the three most designated members in international Madrid applications.

Filings for design protection under the Hague System increased by no less than 13%. Germany with 3,917 designs was the largest user of the Hague System, followed by Switzerland (2,555). Fonkel Meubelmarketing of the Netherlands (953 designs) overtook Samsung Electronics of the Republic of Korea (862) as the largest user of the Hague System (if you never heard of Fonkel Meubelmarketing - me neither. They do not even have a website. It appears that they do business as Maxfurn). The Republic of Korea’s LG Electronics with 728 designs was in third position, followed by Swatch of Switzerland (383) and Procter & Gamble of the U.S. (348).

The EPO has released its annual report 2016 a while ago, see here for key figures. Beware of the "European patent filing" indicator, which grew by 6.2%. European patent applications (i.e. only including PCT applications that entered the regional phase) are down 0.4%. Philips is the largest filer before Huawei and Samsung. Granted patents are up a massive 40%.

Patent statistics are to be taken with a grain of salt. For starters, US companies appear to rely less on the PCT than Asian countries, so PCT statistics may not reflect their patenting activities. But the increase in Asian, specifically Chinese, filings shows from where the wind will be blowing. On the (domestic) Chinese patent boom see IPKat post here.

Wednesday Whimsies

RoboKat at your service
1. Introducing Robo Lawyer, was created by a real lawyer - Tomasz Zalewski and is programmed to help with qusetions about publishing hyperlinks on the Internet. In its own words “I know the EU law and the rulings of the Court of Justice of the EU, especially the ruling in the famous GS Media case.” You can ask Robo Lawyer copyright linking questions via Facebook.

2. Each year the EUIPO offers young graduates and professionals the opportunity to carry out a traineeship at EUIPO. The deadline for application this year is Friday 31 March. All the information can be found on the Office’s website here.

3. Solicitors qualified in England and Wales are invited to apply for three available vacancies on the IP Law Committee of the Law Society of England and Wales.  Current areas of work include the implications of Brexit for IP, including the Unified Patent, and the EU’s digital agenda, particularly copyright aspects. The Committee also looks forward to seeing the Bill on IP threats pass its final stages, an area in which the IPLC has long campaigned for reform. Details on how to apply can be found here.

4. Fancy a weekend in Glasgow mulling over Moral Rights and New Technologies Creativity and Authorship in a Digital World? This conference  takes place this weekend, Friday 31 Mar - Sunday 2 Apr 2017 at the University of Glasgow.

5. IP firm Awapatent has launched a shiny new digital hub: AWA Point where you can find even more IP stories, comments and blog posts.

6. The Competition Law Association is holding an event where Thomas Kramler, Nicholas Saunders and Stephen Wisking will speak on: “How should "geo-blocking" practices be assessed from a competition law and IP perspective in light of the European Commission's e-commerce sector inquiry and Paramount Studios commitments decision, and what are the proposals for reform?” The event takes place at the offices of Watson Farley & Williams LLP on Thursday 6 April.

7. The Jagiellonian University invites graduate, postgraduate law students and young professionals to the Kraków Intellectual Property Law Summer School 2017. The programme will take place from 11-16th September 2017.

Monday, 27 March 2017

Avoiding objections to claiming priority in Mexico: Standarized presentation of priority data

This Kat is always interested in following up on how national IP offices implement practice recommendations. Against this backdrop, Kat friend, Angélica Domínguez, from Dumont Bergman Bider & Co. in Mexico, has reported on an interesting development on the standardized presentation of priority data.

"On March 2011, the WIPO Handbook on Industrial Property Information and Documentation recommended to National and Regional Intellectual Property Offices to standardize the presentation of priority application numbers in order to identify each application received. The recommended standard would make it possible to link patent families in databases and search system and would thus make it easier for users of patent information as well as for Examiners during the examination process.

