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).

Saturday, 28 February 2009

Kiwi Parliament puts controversial copyright law on hold

The IPKat's academic antipodean friend Louise Longdin has sent him this information concerning recent attempts at copyright reform in New Zealand:

"A highly controversial and heavy-handed amendment to New Zealand’s copyright law that greatly widens the responsibilities and liability of ISPs has been put on hold. It was poised to come into force today (28 February). The postponement of the new law (described in today’s New Zealand Herald Editorial as “sledgehammer like”) was sparked off by protestors demonstrating outside Parliament with mouths tapped shut and a week long nationwide, voluntary blacking out of internet sites by thousands of bloggers and social networkers. Stephen Fry, the well known actor, comedian and author also blacked out his Twitter profile in sympathy and an online petition was signed by 10,000 protesters. Section 92A of the Copyright (New Technologies) Amendment Act 2008 had been passed by the previous Government. The contentious provision, originally taken out at the Select Committee stage, was popped back in at the last minute by the Minister of Arts, Culture and Heritage when the Bill returned to the House for its final reading.

Section 92A mandates that ISPs adopt and “reasonably implement” a policy that provides for the termination “in appropriate circumstances” of the account of a “repeat infringer.” The amendment is considered to have overstepped the mark largely on two grounds. First, an ISP is very widely defined under the Act. It includes any person who offers the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing or who hosts material on websites or other electronic retrieval systems that can be accessed by a user. Thus it easily subsumes, and turns into active gatekeepers, not only the traditional ISPs but also all other persons and organisations who provide access to the internet for their employees, clients, teenage family members, flatmates, tenants or the public. Thus turned into downstream ISPS are libraries, shops, cafes, bars, companies, universities, parents, landlords, head tenants, businesses, schools, banks, medical practices as well as airports and railway stations. This would have been a real sea change for New Zealand for, unlike some countries (such as France and Italy in the writer’s own recent experience),  it has never been the custom in this country for libraries, internet cafes or the providers of WIFI hotspots to require photo identification before allowing members of the public access to the internet.

The second reason Section 92A is seen as unworkable and unfair is that Parliament has provided little guidance as to who might be identified as a repeat infringer other than to say in an unhelpfully circular fashion, under s 92A(2), that it means “a person who repeatedly infringes the copyright in a work by using one or more of the Internet services of the ISP to do a restricted act without the consent of the copyright owner.”
Internet users can be potentially disconnected on weak and flimsy evidence. There is no penalty attached to making an unjustified allegation of infringement. Absent too is any means for ISPs to have claims of infringement independent verified. ISPs are veritable piggies in the middle. Even if they act in good faith they are exposed in two directions: to those they disconnect unjustifiably and to copyright owners if they do not. Furthermore, even where a work exists and has clearly been infringed, pinpointing who the real infringer is will not always be easy when an internet account is used by several persons in a business or organisation.

While the government has deferred enforcement of the amendment (ostensibly until March 27) work is meant to be done not on drafting a better and clearer law but on hammering out a voluntary enforcement code acceptable to both copyright owners (particularly those with rights in movies, TV shows and music) and internet service providers. Should this not eventuate, the government has indicated that the amendment will be suspended".
The IPKat is most impressed at the degree of concern that has been expressed and very much hopes that a fair and workable settlement which is agreeable to both sides can be found. Merpel however wonders whether the blacking out of a Twitter profile by a celebrity isn't the ultimate act of pathetic gesture politics. 

Things you never knew about the kiwi here
Recipes for kiwis here

Friday, 27 February 2009

Blogs and blogging

The 5th Annual "Meet the Bloggers" event, masterminded this year by Seattle Trademark Lawyer's Michael Atkins, takes place on Monday 18 May 2009 at the new time of 6pm to 9pm at Pier 70 (right), on Seattle's lovely waterfront (details here). "Meet the Bloggers" -- which coincides annually with the International Trademark Association's Meeting -- is open to everyone who writes or reads intellectual property blogs. If you need any more information about this year's event, email Mike.  Last year's session in Berlin was great fun and this year's should be too. See you there?

