The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 28 February 2007

Tony Blair says "no" to software patents

A little bird has helpfully pointed out to the IPKat that the Government has expressed an opinion on the subject of software patents, a subject that has recently been exercising the IPKat's various minds (for example in posts here, here, here and here).

Right: the little bird runs away in fear of being found out (photo taken in this Kat's garden last weekend)

A petition was started on the government's 10 Downing Street website by Richard Lightman, a professional (mildly dyslexic) computer programmer. The petition states:

"We the undersigned petition the Prime Minister to make software patents clearly unenforcible".
Further details were provided on what this meant:
"Software patents are used by convicted monopolists [Kat comment: could this perhaps be referring to Microsoft?] to threaten customers who consider using rival software. As a result, patents stifle innovation. Patents are supposed to increase the rate of innovation by publicising how inventions work. Reading a software patent gives no useful information for creating or improving software. All patents are writen in a sufficiently cryptic language to prevent them from being of any use. Once decoded, the patents turn out to be for something so obvious that programmers find them laughable. It is not funny because the cost of defending against nuicance lawsuites is huge. The UK patent office grants software patents against the letter and the spirit of the law. They do this by pretending that there is a difference between software and 'computer implemented inventions'. Some companies waste money on 'defensive patents'. These have no value against pure litigation companies and do not counter threats made directly to customers".
The explanation, as will be apparent to any informed reader, includes at least one misunderstanding or category error in each sentence, which is worrying but perhaps understandable since it was clearly written by someone with little or no knowledge of patent law. What is more worrying is that 2,215 people signed it before the petition closed on 20 February. The petition prompted the Prime Minister's Office to respond as follows:
"The Government remains committed to its policy that no patents should exist for inventions which make advances lying solely in the field of software. Although certain jurisdictions, such as the US, allow more liberal patenting of software-based inventions, these patents cannot be enforced in the UK.

The test used to discern between patentable and non-patentable subject matter in the UK has recently been clarified by the courts, and is applied rigorously by the Patent Office. Under this test, the true nature of the advance being claimed in a patent application must be determined, and if this advance lies solely in the field of software, or another non-technical field such as methods of doing business, the patent will not be granted. If the advance being made by an invention does lie in a technical field, it must also be non-obvious and sufficiently clearly described for the invention to be reproduced before a patent will be granted by the Patent Office.

The recently published Gowers Review of Intellectual Property, an independent review commissioned by the Government, recommended that patent rights should not be extended to cover pure software, business methods and genes. The Government will implement those recommendations for which it is responsible, and will therefore continue to exclude patents from areas where they may hinder innovation: including patents which are too broad, speculative, or obvious, or where the advance they make lies in an excluded area such as software".
The bold statement above is something of a surprise to this Kat, who thought that what counted was the technical contribution an invention made, not how it was implemented. One fair interpretation could be, giving the government the benefit of the doubt, that it simply restates the requirements of section 1(2) of the Patents Act. However, the statement does fit with the UK Patent Office's interpretation of recent case law, as extensively detailed elsewhere (see the linked IPKat pieces above, in particular this one).

This Kat wonders idly whether the Prime Minister's Office had anything to do with recent events surrounding the new, more rigid, approach to patentability of software-implemented inventions. The Gowers report, although cited in the response to the petition, didn't really have anything constructive to say about software patents. Was any pressure put on the Patent Office to clamp down on such inventions? The IPKat would like to know.

More petitions to sign here, here and here, but the IPKat begs you not to sign this one.

Secret press release scandal - Amanda Michaels in 'Appointed Person' revelation! Latest MIP

"This message is confidential and intended solely for the person to whom it is addressed". This is a funny rubric to read in an email containing a press release, but then it's a funny sort of world. The subject of the press release is the elevation of veteran trade mark lawyer Amanda Michaels to the exalted rank of Appointed Person:

"Hogarth Chambers is delighted to announce that Miss Amanda Michaels has been appointed by the Lord Chancellor as an Appointed Person under the Trade Marks Act 1994. The Appointed Person hears appeals from the Patent Office Trade Marks Registry in trade mark cases. There is no appeal from the decision of an Appointed Person.

Roger Wyand QC (joint Head of Chambers at Hogarth Chambers) said “I am absolutely delighted that Amanda has obtained this appointment. She is already a leading trade mark barrister and this will add yet another string to her bow.”
The IPKat wishes Amanda well and fervently hopes that she'll be controversial enough for all her rulings to feature on this blog. Merpel adds, I've never understood this metaphor: violins have strings, bows have hairs (and Kats have whiskers ...). Adding a string to the bow would surely make the violin sound a bit dodgy - or are we talking about something completely different?"

It took a long time for the February issue of near-monthly Managing Intellectual Property to arrive, weighed down as it was with a record-breaking (back-breaking?) 132 glossy pages.

Of particular interest in this issue is the "Best Patent Firms" survey, which now covers 65 jurisdictions and spans a massive 70 pages. The winners are categorised as 'patent contentious' and 'patent prosecution' respectively. There's also a smart, accessible piece by Brinsley Dresden (Lewis Silkin) on negotiating product placement deals and a notable acknowledgement in print of what people are increasingly starting to say to one another - that's Pillsbury's James Gatto's feature on whether the GPL is actually enforceable.

Full contents of whatever the current issue happens to be: here

SanDisk - in the wrong country?

How many people forget that Europe's Border Measures Regulation is potentially a powerful tool against not only small-scale counterfeiters and fakers but also against big-time possibly non-infringing competitors too? SanDisk Corporation v Koninklijke Philips Electronics and others [2007] EWHC 332 (Ch), an England and Wales Chancery Division of Mr Justice Pumfrey yesterday (posted today in full on BAILII) is a case in point.

Philips and others owned a number of MP3 patents licensed by Sisvel. Most MP3 makers were licensees of these patents. SanDisk, a US company, imported and sold MP3 players for which no Sisvel licences had been granted in the EU. SanDisk refused SanDisk's offer of a licence and instead applied to the Patents Court (England and Wales) for the revocation of five patents, four of which were said by Sisvel to be essential for anybody who wants to make and/or sell an MP3 player in the EU. SanDisk also started proceedings in March 2006 for declarations relating to essentiality and non-infringement. Philips and friends counterclaimed for infringement (the trial date is fixed for February 2008).

In retaliation, Sisvel sought and obtained Border Detention Orders under Regulation 1383/2003, the result being that all MP3 players except those originating with a manufacturer or destined for a consignee whose name appears upon a list will be detained at its point of entry to the EU for ten days, during which Sisvel can sue for patent infringement in order to prevent the goods detained being released and entering free circulation in the EU. These orders have resulted in pending proceedings for infringement against SanDisk in Germany and the Netherlands (non-border-related infringement proceedings are also outstanding in Germany and Italy). There were also some very embarrassing high-profile seizures of allegedly infringing SanDisk MP3s at trade fairs.

SanDisk maintained that Sisvel and the owners of the patents it administers had a dominant position which, it argued, was being abused by Sisvel's policy of harassment. This abuse being a wrong under Article 81 and 82 of the EC Treaty, interim injunctive relief against its enforcement activities was sought. Sisvel argued that there was no jurisdiction to grant interim relief in this sort of situation.