The recommendation consisted of standardized priority application numbers to be used for filing abroad under the Paris Convention as follows:
"The country code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, or

“The organization code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, wherein

XX: Two letters country/organization code

NNNNNNN: Serial Number in accordance with the worldwide application and priority format
Until several months ago, the Mexican Patent Office (MPO) had not acted on the WIPO recommendation for patent applications filed under the Paris Convention, with the result that the priority data listed in the national applications were accepted without regard to whether the WIPO recommended standard appeared on each certified copy of priority claimed submitted at the MPO. That meant that no objections or office actions were issued requesting that the priority data should correspond to the WIPO recommended standard.

However, since mid-2016, the MPO has embraced the standard outlined in the WIPO Handbook. As a result, several office actions have been issued requesting amendment of the priority data in accordance with the information disclosed in the priority document.

According to the MPO, the new practice will ensure that priority data contained in patent filings under Paris Convention comply with the WIPO standardization criteria with the resulting benefits as described above. The MPO requires that applications filed in 2016 and thus far in 2017 be amended to follow the WIPO recommended standard and applicants can expect an office action if the priority application number does not follow the standard.

In light of the above, applications filed in Mexico under the Paris Convention should keep these changes by MPO in mind."

No admission after the show has started - transfer of priority right must occur prior to filing of subsequent application (T 577/11)

According to Article 87(1) European Patent Convention, any person who has duly filed, in or for any state party to the Paris Convention or any member of the WTO, an application for a patent or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application (emphasis added). The reference to the "successor in title" in Article 87(1) EPC is generally interpreted as requiring a transfer of the right of priority before the filing of the subsequent application (T 205/14, Reason 3.4). 

In T 577/11 of 22 March 2017, Board of Appeal 3.2.05 confirmed this. Transfer of the priority date had undoubtedly taken place in this case, but three days after the filing of the subsequent application. The applicant argued that Article 87(1) EPC did not require that the transfer of the priority right had to occur prior to the filing of the subsequent application. The Board, based on the wording of Article 87(1) EPC and noting that its interpretation was in line with Article 4A(1) Paris Convention and the legislative history of both the relevant provisions of the Paris Convention and the EPC, rejected the appellant’s argument. The transfer had to had taken place by the time the subsequent application was filed. 

The Board notes that German case law considers the date the declaration of priority with the particulars relating to the priority application is filed – which can be done up to 16 months from the earliest priority date claimed (Rule 52(2)), and therefore up to four months after the filing of the subsequent application – as the relevant date (German Federal Patent Court, decision of 15 February 2012, 5 Ni 59/10 (EP), Reasons, point I.2, and decision of 28 October 2010, 11 W (pat) 14/09), Reasons, point II.B.2(a)(cc)). In the case at hand, Rule 52(2) was not applicable because the application that led to the patent was a PCT application. Under Rule 4.10(a) PCT, the declaration was to be made on filing the subsequent application, which it was. Nonetheless, the Board indicates that even if the present application had not been a PCT application, it did not consider the German approach convincing, as the filing of the declaration of priority was a “mere formality” that did not change the relevant date, which was the filing date of the application.

The decision does not come as a great surprise. There has long been a consensus that the transfer of a priority right must occur prior to the subsequent filing. However, given the careful reasoning and the amount of space the Board dedicates to the issue, T 577/11 may be considered the leading case on this for the coming years. The take-away for applicants and their representatives is that they better get those assignments signed prior to filing the subsequent application, or else the curtain falls on the priority claim.

Sunday, 26 March 2017

UK Industrial Strategy

IP is gr-r-reat!
As the policy wheels turn, the UK government is consulting on its industrial strategy. The strategy is the government's plan for developing innovation and encouraging economic growth.  The launch is just the start; what follows next is a whole host of consultations and discussions on how the plan will translate into practice.