The Afro IP intellectual property blog, which tries its hardest to scrape together interesting bits of news and comment from one end of Africa to the other, has finally notched up two milestones: its 500th article was posted earlier this week and the blog has also picked up its 200th email subscriber. The blog team, ably led by Darren Olivier, is always on the look-out for IP news, views and information -- and is willing to publish it in French or any other widely-understood language as well as in English. You can view Afro-IP here.

Another blog to hit the 200 email subscriber mark is PatLit, the patent litigation weblog. Since dispute resolution involving patents is an increasingly international phenomenon, the team welcomes short newsy items, preferably linked to reliable sources, from patent litigators, mediators and arbitrators wherever they are based.

Multilingual Latin-American weblog IP Tango has shaken up its writing team but would like to hear from readers (ideally from that area) who are involved in Latin American IP and would like to write the occasion piece for this growing weblog.  If you're interested, email Aurelio here and tell him the IPKat sent you. You can see IP Tango for yourself here.

Congratulations to all the patent blogs listed in the Top Twenty Five Patent Blogs compiled by IP Watchdog.  PatLit -- which had only just launched when the list was compiled -- plans to be there next year. 

Launched only last week, Fashionista-at-law has already sailed past the 100 subscriber mark. Well done! This blog has the advantage of not being tied exclusively to IP subject matter, since it covers all legal topics that concern the fashion industries (the effects of the credit crunch being among them).

Finally an apology: the IPKat forgot to mention that the Datonomy data protection weblog passed its 50 subscriber mark a couple of weeks ago. Data protection is now very much a stand-alone IT/regulatory sort of subject these days, but team blogger lovingly recalls its early days in the 1980s, when it was still viewed (at least by many IP lawyers) as a real IP subject, a sort of next-door neighbour to breach of confidence.

Thursday, 26 February 2009

EQE data overload

Following the IPKat's little rant last week, he has been passed some more details and further anonymous comments on the contentious subject of the EQEs.  The document he was pointed to first (now posted on the IPKat's Google Groups website) contains some very interesting details about the reasons behind the recent changes made to the EQE Regulations (available here), and some clear pointers to the form the Implementing Regulations will take, once they have been finalised. The main points appear to be that the language requirement relating to paper C will be abolished as from 2010, and that a minimum of four years full time education at university level will be required in order to take the EQEs after 3 years in the profession.  A draft proposal to restrict the books that candidates are allowed to take into the exams has apparently been dropped. The IPKat is not really too bothered by either of the current proposals, and in particular welcomes the abolition of the paper C language lottery, although he has commented previously on the apparently arbitrary nature of the 3/4 year requirement, which doesn't really make any sense (except if you don't like UK candidates qualifying too early).  

The IPKat has also been pointed to a very illuminating document, available in full from the EPO here. This provides a summary of the pass rates and numbers of people in each member state who are entitled to call themselves "European Patent Attorney".  Parts of this summary were apparently used in illustrating the proposals for the new Regulations on the EQEs.  What the IPKat was interested, and a little surprised, to see was the large number of qualified EPAs still on the register that have never passed the exams.  This is shown in the following figure (click for a larger view):

According to these figures, in 2007 there were 8866 EPAs on the register, 5339 of which had passed the EQEs. Quite a large proportion, totalling 3527 EPAs (40%), had not qualified by passing the exams. Instead, these attorneys had qualified automatically by being already entitled to act as attorneys before their state joined the EPC (the so-called "grandfather clause" of Article 163 EPC1973). A large majority will, of course, be resident in the three main countries of the EPC: Germany, France and the UK. This means that many of these attorneys will have been calling themselves EPAs for the past 30 years. 