Mr Justice Pumfrey dismissed the action in no uncertain terms, holding that

"the only part of this dispute which could conceivably support the grant of interlocutory relief is unarguably bad. For this reason, and also because of the extraordinary delay which has already taken place both before the issue of this application and this hearing, I would in any event refuse any form of interim relief" (para.57).
The judge did not enthusiastically endorse the notion that English Courts even had jurisdiction, except in respect of claims and counterclaims involving UK patents:
“Sisvel is an Italian company, and the Patentees are registered respectively in the Netherlands, France, France and Germany. Accordingly, the question whether and in what circumstances the English court has jurisdiction is to be determined according to the provisions of … the Brussels Regulation. The basic rule … is that a defendant is to be sued in the courts of the Member State where that person is domiciled (Article 2). The exceptions provided for by Sections 2 to 7 of Chapter II of the Brussels Regulation constitute the only exceptions to this rule; and, so far as this case is concerned, the only relevant rule is the special jurisdiction conferred by Article 5. … Sisvel, …can … be sued in Italy, and there is little question that the Patentees could be joined to such proceedings under Article 6(1) which provides that a person domiciled in a Member State may also be sued, where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. Because none of the Defendants are domiciled in England and Wales (see Article 60), this possibility is not open to SanDisk in this jurisdiction, who must establish that a special jurisdiction is available”.
The fact that the patentees only licensed through Sisvel and did not negotiate licences invidividually could not be said to have damaged SanDisk in England and Wales:
”SanDisk is in fact trading in the UK with a very substantial proportion of the available market in MP3 players. On the assumption that it is legitimate to consider the damage arising in these unusual circumstances to arise from any general inhibition on trade within England and Wales caused by the fact that SanDisk does not enjoy a lawful licence, I cannot see where the damage accrues other than to SanDisk in Delaware. It follows, I think, that the first alleged abuse cannot, if established, give rise to jurisdiction under Article 5(3) in England and Wales”.
As for tying both essential and non-essential patents together,
"it seems … impossible to allege either that Sisvel insists upon including non-essential patents within the scope of the licence, or that the licence extends to MPEG-1 Video patents, or that the royalty rate for MP3-compliant memory cards is excessive”.

Two allegations of misuse of the patent system by Sisvel were given short shrift:

Right: the Border Terrier, specially trained to detect unlicensed MP3s at their point of entry to the EU

“ The first is a suggestion … that the Defendants have … widened the scope of the patent protection which they enjoy after their initial disclosure of the scope of their patents in the process of adoption of the MPEG-1 Audio Standard. This extension of scope is alleged to have been effected by certain divisional and sub-divisional patents. I believe all of these divisional and sub-divisional patents are sought to be revoked in the concurrent patent proceedings on the ground that they include "added matter", but the addition of matter to a disclosure is not the same thing as the extension of protection. Nonetheless, …I do not follow why this causes immediate loss to SanDisk in England and Wales. The best that can be said, I suppose, is that the royalty demanded might be lower if the patents did not form part of the licensing package, but it is not clearly explained why they are material if there is a real "blocking" patent remaining: after all, one blocking patent is sufficient.

The second category … complains that these patents were applied for, the Defendants knowing them to be potentially invalid. The result is said to be that the rights are wider than that which can be derived from the "legitimate scope of the initial patent disclosure" in order to prevent competition in the market for the licensing of patents essential to the manufacture, EEA sale and EEA importation of MP3 players. Again, accepting that within the scope of this plea is a contention in relation to the impact of the patents so obtained upon trade in MP3 players (and MP3-compliant memory cards) in England and Wales, I cannot discern any grounds upon which it may be said that immediate loss is suffered by SanDisk in the jurisdiction…”.
Was Sisvel’s use of the Border Measures Regulation an employment of "sham, vexatious and harassing legal and administrative actions"? In a word, no. It’s for IP owners to enforce their rights in the knowledge that the validity of those rights and the making of orders in respect of them can be challenged at any time. The judge added:
”Assuming that it is possible to invoke these administrative actions in an abusive manner, as for example by relying upon a patent positively known to be invalid, the damage resulting from the abuse itself is plainly suffered in the Member State in which the Border Detention Order has been effected. There is no Border Detention Order in the United Kingdom. Assuming that the allegations made in the Particulars of Claim are wide enough to include the contention that the Border Detention Orders have been employed in the countries where such an order has been obtained without any belief in the validity of the underlying patent rights, and with a view to consolidating the dominant position enjoyed by Sisvel and/or the Patentees in the licensing market, the position still appears to me to be that no immediate loss is suffered by SanDisk in the United Kingdom. The effect of exercise of these orders is, however, that infringement actions are on foot in Germany and the Netherlands. Plainly, the initial stages of the tort or delict of which complaint is made took place in the jurisdictions where the Border Detention Orders were obtained”
There’s more in the judgment than is covered in this posting, as the IPKat is the first to concede—and it’s a fertile field for study of the interface of IP enforcement with EU and UK competition law; particularly good is the bottom line that the pursuit of IP enforcement through normal legal means against a large, rich and successful company is not easily going to be characterised as an infraction of the no ganging-up rules of Article 81 and no bullying under Article 82.

Merpel says, did you spot the judge’s rueful comment on the recent ECJ rulings on cross-border litigation in Europe? He said:
”While all the patents in question derive from the same European patent applications, it is a consequence of the way in which European patent applications mature into domestic patents in the designated contracting states that enforcement has regrettably to be undertaken state by state. Nor is it possible to litigate infringement for all designated states in one only of them: if validity is or will come into issue, it is now settled that the only available manner of enforcement is on a country-by-country basis – see Case C-4/03 GAT v LUK [2006] FSR 45 and Case C-539/03 Roche v. Primus [2007] FSR 5. The consequence of these cases is that if a patentee possessing a bundle of European patents granted upon a single European patent application wishes to enforce them, it must do so on a state-by-state basis. So, not only do I not consider that there is arguably an abuse in such a manner of proceeding, but any loss caused by enforcement in this matter equally affects SanDisk on a state-by-state basis, and, as I understand it, no complaint is made of the various proceedings in England and Wales”.
Excellent book on the Border Measures Regulation here … with its own website here

Another setback for Amazon 1-click have suffered another setback in their struggle with the European Patent Office to get a European patent granted for their 'one-click' internet shopping invention (some history and commentary on the subject here and here).

Right: One click and they're yours

The original US application was granted as US5960411 back in September 1999, but Amazon have failed as yet to get anything similar granted at the EPO.

The original EP application (published as EP0902381) didn't seem to be getting anywhere, so Amazon decided to file a divisional application from this and then withdrew the original (which they were entitled to do). Effectively Amazon were relying on being able to keep the application pending for as long as possible, there being a faint possibility that their chances might improve in the future as more favourable caselaw developed in Europe. They also neatly sidestepped the issue of oral proceedings, scheduled to address the apparent failings of the application, which were automatically cancelled when the application was withdrawn. This was back in 2001.