IP, unsurprisingly, has a role to play.  There are multiple direct references to IP in the strategy:
  • A commitment to commission research on how institutions commercialise their IP, looking licensing and spin outs, and how practices vary between different institutions (institution here generally meaning universities) 
  • A commitment to reviewing how the IP system maximises incentives for collaboration and licensing
  • New IPO representatives in the the Northern Powerhouse and the Midlands Engine
  • The role of IP in innovative public procurement
  • The independent review in to the UK creative industries which will include the role of IPR
The strategy has popped up in multiple IP and research discussions in recent weeks.  A key theme has been that there remain key challenges in understanding how IP works in practice, such as commercialisation and licensing. The role of IP in university spin-outs is a long-standing problem; a problem that is perhaps dwarfed by the challenges of making such start-ups/spin-outs survive. There are also multiple criticisms that the Industrial Strategy Challenge Fund, which will launch with £270M to fund research on AI, robotics, nuclear energy, manufacturing and others, is noticeably lacking a human side.

Non-UK readers may curious as to the "Northern Powerhouse" and "Midlands Engine."  Every good economic spin needs a catchy name (see Asian Tigers, Celtic Tiger). [Merpel is very upset the UK monikers are no longer of the feline persuasion. She suggests instead the Northern Panther and Midlands Manx.] Northern Powerhouse refers to the economies of the North England cities of Manchester, Liverpool, Leeds, Sheffield and Newcastle; Midlands Engine is the economy of the area between the South of England and the North.  The focus on these areas is likely in recognition of the need to decentralise the UK economy away from London, although Scotland, North Ireland and Wales do not seem to have received the same treatment.

It is hard to view the strategy without considering the political context. The uncertainty surrounding Brexit, and its impact on labour and skills, in addition to pending questions on international trade agreements, mean that domestic innovation and industry are more important than ever.  Government investments and tax credits form part of industrial strategy and may be key in keeping and attracting multinational corporations.  It is too early to tell if the industrial strategy is anticipating direct Brexit implications on IP.

The call for responses to the consultation on the industrial strategy closes April 17th

Friday, 24 March 2017

"What is this thing called love, this funny thing called love"? And while you're at it, what is a covenant not to sue?

“…[W]hat is this thing called love, this funny thing called love”? (song by Cole Porter)

Some topics in IP attract more attention than they deserve, while others are underappreciated. Think about all the academic ink that has been spilled about genericism in trademarks; it seems that the more that is written, the less likely it is that genericism will be found. To the contrary is IP licensing. Most Kat readers can anecdotally confirm that IP licensing is wide-spread. However, there is a surprisingly thin corpus of commentary, with the result that certain licensing practices are, frankly, not well-understand.

A good example of the latter is the notion of “covenant not to sue” (also referred to as a “nonassertion agreement”). Again, anecdotally at least, it seems that a covenant not to sue is frequently used, especially in patent and trademark licensing. Notwithstanding, this Kat has not found a satisfactory way of defining, or at least describing, what the covenant is. “Come on Kat”, you might say, “the fault lies with you.” Perhaps. But this Kat would argue that the problem rests with the notion itself.

Focusing on patents, consider that the statutory treatment of licenses and licensing varies greatly. In the U.S., the subject is largely absent from the patent statute, with no real treatment of the differences between an exclusive and a non-exclusive license. By contrast, take a country like Israel, whose patent statute provides (at least a partial) definition of exclusive and non-exclusive licenses, with special attention to the right to sue. Here, as well, however, there is no statutory reference made to a covenant not to sue. Varieties of these two approaches can be found in most other jurisdictions; what seems common to all is that none provides a real definition of what is entailed in a covenant not to sue.

“Not so fast, Kat, there is a body of understanding about what is meant.” Let’s explore this claim. A useful book on patent licensing, at least under U.S. law, is Drafting Patent License Agreements, by Brian Brunsvold and others (now apparently published in its 8th edition). The lead paragraph on their brief treatment of the topic in the 6th edition (written by Brunsvold and Dennis O’Reilly) states as follows:
“A patent owner may contractually agree not to assert the patent. Such an agreement, interchangeably known as a nonassertion agreement or a covenant not to sue, is used where a nonexclusive license is in inappropriate or is to perceived have unacceptable consequences.