If the IPKat had his way (which, of course, will not happen), all of these attorneys would also be sitting the papers to be taken by prospective EPAs next week.  Some of them, he suspects, would inevitably fail.  Would this be a bad thing? If the EPO is serious about "raising the bar", one of the justifications for the proposed changes to the EQE regulations, should they not also ensure that all those having the right to call themselves a European Patent Attorney are actually qualified to the same standard?

A related point that keeps coming up, which the IPKat cannot confirm for certain, is how many of those on the EQE Examination Committe have actually sat and passed the exams they are setting and marking.  It would be nice to know that they have all passed the same test that they expect others to pass. After all, it would be a bit disturbing if university examination papers (say) were set by people with only honorary degrees, would it not?

Probably the most interesting figure from the document is the one that was used in the draft regulations.  The following figure shows the numbers of candidates overall having taken one or more exams over the period from 1998 to 2007:

Are the exams getting harder, are there more candidates being registered who are less able to pass the exams, or is there some other reason for the increase in numbers in candidates not correlating well with an increase in numbers qualifying? The IPKat doesn't know.

Some more interesting data that the IPKat gleaned from the EPO document illustrates the difference between those in the big three member states (DE, FR, GB) trying to become qualified as EPAs compared to those from states not having one of the official languages as their national language.  From the results in 2007 (which, remember, was a particularly bad one for paper C), 29.5% of UK candidates who took one or more papers became EPAs, while only 19.7% of French candidates and 18.1% of German candidates passed. Dutch candidates did slightly better with 20.3%.  For other non-EPO language countries, however, the picture looks a bit more grim.  Only 9.4% of Italian candidates made it, and a mere 5.6% of Spanish candidates passed.  As the following figure shows, very few Spanish candidates in total have passed the exams since Spain joined the EPC in 1986, and only 21 were on the register in 2007, the rest being honorary entrants:

The situation for many other countries is even worse, with several countries having no properly qualified attorneys at all.  The IPKat wonders whether any realistic (rather than merely token) efforts are being made to improve this.  He can understand why Spain would like to have Spanish accepted as another official language of the EPC (the same argument would of course also apply to Italy, Greece, Hungary etc.), although he thinks it makes about as much sense as having Welsh an official language of UK patents.

Copyright alive and kicking: MGMT v Sarkozy's UMP, Annie Leibovitz 'pawns' her copyrights

The IPKat has come across two news items concerning copyright matters. The Guardian reports that French president Sarkozy's UMP party (Union pour un Mouvement Populaire) is to compensate indie group MGMT for using their song 'Kids' at recent party rallies without seeking the band's permission. According to the news report the song was played at UMP party meetings on 24 and 25 January 2009 and was also used for official videos displayed on the UMP website. 'It seems that those who led the charge against internet users are not the most respectful of copyright', the band's French lawyer Isabelle Wekstein is cited in the Guardian.

According to a report by AFP, UMP's public relations firm has now confirmed the use of the song but insists that it was 'an unintentional mistake'. The UMP has offered the band one (1) Euro in symbolic damages for copyright infringement. AFP further reports that MGMT's lawyer has already rejected the offer as 'disrespectful of the rights of artists and authors' and 'insulting' and has demanded full financial compensation. According to Ms. Wekstein, the UMP has only paid a standard 53 Euro fee to SACEM, the French music licensing body, which did not cover subsequent uses of the song, particularly on the internet.

The timing of this copyright controversy is not devoid of a certain irony given that the new French anti-file sharing law is due to be presented to the French national assembly in about a week's time. Even more so because of the UMP's strict stance in France's debate over file sharing and online piracy. The UMP has repeatedly demanded stricter laws against those who infringe on musicians' copyright.

Et voilà .... thinks Merpel, while the IPKat says merci to his friend and famous blogger Frédéric Glaize for alerting the Kat to the UMP's 'symbolic' compensation offer.