Since then, the divisional application EP01113935.9 has slowly trundled through the same examining process, finally resulting in refusal after oral proceedings before the examining division, the minutes for which were published recently. One of the EPO's arguments against the application was that it was an "abuse of process" under Article 125 EPC. This did not, however, get very far in the proceedings, since the EPO did not follow the argument through with any enthusiasm, and merely stated that is was a "general principle that abuse of proceedings are not to be accepted", referring to the Spanish civil code, without coming to any conclusion.

As expected, Amazon lost anyway on more conventional grounds, the examining division deciding that they couldn't see any features in the various alternative requests submitted that provided a technical solution to a technical problem, the standard EPO test for assessing inventive step.

It seems inevitable that Amazon will appeal the decision, having gone this far (and presumably having spent a good deal of money). We could be waiting a little while longer though for any appeal to be heard and decided.

Merpel thinks that, the way things are going, both Amazon and the EPO are in danger of stirring up apathy in the whole process of getting European patents. If they could only speed things up and get this one-click thing over one way or another we could all move on to more interesting things.

More things to do with one click here, here and here.

WIPO development agenda crystallises

Whatever the WIPO Development Agenda is, significant headway is being made in achieving it, if WIPO's Press Release PR/478/2007, issued on 26 February 2007, is anything to go by.

Right: Castles in the Air? Or is WIPO building something of genuine substance? (this remarkable tapestry, and others, are available from Stef and Anna Francis)

The juicy bits of the communique run as follows:

"... Negotiators from 105 countries ... agreed on a first set of recommendations, which will be a part of the final list of agreed proposals to be recommended for action to the WIPO General Assembly in September 2007 ... The first set of recommendations pertain to WIPO’s work in the areas of technical assistance and capacity building; norm‑setting, flexibilities, public policy and public domain; technology transfer, information and communication technologies (ICT) and access to knowledge; assessment, evaluation and impact studies; institutional matters including mandate and governance and certain other issues. ...

... The delegations expressed their views on the proposals listed in the various clusters. ...


1. WIPO technical assistance shall be, inter alia, development-oriented, demand-driven and transparent, taking into account the priorities and the special needs of developing countries, especially LDCs, as well as the different levels of development of Member States and activities should include time frames for completion. In this regard, design, delivery mechanisms and evaluation processes of technical assistance programs should be country specific.

2. Provide additional assistance to WIPO through donor funding, and establish Trust-Funds or other voluntary funds within WIPO specifically for LDCs, while continuing to accord high priority to finance activities in Africa through budgetary and extra‑budgetary resources, to promote, inter alia, the legal, commercial, cultural, and economic exploitation of intellectual property in these countries.

3. Increase human and financial allocation for technical assistance programs in WIPO for promoting a, inter alia, development-oriented IP culture, with an emphasis on introducing intellectual property at different academic levels and on generating greater public awareness on IP.

4. Place particular emphasis on the needs of SMEs and institutions dealing with scientific research and cultural industries and assist Member States, at their request, in setting-up appropriate national strategies in the field of IP.

5. WIPO shall display general information on all technical assistance activities on its website, and shall provide, on request from Member States, details of specific activities, with the consent of the Member State(s) and other recipients concerned, for which the activity was implemented.

6. WIPO’s technical assistance staff and consultants shall continue to be neutral and accountable, by paying particular attention to the existing Code of Ethics, and by avoiding potential conflicts of interest. WIPO shall draw up and make widely known to the Member States a roster of consultants for technical assistance available with WIPO.

Right: WIPO is rightly famed for its almost magical technical assistance ...

7. Promote measures that will help countries deal with IP related anti-competitive practices, by providing technical cooperation to developing countries, especially LDCs, at their request, in order to better understand the interface between intellectual property rights and competition policies.

8. Request WIPO to develop agreements with research institutions and with private enterprises with a view to facilitating the national offices of developing countries, especially LDCs, as well as their regional and sub- regional IP organizations to access specialized databases for the purposes of patent searches.

9. Request WIPO to create, in coordination with Member States, a database to match specific IP-related development needs with available resources, thereby expanding the scope of its technical assistance programs, aimed at bridging the digital divide.

CLUSTER B: Norm‑setting, flexibilities, public policy and public domain

10. Norm-setting activities shall

be inclusive and member driven;
take into account different levels of development;
take into consideration a balance between costs and benefits;
be a participatory process, which takes into consideration the interests and priorities of all WIPO Member States and the viewpoints of other stakeholders, including accredited inter-governmental organizations and non-governmental organizations; and
be in line with the principle of neutrality of the WIPO Secretariat.
11. Consider the preservation of the public domain within WIPO’s normative processes and deepen the analysis of the implications and benefits of a rich and accessible public domain.

CLUSTER C: Technology Transfer, Information and Communication Technologies (ICT) and Access to Knowledge

    Left: a simple way to bridge the digital divide

    12. To request WIPO, within its mandate, to expand the scope of its activities aimed at bridging the digital divide, in accordance with the outcomes of the World Summit on the Information Society (WSIS) also taking into account the significance of the Digital Solidarity Fund (DSF).

    13. To explore IP-related policies and initiatives necessary to promote the transfer and dissemination of technology, to the benefit of developing countries and to take appropriate measures to enable developing countries to fully understand and benefit from different provisions, pertaining to flexibilities provided for in international agreements, as appropriate.

    14. To encourage Member States, especially developed countries, to urge their research and scientific institutions to enhance cooperation and exchange with research and development institutions in developing countries, especially LDCs.

    15. Facilitating IP-related aspects of ICT for growth and development: Provide for, in an appropriate WIPO body, discussions focused on the importance of IP-related aspects of ICT, and its role in economic and cultural development, with specific attention focused on assisting Member States to identify practical IP-related strategies to use ICT for economic, social and cultural development.

    16. To explore supportive IP-related policies and measures Member States, especially developed countries, could adopt for promoting transfer and dissemination of technology to developing countries.

    CLUSTER D: Assessment, Evaluation and Impact Studies

    17. To request WIPO to develop an effective yearly review and evaluation mechanism for the assessment of all its development-oriented activities, including those related to technical assistance, establishing for that purpose specific indicators and benchmarks, where appropriate.

    Right: David Salle's ingenious pigeon-proof design - a sure way of avoiding benchmarks

    18. With a view to assisting Member States in creating substantial national programs, to request WIPO to conduct a study on constraints to intellectual property protection in the informal economy, including the tangible costs and benefits of IP protection in particular in relation to generation of employment.

    19. To request WIPO to undertake, upon request of Member States, new studies to assess the economic, social and cultural impact of the use of intellectual property systems in these States.

    CLUSTER E: Institutional Matters including Mandate and Governance

    20. To request WIPO, within its core competence and mission, to assist developing countries, especially African countries, in cooperation with relevant international organizations, by conducting studies on brain drain and make recommendations accordingly.

    21. To request WIPO to intensify its cooperation on IP related issues with UN agencies, according to Member States’ orientation, in particular UNCTAD, UNESCO, WHO, UNIDO, UNEP,and other relevant international organizations, especially WTO in order to strengthen the coordination for maximum efficiency in undertaking development programs

    22. To conduct a review of current WIPO technical assistance activities in the area of cooperation and development

    23. To enhance measures that ensure wide participation of civil society at large in WIPO activities in accordance with its criteria regarding NGO acceptance and accreditation, keeping the issue under review.