The grantor of a nonexclusive license impliedly represents possession of the power to grant the license and necessarily represents the power to impose the equivalent of a lien on the patent. Similarly, the grantor of a covenant not to sue will be presumed to have a right of action against the grantee at the time the covenant is granted. Since a patent application does not give its owner a right of action, a covenant not to sue cannot be granted until the patent issues. Notwithstanding a presumption that the grantor has a right of action, i.e., owns or had the right to enforce the patent, good practice suggests obtaining an express representation to that effect.

A covenant not to sue is a promise of the grantor that does not necessarily future owners of the patent. Thus, even where the grantor owns the patent at the time, the grantor may assign it to another who, absent a contractual provision, would not be bound by earlier covenants not to sue. The recipient of such a promise, therefore, should obtain an express representation of ownership by the grantor and should contractually require the grantor to impose the same promise on any future assignee of the patent” (footnotes omitted).
This Kat would suggest that the foregoing reflects a common understanding that a covenant not to sue differs from a non-exclusive license in that it is personal to the parties. A covenant not to sue does not represent that the grantor necessarily has good title or can enforce the patent against the grantee, nor does it bind successors to the patent. (As such, it reminds this Kat of a quitclaim deed in real property, where the grantor does not warrant that it has any rights in the property). So far, so good—if the parties want to bind themselves in this fashion, they should be allowed to do so.

What this Kat does not understand, however, is the suggestion by the authors that express representations be given by the grantor regarding ownership and assignment of the covenant. If these explicit assurances are contractually given, what is the difference between a non-exclusive license and a covenant to sue, whatever the caption? Consider the sample clause provided by the authors—
“Company A hereby covenants not to sue Company B under any patent listed in Exhibit A for infringement upon any act by Company B of manufacture, use, sale, offer for sale, or import that occurs after the effective date of this Agreement. Company A hereby represents that it owns full and equitable title to each patent listed in Exhibit A. Company A further promises to impose the covenant of this paragraph on any third party to whom Company A may assign a patent listed in Exhibit A.”
What makes this provision a covenant not to sue, as opposed to an alternative formulation of a grant of non-exclusive license? This Kat has no answer.

See also, “When is a licence not a licence? When it’s a covenant not to sue?”, IP Draughts, 26 January 2013, here.

Around the IP blogs

MARQUES Class 46 (trade marks)

See the information below received by MARQUES, which “will probably not affect the immediate workload of our practitioner readers, but it does relate to the general betterment of the intellectual property environment on a global basis for years to come” – it relates to the highly successful TMview online search and availability service and it reads like this:

OAPI TMview development visit at EUIPO 
Searching for some IP blogs!

Under the framework of the International Cooperation Service, a delegation of IT experts of the African Intellectual Property Organization (OAPI) visited the EUIPO from 13 to 24 February 2017. This visit aimed at planning its integration into TMview in the coming months. TMclass was already implemented and went live on 15 January 2015.

*April ETMR now published

The April 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices. 

The April issue contains three cases. Two are High Court rulings from England and Wales. One of these was an application by Jaguar Land Rover for summary judgment in an infringement action relating to the DEFENDER trade mark, in which alleged infringer unsuccessfully sought partial revocation on the basis of bad faith. The second was a passing off and trade mark action involving the once inauspicious word "Titanic".

The third case, from the Fifth Chamber of the General Court, has a familiar taste to it, being yet another stage in the battle over the Kit-Kat four-finger chocolate bar shape mark.

The 1709 Blog

“The US Supreme Court held on March 22, 2017 that a feature incorporated into the design of a useful article is eligible for copyright protection “if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The case is Star Athletica LLC v .Varsity Brands. Justice Thomas wrote the opinion of the Supreme Court.” -- See Marie-Andree Weiss’s case review here


Spain will not join the Unitary Patent system. That became clear during a session of the Spanish parliament (on March 22, 2017). Earlier this month, the parliamentary committee for economics, industry and competitiveness had approved a motion of the socialist party PSOE, requesting the government to reconsider joining the system. Only the Popular Party, which runs the minority government in Spain, voted against the motion. See the full report here

Photo courtesy of Guo Si-te.

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