In other copyright related news famous photographer Annie Leibovitz (shown left) has reportedly 'pawned' the rights to her life's work in order to borrow £10.8m from Art Capital Group, a Manhattan lender, to pay off debts. The Telegraph reports that Ms. Leibovitz secured the loan partly against copyrights and contract rights to 'every photograph she has ever taken or will take in future as collateral'.
The Telegraph explains that in the current economic climate more and more wealthy US art collectors are turning to their art collections to raise capital. Art lenders appear to work 'like a high class pawnshop' by lending up to 40 per cent of the work's worth, and taking possession of the actual work.

More information on France's proposed new law can be found here (in French) and here (in English)
More information on Annie Leibovitz can be found here.

Trade mark registrations for shopping centres

The UK IPO has issued a new Practice Notice (PAN 01/09) concerning acceptable trade mark specifications for the provision of shopping centre services.

Key points:

  • registration can be obtained for both real and ‘viritual’ (i.e. online) shopping centre services
  • the services which are brought together by the centre operated must be clearly defined and related to the primary activity of providing retail outlets, so terms like ‘and other services’ won’t do. However, the Registry is taking a wideish view of what a shoppinig centre will provide, e.g. language assistance, child care
  • such a specification does not include a claim for the provision of the services which are being brought together (e.g. bringing together, inter alia, restaurant services, does not include a claim for the restaurant services themselves)
  • the PAN doesn’t cover the bringing together of services in a manner other than a shopping centre – these will be judged on a case-by-case basis

The IPKat welcomes the IPO’s flexible and realistic approach to what a shopping centre may offer. He’s puzzled though by a couple of things. First, virtual shopping centres are covered, but other forms of bringing together services aren’t. Is there really an accepted definition of what a virtual shopping centre is (and so what falls within the PAN)? What about price comparison sites? Google Shopping? Sites like Nectar which provide links to various shops with the aim of allowing you to collect reward points? Secondly, the PAN requires clearly defined services. Now normally the IPKat is all for clarity, but does it really matter here if the key services is a shopping centre: it’s the bringing together of retail services which will be the main focus when comparing similarity of services, particularly since the PAN explicitly states that any registration would not cover the other services being brought together per se.

Wednesday, 25 February 2009

Biogen, Lundbeck, Lord Hoffmann and a tour de force

This morning the House of Lords, looking slightly unfamiliar without Lord Hoffmann in the line-up, gave its decision in Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12, dismissing Generics' appeal against the much-discussed decision of the Court of Appeal (equally unfamiliar with Lord Hofffmann in the starring role) on the application of the concept of "insufficiency" to the validity of a granted patent.

In short, their Lordships -- with Lords Scott, Walker and Mance each adding some thoughts of their own -- concurred with the speech of Lord Neuberger. Said Lord Walker at paragraphs 29-31:

"29 During the oral argument ... there was some discussion of whether "inventive concept" means the same as "technical contribution to the art." Neither expression is a statutory term of art. Lord Hoffmann used both expressions several times in his opinion in Biogen, the former mostly in section 10 (headed "Inventive Step") and the latter mostly in section 12 ("Support for the Claims"). Mr Thorley QC submitted in his reply that the two expressions (as used in Lord Hoffmann's opinion) are synonymous.
30. I do not think that this is quite right. The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. "Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention—the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept—how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.

31. Biogen itself is, I think, a good illustration of this. ... If I may respectfully say so, Lord Hoffmann's opinion in Biogen is a tour de force. I have frequently commended it to bar students as an example of how a great judge can suffuse even the most technical subject with intellectual excitement. But its vivid and powerful language must be read in the context of the facts and issues in that case".
Lord Neuberger's speech effectively affirmed the unity of the principle of insufficiency and concluded:
"There is a difference between the "inventive step" or "inventive concept", on the one hand, and the "technical contribution to the art", on the other hand. I respectfully agree with the explanation of the difference between the two concepts given in paras 29 to 31 of Lord Walker's opinion. When considering the validity of a simple product claim (such as is under scrutiny on this appeal), it may be that concentrating on the identification of the inventive step rather than the technical contribution can lead to error. "Inventive step" suggests how something has been done, and, in the case of a product claim at any rate, one is primarily concerned with what has been allegedly invented, not how it has been done. On the other hand where the claim is for a process or (as in Biogen [1997] RPC 1) includes a process, the issue of how the alleged invention has been achieved seems to be more in point".
This is a complex decision which the IPKat will definitely revisit when he's had a chance to think as well as to read.