    CLUSTER F: Other Issues

    24. To approach intellectual property enforcement in the context of broader societal interests and especially development‑oriented concerns, with a view that “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations”, in accordance with Article 7 of the TRIPs Agreement".

    Setting aside his usual grumpy resentment and scepticism about things that weren't actually his own idea, the IPKat has to concede that the future looks bright if WIPO has the will to adopt this agenda and the resolve to carry it through - though he would have liked to see something specific about WIPO playing a more active role vis-a-vis UNCITRAL, whose interest in IP as collateral may interfere with some aspects of the development agenda.

    Merpel says, are you sure you've read it? Doesn't point 24 mean "When you make all IP available through compulsory licensing, don't forget to pay lip-service to the payment of some token royalty?"

    Tuesday, 27 February 2007

    Trade mark decision very very frightening

    The IPKat has come across a victory for the rock group Queen before the Trade Marks Registry. Julia Ruhnke made a Madrid Protocol application to register the term QUEEN FOR A DAY for clothing. The surviving members of the rock group Queen opposed the application based, inter alia, on their registration of the word QUEEN for the same goods.

    Since the goods were identical, the issue came down to whether there was a likelihood of confusion taking the similarity between the marks into account.

    Yes, there was, said Mr Hearing Officer Reynolds. Although the number of words in the two marks was different, there was a strong conceptual link between them. QUEEN, when used on clothing, would be viewed as referring to the concept of a female monarch, which would be fanciful in relation to clothing. QUEEN FOR A DAY contained a conceptual difference, as it suggested how the wearer would feel when donning the clothes but (hold on to your hats folks), this conceptual difference actually enhanced the degree of similarity between the two marks because it reinforced the connection with royalty by suggesting that the lucky lady wearer would feel like a female sovereign.

    Perhaps surprisingly for Bohemian Rhapsody fans, the evidence did not establish that the QUEEN mark had acquired distinctiveness through use for clothing. Although it was undoubtedly the name of a famous band, this did not mean it had acquired any sort of secondary meaning in relation to clothing. Ironically, the IPKat points out, this probably helped the band, as it left the word QUEEN meaning only female monarch, which set up the audacious conceptual (dis)similarity trickshot described in the previous paragraph.

    The IPKat notes that once again, the issue of trade mark use is rearing its ugly head. Queen is undoubtedly a well-known band, and bands undoubtedly often produce merchandise, such as t-shirts, but they are (according to the Registry) not viewed as the source of that merchandise by consumers. This kind of reasoning could, in theory, put such marks at risk of revocation for non-use, so Queen was quite lucky that its name has an alternate meaning. However, the IPKat isn’t happy that this alternate meaning seems to give the band a wide scope of protection over what’s close to a laudatory term.

    Copying Without Infringing

    The Copying Without Infringing conference competition closes next Monday. This leaves less than a week for budding entrants to compose the (potentially) winning slogan. The prize is complimentary admission to an all-star programme, with the allure of a delicious lunch (genuinely free, in as much as CLT pays for it) and the chance to pick up some great strategic tips on how to stay within the law when making use of IP. The conference takes place on Tuesday 13 March, in the Cafe Royal, London. IPKat team blogger Jeremy is in the chair.

    Programme and booking details here
    Full details of the competition here

    Taking the P - or just a passing Phase?

    In his excitement to blog all things bright and beautiful last week, the IPKat overlooked Microsoft Corporation v P4 Com Ltd and another, a Chancery Division decision of Mr Justice Rimer last Wednesday. This case is not yet on BAILII but was picked up by LexisNexis Butterworths' subscription sevice.

    Above right: infringing, or merely asleep?

    Essentially, the second defendant was the sole shareholder in and director of a the first defendant company, P4 Com, until February 2004. Following litigation in which Microsoft sued various third parties for IP infringement, Microsoft alleged passing off, trade mark and copyright infringement against the defendants, basing its claims on invoices that had been unearthed during the third party litigation. According to those invoices, the third parties had supplied an entity called Phase 4 with what was described as Microsoft software, at prices that were "too good to be true", between April 2002 and June 2003. According to Microsoft the natural inference to be drawn was that the defendants had resold the offending software, thereby committing the alleged acts of infringement.

    In pre-trial correspondence between the parties both sides appeared to assume that it was P4 Com who had been trading in the allegedly infringing software products. But after Microsoft served its particulars of claim alleging that at P4 Com had carried out the acts complained of, under the direction of the second defendant, the defendants said that, during the period in question, P4 Com was dormant, it being the second defendant who was operating as a sole trader under the name Phase 4.

    Below: when sleep brings relief

    Not content with this, the defendants served their defence and counterclaim, denying any allegation of infringement and seeking relief against Microsoft for making a groundless threat to sue a dormant company for trade mark infringement. In support of its contention P4 Com adduced evidence of its Companies House filing history and the fact that its accounts had been returned on the basis that it was a dormant company. Bank statements showing that the second defendant had traded as Phase 4 during the relevant period were also served.

    Somewhat discomfited, Microsoft pointed out that the home address of the second defendant was the same as the registered address of P4 Com, as well as internet evidence that suggested that the defendants were trading as Phase 4 during the operative time. The first defendant subsequently sought summary judgment on its s 21 counterclaim. This did not deter the defendants from applying for summary judgment on their threats counterclaim on the ground that there was no reasonable prospect of Microsoft defending it. Microsoft disagreed: there was a clash of evidence here that demanded proper investigation, including disclosure and cross-examination.

    Agreeing with Microsoft, Rimer J dismissed the application for summary judgment. Since the real evidence as to whether the defendants had traded as Phase 4 or not during the relevant period was largely in the hands of the defendants, the process of disclosure and cross-examination had the potential to reveal all. This was not therefore a case that was ripe for swift determination by summary judgment.

    The IPKat thinks this was a bit of wishful thinking on P4 Com's part and a chance to grab the moral high-ground against which to withstand the tidal wave of Microsoft's infringement claims. But that's not to say that they won't succeed at trial if Microsoft can't pin Phase 4's trading on to the defendants on a balance of probabilities. Merpel says, I was just wondering .. if the defendants can be shown to have been infringing only outside the time P4 Com was dormant, what sort of view would the court take of damages?

    More on threats provisions here
    Dormant companies here
    Nessun Dorma here (for those readers who never imagined that Pavarotti was slender enough to fit into a YouTube)

    Malta to join EPC

    Malta will become the 32nd state to join the European Patent Convention on Thursday (1 March), as reported here.

    The IPKat welcomes this new member to the European patent club, and wonders what took it so long.

    Latest JIPLP; trade mark classification - it's OHIM v UK

    Frosty February might be almost over, and March virtually upon us, but the February issue of the Oxford University Press Journal of Intellectual Property Law and Practice (JIPLP) was determined not to be published until there was at least a prospect of warmer weather. Among the features published in this issue are

    * "Deceit and immorality in trade mark matters: does it pay to be bad?", by OHIM Board of Appeal member Gordon Humphreys;

    * "Sui generis database protection: a new start for the UK and Ireland?" by Irish scholar, sage and legal consultant Robert Clark;

    * A note on the new US trade mark dilution statute by John L. Welch (of TTABlog fame) and Ann Lamport Hammitte (Lowrie Lando & Anastasi).
    Full contents of this issue here
    Free sample print and online issues here
    Details of JIPLP for authors, subscribers and publishers seeking a review
    To read the Editorial of this issue ("Bringin eBay into line", on the threats posed to IP owners by online auction sites and what can be done about them) and all previous issues click here

    International trade mark classification is another topic that features in the February issue of JIPLP, where trade mark attorney Richard Ashmead, left (Kilburn & Strode) writes on the dissonance between the OHIM and British approaches towards describing and classifying goods in particular classes. The abstract of Richard's article reads, in relevant part:
    "The UK Trade Marks Registry and ... OHIM have issued conflicting official guidance notes on the meaning of International Classification class headings in trade mark applications and registrations: OHIM says that a class heading is equivalent to ‘All goods/services in class XX’, and the UK Registry that a class heading is merely an exemplary list of the sort of goods which fall in that class.

    OHIM's view introduces an extra-regulatory concept of goods/services ‘directly related’ to those as registered and gives them rights as if identical thereto.

    These conflicting views lead to the prospect of otherwise identical UK (and other EU national registrations) and Community trade Mmrk registrations having differing scopes of protection, contrary to the intention of the EU Harmonisation Directive to remove disparities in legal provisions that may impede the free movement of goods or distort competition. The OHIM view gives a registration protection for items not described in its list of goods/services, invisible unless you know the secret code and with nothing to warn the businessman or other non-specialist reader that that is the case".
    This article has been available online for a few weeks and has attracted some comments. According to Senior British trade mark practitioner Richard Abnett (Reddie & Grose), below right:
    "I don't understand why OHIM still adopts this view when they have more money than they know what to do with, so translation costs are not a problem. I suspect that there is EC pressure to reduce the translation required because they are tying up too much of the facility - I can see no other reason.

    There are interesting issues over what happens when the classification is changed (i) when the change includes a change to the class heading, and (ii) when it does not".
    Keith Farwell (Phillips & Leigh), below, adds:
    "I was taught (by patent agents) that a specification of goods should say what it means and mean what it says. It should be broad without being covetous. The present OHIM & WIPO class heading approach is a menace, not least because it makes searching so difficult.

    Personally, I would go towards a US approach of specificity and particularity of wares.

    The real devil is in the detail of the Altechnic decision [2002] ... If I want coverage for valves, I most certainly don’t want some wretched Registry clerk restricting my infringement rights to “valves in class 07” ...".
    The IPKat feels that, at the very least, there is a serious issue to discuss and he very much hopes that Richard's article will provoke some much-needed thought on the subject. Merpel agrees: she feels very uncomfortable at the thought that the extent of protection given to a trader who is investing in a business is likely to be narrowed through a bureaucratic decision that bears no necessary relationship to business reality.

    Monday, 26 February 2007

    Wizards and Fake Scots

    India finds eBay (temporarily) liable

    The Times reports that JK Rowling has won an injunction against eBay in relation to the sale of unauthorised copies of her Harry Potter novels. The interim injunction was awarded by the High Court in Delhi and is in place until the hearing resumes on 23 May. At issue are Harry Potter ebooks – Rowling has never authorised the conversion of her novels into ebooks.

    Rowling’s lawyer argues:

    “In Indian copyright law, if the premises of a person is being used for an infringing activity, that person would be liable for that activity…The market is not immune from liability.”
    The IPKat says that this decision puts eBay in a difficult position. Policing a system like eBay for every infringing item put up for sale is seemingly an impossible task.

    Check mate?

    CBC and MaineToday report that a couple from Maine have sued US retailer LL Bean over copyright in a tartan. The tartan was designed in 1964 to represent the state of Maine, but the couple allege that they acquired the rights to it in 1993 and have been manufacturing tartan to the design in 1964. LL Bean has used the tartan for its Americana Tartan Shirt. Said a spokeswoman:
    "L.L. Bean holds that tartan was intended as a symbol of the state of Maine, which places it in the public domain to be used by the government to promote Maine in a positive manner," she said. "It was in this spirit that L.L. Bean included the Maine State Tartan in our Americana Tartan Series."
    The IPKat says that the idea that anything commissioned by a state authority to promote it is in the public domain is a new one on him. Aside from anything else, it would do considerable violence to Art.6ter of the Paris Convention.

    All's fair ... in trade?

    The IPKat has become increasingly curious about the FAIRTRADE trade mark. Visiting the Fairtrade Foundation's website, he has learned that

    "The FAIRTRADE Mark is an independent consumer label which appears on products as an independent guarantee that disadvantaged producers in the developing world are getting a better deal.

    For a product to display the FAIRTRADE Mark it must meet international Fairtrade standards. These standards are set by the international certification body Fairtrade Labelling Organisations International (FLO).

    Producer organisations that supply Fairtrade products are inspected and certified by FLO. They receive a minimum price that covers the cost of sustainable production and an extra premium that is invested in social or economic development projects".
    This is most commendable, except that the IPKat has noticed that there seem to be quite a few Fairtrades around. Is there a cottage industry in fair trade licensing? And what happens if a prospective licensee, refused "fair" status, incorporates the words "fair" and "trade" within his trade mark or trade name? Is anyone actively researching into the legal and commercial implications of fair trade certification? The IPKat would love to know. Merpel, ever the cynic, can't help wondering if there isn't some dreadful gain to be made from the certification of unfair trade too ...

    More on fair trade here and here
    Unfair trade here

    Sunday, 25 February 2007

    Recent publications

    To the IPKat's interest and surprise, an unsolicited copy of issue 16 (February 2007) of China Intellectual Property (subtitled Comprehensive IP report on China) has just reached him. Published by Hurrymedia, this handsomely-produced magazine contains features both in Chinese and in English.

    Right: the current issue is not yet illustrated on the website - but this is what an earlier issue looks like

    According to the publishers' website,

    "Hurrymedia’s flag ship publication, China IP, has set the new standard for all the other legal publications in China. Our editorial coverage, led by a team of some of China’s finest writers and legal experts is already very well respected by people within both the legal and business fields.

    The issues concerning the Chinese Intellectual property sector cover a wide and diverse spectrum. The publication is designed to meet the ever-growing demand for up to date information regarding the increasing number of international IP law firms within the Chinese market. Another key role it has is to promote the reputation of international clients in China and Chinese firms abroad.

    Given our extensive reach, over 50,000 copies are distributed to various organizations both locally and internationally. Our reputation amongst even the most prestigious international legal firms has grown so we anticipate that both our circulation figures and exposure levels will grow through time".
    Left: This year is the Chinese Year of the Pig, a sign of prosperity - but will IP owners prosper too?