Tour de force here
Tour de France here
Tour de Londres here

Official: health can damage your brands

Every brand owner's book of nightmare scenarios is likely to contain one in which your popular brand gives its name to a medical condition. Something not dissimilar happened back in the 1980s, when appetite suppressant AYDS was all but driven from the market once Auto-Immune Deficiency Syndrome was handily termed AIDS -- but that was just a case of hard luck, being the wrong brand name at the wrong time.  

Right: the IPKat has become a victim of PlayStation Paw

Owners of the PlayStation and Wii trade marks and brands must be feeling most disgrunted at an article that appeared in this morning's Telegraph, penned by Rebecca Smith, the Telegraph medical editor, under the title "Excessive PlayStation gaming causes new skin condition" (you can read it here).

The article discusses a skin condition displayed by a 12-year-old girl in Switzerland, who developed lesions on her hands after playing on her games console for several hours every day:
"Dermatologists have called the condition PlayStation palmar hidradenitis and said the condition cleared up after the patient stopped paying altogether for ten days. The lesions in the standard version of the disorder normally appear on the soles of the feet in children who play lots of sport or take part in intensive physical exercise such as jogging. It it thought to be connected to intense sweating but it is very unusual for it to appear on the hands. Doctors at the Geneva University Hospital in Switzerland found the girl had not played any sport and the lesions only appeared after she had started to play on her PlayStation for several hours a day".
WebMD Jennifer Warner has written on another condition, Wiitis, or Nintendinitis, in a healthy 29-year-old male medical resident who woke up one morning with intense pain in the right shoulder. He hadn’t participated in any sports or physical exercise recently, but he had just purchased a Nintendo Wii video game system and had spent several hours playing the tennis video game.

The IPKat is most concerned at the (mis)appropriation of valuable intellectual property assets for this purpose, not just in terms of the damage it can do to brand values but because of the encouragement it gives to people to use trade marks as generic terms. It also adds a new dimension to the due diligence exercise that accompanies the assignment of a brand-based business: now teams of junior lawyers will be told to go away and check out target brands in the various medical databases.  Merpel says, what we really need is a good Latin term for words like PlayStation so that the related medical condition sounds like a much more serious condition ...

Do readers know of any other medical conditions that have been named after brands? If so, please tell us.

Tuesday, 24 February 2009

How the 'Second German Reform Act on Victims’ Rights' may affect intellectual property rights

The German cabinet has on 18 February 2009 decided to modernise the German Code of Criminal Procedure (Strafprozessordnung, StPO) by further strengthening the rights of crime victims and crime witnesses. The so-called Second German Reform Act on Victims’ Rights (2. Opferrechtsreformgesetz) is based on a draft by the German Ministry of Justice. While strengthening victims' rights sounds like a worthwhile exercise, there are certain planned changes to the Code of Criminal Procedure that appear to have alarmed some intellectual property right owners in Germany.

The IPKat initially failed to see how strengthening the rights of crime victims could adversely affect intellectual property rights and decided to read the information provided on the German Ministry of Justice's website. Indeed, on page 50 of the draft law it states that Section 395 (2) No. 2 StPO, which allows for accessory prosecution in cases of intellectual property rights (i.e. trade mark, patents, copyright) infringements, will be abandoned. The Ministry of Justice's draft further explains that section 395 (2) No. 2 StPO had been criticised by scholars for some time because it 'was based on a dated connection between private prosecution and accessory prosecution'. Furthermore, infringements of intellectual property rights were no severe crimes of aggression and the victims of intellectual property right infringements were not violated in the 'strictly personal rights' (höchstpersönliche Rechtsgüter).