    Features in this issue include an interview with Thomas Pattloch (IP Officer with the European Commission) and a special report on "trade mark proximity", this being a case study with views from the perspectives of various parties and persons involved. The IPKat feels that the message conveyed in this issue is the usual one - things in China are bad from the point of view of IP enforcement, but they're improving because (i) the law is better than it was before, (ii) practitioners and enforcement agencies are more aware of the issues, (iii) the judiciary is better-equipped to handle IP disputes and (iv) the Chinese are conscious of the need to conform to international standards. The tone of China IP is a strongly positive one, too. Merpel adds, if you have difficulty memorising Chinese characters, you'll find the bits on similarity of trade marks tough to follow.

    Less of a surprise was the arrival of the March 2007 issue of Informa's 10-times a year Patent World. This issue leads with a cogent little piece by veteran US patent commentator Kenneth R. Adamo and his colleague Susan M. Gerber (Jones Day) on the manner in which the US Supreme Court has increasingly continued to shape the development of the US patent system. There's also a slightly startling piece by doctoral candidate Ronald Ker-Wei Yu on whether Hong Kong ought to adopt the doctrine of equivalents, with special attention to the biotech sector: the IPKat had forgotten how spoilt for case law countries like the US and the UK are, and how much there is still to play for in jurisdictions where key questions remain de facto or de jure open to argument.

    Full contents of this issue here

    Friday, 23 February 2007

    Friday frivolities

    World Intellectual Property Day: WIPO has finally spoken, sending out a letter to a select group of recipients which reads, in relevant part:

    "... WIPO will observe World Intellectual Property Day on 26 April 2007. The theme of this year’s celebrations is “Encouraging Creativity”. ...

    As in past years, a summary of the activities organized to celebrate World Intellectual Property Day will be published on the WIPO website. This year, WIPO plans to create a web-gallery displaying a selection of World Intellectual Property Day posters prepared by Member State offices and other organizations. I would encourage you to send us your posters and the details of your activities as early as possible by post or by e-mail (".
    The letter is signed by Geoffrey Onyeama (Assistant Director General, Coordination Sector for External Relations, Industry, Communications and Public Outreach).

    Meanwhile, if you are in the Liverpool, Nottingham, Edinburgh, Dublin or Bishop's Stortford areas and are looking for some like-minded IP enthusiasts to mark this day with on 26 April - or if you are based somewhere else but would like to host or get involved in a WIP Day event - email the IPKat here and he'll forward your contact details or try to find other people to join you. London details are being masterminded by the Intellectual Property Institute with help from various friends. Details to follow.

    British Prime Minister Tony Blair has suddenly got really keen on online petitions to 10 Downing Street. They are a great way of testing the opinions of the electorate and provide the dubious comfort that, if only two million out of a population of sixty million people take the trouble to sign an online petition, the other fifty-eight million must be blissfully happy with the status quo. The IPKat's friend James Heath (News International) has drawn his attention to a petition to No.10 that looked as though it was driven by copyright concerns: a petition to oppose moves to restrict the right of the public to take photographs in public places. Could this be a ploy by the Royal Institute of British Architects the stop the making of unlicensed two-dimensional reproductions of modern English buildings? Fortunately this was not the case. IP rights are not at stake here, just civil liberties. As the petition reads:
    "There are a number of moves promoting the requirement of 'ID' cards to allow photographers to operate in a public place. It is a fundamental right of a UK citizen to use a camera in a public place, indeed there is no right to privacy when in a public place. These moves have developed from paranoia and only promote suspicion towards genuine people following their hobby or profession" (petition submitted by Simon Taylor of Deadline to sign up by: 14 August 2007).

    If you are a British law blogger, put a marker down for a get-together on Friday 18 May. The IPKat's colleague Geeklawyer is organising a one-day conference at which people who compose and maintain legal weblogs can get together, exchange news and views, do some serious networking and discuss matters of mutual interest.

    Right: many British law bloggers have a self-image that is not matched by the reality ...

    Details will appear here when they are fully crystallised. Meanwhile, the following facts can be safely disclosed:
    * speakers and programme are not yet finalised, but IPKat co-blogger Jeremy and the TechnoLlama will be among them, plus Charon QC, Dan Hull from the United States, Geeklawyer and Ruthie;

    * The conference is aimed at existing legal bloggers who wish to discuss experiences with and share tips with fellow bloggers; at the same time we will be addressing talks to the curious potential bloggers who may wish to know the technology, techniques risks and rewards in deciding whether to blog themselves;

    * the work part of the day is planned to run from around 11am to 5.30pm;

    * CPA will be hosting the event in their office in Central London and will be providing a lunch "of some description";

    * an affordable fee will be charged, the amount depending on how much sponsorship can be raised;

    * an online registration system is in the process of being set up - but it's probably a good idea to email Geeklawyer and let him know if you're interested in attending.

    Death of the "technical effect" test in the UK

    As observant IPKat readers may have noticed, there has been a flurry of activity at the UK Patent Office in recent months regarding 'excluded' subject matter under section 1(2) of the Patents Act. This is a direct result of the judgment of the Court of Appeal in Aerotel/Macrossan. Decisions at the UK Patent Office that could have been made earlier appear to have been held over until after this judgment came out in November 2006. We now have, at the latest count, the following decisions that have resulted in refusal under s1(2):

  • John Lahiri Khan (BL O/356/06) 11 December 2006

  • Rockwell Firstpoint Contact (BL O/355/06) 11 December 2006

  • Nintendo (BL O/377/06) 29 December 2006 (IPKat comments)

  • New Constructs LLC (BL O/014/07) 12 January 2007

  • Fisher-Rosemount Systems, Inc. (BL O/026/07) 19 January 2007

  • KK Toshiba (BL O/031/07) 30 January 2007

  • Peter Williams (BL O/038/07) 2 February 2007

  • eSpeed Inc. (BL O/043/07) 8 February 2007

  • Canon KK (BL O/045/07) 12 February 2007

  • Fisher-Rosemount Systems, Inc. (again) (BL O/047/07) 14 February 2007

  • NEC Corporation (BL O/050/07) 16 February 2007

  • Start-Global Limited (BL O/058/07) 21 February 2007

  • and only one decision that has resulted in a possible acceptance (though this was to be decided by remittal to the examiner):

    Sony UK Ltd (BL O/010/07) 10 January 2007 (IPKat comments)

    Does this success rate for the applicants of only one partial success in thirteen attempts tell us anything about how (or if) the UK Patent Office's practice has changed since Aerotel? This Kat thinks that it certainly does, and also thinks that it mostly comes down to the fourth step of the test for patentability, as approved by Jacob LJ. The test (from paragraph 40 of the judgment), for those readers who do not already know it by heart, goes like this:
    (1) properly construe the claim
    (2) identify the actual contribution;
    (3) ask whether it falls solely within the excluded subject matter;
    (4) check whether the actual or alleged contribution is actually technical in nature.
    This test was not suggested by Jacob LJ himself, but by Colin Birss on behalf of the UK Patent Office, who claimed that it complied with the previous Court of Appeal case of Merril Lynch, which it must (the court being bound by its previous decisions). In Merril Lynch [1989] RPC 561 Fox LJ stated (at p569):
    "it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item -- that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom [T 208/84] case where it is stated: "Decisive is what technical contribution the invention makes to the known art". There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom)".
    Leaving aside the issue of what the word "technical" means, the new test would, on the face of it, seem to be entirely in line with Merril Lynch, because the technical effect part is taken up by the fourth step. So far, so good.

    However, as Jacob LJ said in Aerotel (paragraph 46), the fourth step
    "may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must".
    The problem is, if one follows this reasoning, the fourth step might never in practice be used because failing at the third step will always be fatal. This appears to be the view of the UK Patent Office at least. The fourth step therefore appears to be a backstop against granting a patent, and not a way of incorporating the "technical effect" arguments of Merril Lynch. The effect, if it is ever to be used, appears more to be in allowing other types of inventions to be excluded that do not neatly fall into the s1(2) categories, as in Lux Traffic Controls [1993] RPC 107 (methods for controlling traffic are not patentable).

    The practice of the Patent Office in rigidly following Jacob LJ's reasoning has shown in the recent decisions, many of which follow the following reasoning, first used in John Lahiri Khan's application (at paragraph 33):
    "The presence or otherwise of a technical effect is therefore a subsidiary factor which will fall to be considered only where an invention passes the first three Aerotel/Macrossan steps".
    The practical effect of this new approach is (in this Kat's opinion, at least) that inventions that would have passed the patentability test previously will not pass the new test if the arguments for patentability rely on the presence of a technical effect. This will be good news for opponents of "software patents", but may be creating a new rift between UK and EPO practice.

    My, that's a lot of money

    Since everyone else is talking about it, the IPKat ought to say a few words about Microsoft being successfully sued in a US court for $1.52 billion in damages for patent infringement (Reuters report here). The patents in question apparently relate to MP3 technology, and Microsoft thought they had already licensed the technology from the Fraunhofer Institute for the miserly sum of $16 million. Alcatel-Lucent, however, the owners of several other patents on the same technology, thought otherwise.

    Without knowing the details of the patents in question (do any readers know what they are? if so, please leave a comment), this Kat is reluctant to comment further as to the merits of the case. However, the result seems to follow the standard pattern familiar to casual observers of US court actions in first quoting a huge headline figure for damages, which will inevitably be whittled down drastically in further proceedings. Juries in the US appear to be very keen to award such enormous figures. More fundamentally though, this may be an object lesson for Microsoft and others in one of the basic principles of patents, which only allow the proprietor to prevent others doing what the patent claims, and do not give the holder any kind of right to actually do it. Licensing a patent does not necessarily permit the licensee to work the technology, but merely prevents the licensee from being sued by the licensor.

    Update (25 Feb): Patent Monkey has been doing some digging, and presents some useful material on the patents involved here. There is also a good analysis of the possible ramifications on MP3 technology from Wired.

    Forthcoming attractions in the ECJ

    Next week looks like a quiet one for ECJ-watchers, with no decisions or opinions rolling out of Luxembourg on any key intellectual property issues (though there are some hearings on appeals to the Court of First Instance in Community trade mark issues). The following week, however, is a different matter. The IPKat has spotted these gems:

    On Wednesday 7 March there is a hearing on a reference for a preliminary ruling from the Tribunale Civile Di Genova in Case C-175/06 Alessandro Tedesco v Tomasoni Fittings SrL, RWO Marine Equipment Ltd. The question referred is this:

    "Is a request for obtaining a description of goods under Articles 128 and 130 of the Italian Code of Industrial and Intellectual Property, in accordance with the formal terms of the order made by this court in the present case, one of the forms of the taking of evidence prescribed by Council Regulation 1206/2001 of 28 May 2001 on cooperation between the courts of the Member States in the taking of evidence in civil and commercial matters) by which the courts of one Member State may, on the basis of that regulation, request that the competent court of another Member State should itself take that evidence?

    If the answer to question 1 is yes and the request for obtaining a description is incomplete or fails to comply with the conditions under Article 4 of the regulation, is the court to which the request is made under an obligation to:

    (a) send an acknowledgment of receipt in accordance with the conditions laid down by Article 7 of the regulation;

    (b) indicate any respect in which the request may be incomplete so as to enable the requesting court to complete and/or amend its request?"
    The IPKat predicts that this issue will become a hot one, as IP claimants increasingly seek to identify and secure evidence of infringement in several different countries before deciding which one(s) to sue in. Merpel says, how come this reference has escaped everyone's attention so far? We must improve the efficiency of our precious IP grapevine.

    Then, on Thursday 8 March we get the Opinion of the Advocate General in Case C-334/05 PShaker di L. Laudato & C. Sas v Office for Harmonisation in the Internal Market, Limiñana y Botella, SL. This is the LIMONCHELO/LIMONCELLO case, noted here by the IPKat who warmly endorsed the Court of First Instance decision, saying:
    "The IPKat agrees and hopes that this approach will be followed consistently by all the OHIM Boards and the CFI itself -- particularly where the earlier mark is the figurative mark containing a word, where it looks to the untrained observer as if the proprietor, by registering such a mark, effectively gets two trade marks for the price of one".
    The appellant disagrees, arguing that
    "It is settled principle that the assessment of likelihood of confusion between trade marks under Article 8(1)(b) of the regulation on the Community trade mark is based on two distinct elements: first, an analytical comparison between both the signs and the goods, and then a concise evaluation of the results obtained in order to determine whether the average consumer of the goods in question might believe that those goods come from the same undertaking or from economically-linked undertakings. In particular, as regards the comparison between the signs, the analysis directed at establishing whether the signs are similar must take into consideration the visual, phonetic and conceptual aspects to arrive at a global assessment based on the general impression given by the marks themselves, taking particular account of their distinctive and dominant components.

    The applicant claims that the Court of First Instance failed to give effect to the principle cited above and, in particular, it dismissed the possibility of confusion, basing its assessment exclusively on the visual perception of the contested mark, without taking any account of the further elements which may not be ignored in the overall assessment the likelihood of confusion".

    In the week after that, Tuesday 13 March is judgment day in Case C-29/05 P Kaul GmbH v Office for Harmonisation in the Internal Market. It's one of those 'continuity of function' cases that is really important for applicants and opponents in trade mark proceedings but deathly boring for students and laymen. Essentially, beyond what point does a review tribunal cease to be a review tribunal? When can and must it consider evidence not submitted when the earlier decision is made? See the IPKat's take on the Advocate General's Opinion here.

    New INN Regulation for EU

    Council Regulation 129/2007 of 12 February 2007 was published online on the European Commission's Official Journal this morning. This Regulation provides for duty-free treatment for specified pharmaceutical active ingredients bearing an ‘international non-proprietary name’ (INN) from the World Health Organisation and specified products used for the manufacture of finished pharmaceuticals and amending Annex I to Regulation 2658/87. It's 53 pages long and doesn't have much of a storyline, but the recitals make its purpose plain: non-branded pharmaceutical ingredients get duty-free treatment under WTO rules, which makes it cheaper and easier to get them into the hands of people in developing countries whose need is great and whose means are limited.

    Thursday, 22 February 2007

    Kikoi kicks up a fuss

    The IPKat is intrigued by a story in The Scotsman. A UK company has applied to register KIKOY as a trade mark for clothing. However, the term differs by only one letter from the word KIKOI, a Kenyan woven cloth worn by fishermen, which is also now popular among tourists to Kenya. The head of the Kenyan Intellectual Property Institute said:
    "The move will lock out [Kenyan] exporters from the British market, costing the country millions of shillings and jobs."
    An opposition is underway by a group of Kenyan exporters, aided by the Traidicraft Exchange.

    The IPKat says that this seems to be an example of the phonetic equivalent of a term that, although not understood as descriptive by many current UK consumers, would be needed in the future by other traders. This would render it descriptive under the ECJ’s watered down freihaltebedurfnis doctrine.

    Indian patent review withdrawn after spicy plagiarism

    "You might care little for this, but I find the irony too amusing to ignore", says Riz Mohammad when drawing the IPKat's attention to an article on The Hindu by Ravi Sharma and Sara Hiddleston, "Mashelkar committee on Patent Law withdraws report; seeks more time", citing "technical inaccuracy and plagiarism" as reasons.

    Right: plagiarism - a jumbo-sized problem for authors and scholars

    A further three months have been requested from the Indian government for putting the 56-page report to rights. The report, prepared by a committee led by Dr. R.A. Mashelkar, examined two TRIPs-related controversies:

    * whether it was legitimate to limit the grant of patents for pharmaceutical substances to new chemical entities or new medical entities involving one or more inventive steps only and

    * whether microorganisms could be excluded from patent protection.
    The committee took over a year and a half to reach its conclusions. However, it appears that some of the text of the report was copied verbatim from a November 2005 paper (Limiting the Patentability of Pharmaceutical Inventions and Micro-organisms: A TRIPs Compatibility Review) that was authored by scholar and Spicy IP blogger Shamnad Basheer of the Oxford Intellectual Property Research Centre, University of Oxford. Shamnad's research was published by the Intellectual Property Institute, a charitable organisation that encourages and commissions IP research.

    Below: a succinct summary of plagiarism, from

    On the subject of the ethics of IP infringement, readers might like to reflect upon the following and draw their own conclusions. The article in The Hindu states:

    "We have identified eight to ten lines that have been extracted verbatim from Basheer's paper. As a scientist I see this as not a good practice. In keeping with the highest and best ethical practices we want to withdraw the report". ...

    Asked whether the committee would now like to rewrite the report or just change the "eight to ten lines" that have been plagiarised, Dr. Mashelkar said that "that depended on the members of the committee"".
    If you want to read Shamnad Basheer's IPI report in full, and not just the plagiarised bits, you can order it from the IPI (click here and scroll down to 106 for details).

    Nora plays piano; Regional Trade Agreements and the WTO

    Freehills senior associate Craig Smith brings the IPKat this link to the Sunday Morning Herald, concerning Nora the musical cat. Based in Philadelphia, Pa., Nora surprised her owners Burnell and Betsy by her propensity to play piano. Nora has become a YouTube celebrity after Burnell and Betsy posted a video, "Practice makes purr-fect", which has been viewed by more than 810,000 visitors to that site.

    Ever sensitive to IP niceties, Craig considers whether Nora's original musical works and performances are protected under Australian law and whether perhaps her rights have been infringed by her human cohabitants:

    "Our Copyright Act gives rights to ‘persons’, and our Acts Interpretation Act in turn defines ‘person’ inclusively, including as part of that definition a ‘body corporate’. Some pretty clear inferences follow:

    (1) our legislature considers that the term ‘person’ doesn’t have a clear natural meaning, hence they have taken the trouble to define it;

    (2) since the inclusive list in the statutory definition includes a body corporate (which I’m pretty sure is something that doesn’t have a digestive system, brain, pulse or even a sex), our legislature has clearly signalled that they are using the word ‘person’ in a very broad sense (making its extension to a member of the felis catus family seem quite likely);

    (3) the list, being an inclusive one, can only mean that our legislature contemplated that our courts would recognise that other creatures capable of being an author would achieve protection under our Copyright Act".
    Says the IPKat, it's the old copyright term question again: if Nora's musical works are entitled to protection, from which of her nine lives does post-mortem protection start to run. Merpel adds, I wonder if she finds the music of Byrd particularly catchy ...

    Rossini cat duet here and (on YouTube) here, for those with an ample sense of humour or first-rate earplugs
    Kat-chaturian here

    Now here's a bit of challenging reading for those whose interest takes in not only core IP issues but their interface with the wider world. Regional Trade Agreements and the WTO Legal System is the title of a new book published by Oxford University Press and edited by academics Lorand Bartels and Federico Ortino. Both are academics, Bartels (below, left) being Lecturer in International Economic Law at the University of Edinburgh, Ortino (below, right)being a Fellow in International Economic Law and Director of the Investment Treaty Forum at the British Institute of International and Comparative Law, London.

    What the publisher says:

    " The proliferation of regional trade agreements, including both free trade agreements and customs unions, over the past decade has provoked many new legal issues in WTO law, public international law, and an emerging law of regional trade agreements. The various Parts of this book chart this development from a number of perspectives.

    Part 1 introduces the economic and political underpinnings of regional trade agreements, their constitutional functions, and their role as a locus for integrating trade and human rights. Part 2 examines the WTO rules governing regional trade agreements, focusing on a number of areas in which regional trade agreements prove problematic, such as trade remedies, regulatory standards and rules of origin. Part 3 investigates areas in which regional trade agreements go beyond WTO rules, in areas such as intellectual property, investment, competition, services, sustainable development and mutual recognition, while Part 4 is devoted to the dispute settlement mechanisms of regional trade agreements, and includes illuminating case studies. Part 5 explores the interrelationship between regional trade agreements and the WTO system from the perspective of public international law, involving questions with significance beyond the trade community".

    What the IPKat says:

    "This is never going to be an easy read for a black letter lawyer in private practice in the field of IP, nor indeed will the casual IP law student find it a handy supplement to his prescribed course reading. But they are not the editors' prime readership: this is a technically advanced book that makes few concessions to the reader's ignorance or parochial outlook. While some of us may have come across occasional specific Regional Trade Agreements (RTAs), most of us will have little idea of the scale of their proliferation or of the notion that, within the general scheme of international trade law, RTA law is evolving into an identifiable body of law in its own right.

    For us, the chapter entitled "TRIPs-Plus Provisions in FTAs: Recent Trends", by Bryan Mercurio (Senior Lecturer in the Faculty of Law, New South Wales) is probably the most accessible chapter, along with that which follows it ("Competition Law in Regional Trade Agreements: an Overview", by University of Dundee academics Melaku Geboye Desta and Naomi Julia Barnes). Anyway, congratulations both to the editors for compiling this challenging work and to its contributors for their clarity of exposition".

    Bibliographic detail. Price £35 (paperback), £100 (hardback). ISBNs 10: 0-19-920700-3 and 13: 978-0-19-920700-8 . 638 pages. A sample of this book is available in PDF format from the OUP website. Rupture factor: moderate, depending on the carrier's age and condition ...

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