By way of background information: Section 395 StPO permits victims to join a public prosecutor in the role of an additional prosecutor (Nebenklaeger). Accessory prosecution (Nebenklage) allows victims to play an active role in criminal court proceedings. In the capacity of a private prosecutor, crime victims' lawyers have access to court files, are entitled to request the taking of evidence and may also appeal a judgment.

German news site Wirtschaftswoche reports on how the planned changes could affect the prosecution of producers of counterfeit products. The report cites brand owners, such a Guido Baumgartner of Coty, who is of the view that German state prosecutors in counterfeit and trade mark infringement cases heavily rely on the knowledge provided by accessory prosecutors, i.e. brand owners. Christoph Kannengießer of the Markenverband (trade mark owners' association) is cited a saying that the changes will mostly affect the music, movie and game industry and that the Markenverband will contact the German Ministry of Finance and other governmental bodies to alert them regarding the possible consequences of the new law. Matthias Leonardy of the GVU (society for the prosecution of copyright infringements) stresses the state prosecutors require the assistance of accessory prosecutors to gather the necessary evidence required in criminal proceedings.

The Second German Reform Act on Victims’ Rights has to be approved by the German Parliament, the Bundestag, but does not require approval from the second chamber, the Bundesrat. It is planned that the law will be passed before the Bundestag's summer holiday.

The IPKat will report on any further developments but can't help but wondering whether restricting brand owners' criminal enforcement rights sends the right signal to the producers of counterfeit goods?

The German Ministry of Justice press release can be retrieved here (in German).

And the winner is...

In the spirit of Oscars obsession that has overtaken the UK, the IPKat brings you the news that the Academy of Motion Picture Arts and Sciences is asking the USPTO to revoke the HACKADEMY AWARDS trade mark on the ground that it may cause confusion. The mark is used for an alternative awards ceremony, where Breathe California of Sacramento-Emigrant Trails gives awards to films with the most and least incidences of smoking. This year the winner of the 'Thumbs Up' was 'What Happens in Vegas' and the 'Thumbs Down', 'The Curious Case of Benjamin Button'. 'Slumdog Millionaire' doesn't seem to have won any awards.

Hm, says the IPKat. He's not really sure that there would be confusion here. Tarnishment perhaps because of the association with cigarettes, but this would be a long shot, since the junior user is anti-smoking.

Sausage GI applicants 'meat' their match

The IPKat's friend Marc Mimler, a PhD student at the Queen Mary Intellectual Property Research Institute (QMIPRI), has taken a keen interest in the fate of the Münchner Weisswurst. A ruling concerning this passion-generating sausage was tastily served to readers of the Class 46 weblog -- as luck would have it, by IPKat team member Birgit -- and Marc has offered a version of events for IPKat readers too. Marc writes:

"The German Federal Patent Court (Bundespatentgericht) released a judgment last Tuesday on the protection of the term "Münchner Weisswurst" as a geographical indication according to Article 126 ff. of the German Trade Mark Act which implemented Regulation 510/2006 on geographical indications and designations of origin. The press release by the court can be found in German here.

Münchner Weisswurst is a boiled sausage which is usually consumed with pretzels, sweet mustard and wheat beer. It was allegedly created in Munich on February 22, 1857 in the (in English, "Eternal light") Inn by the inn´s butcher Joseph ("Sepp")Moser. It is popular in Munich and the whole of Bavaria, and has been hailed as an outstanding sample of the Bavarian attitude to life. Many Weisswurst aficionados still abide by the rule that the Weisswurst "must not hear the 12 o´clock bells ringing", meaning that it should ideally be consumed in the morning (again, traditionally along with wheat beer).

The Society for the protection of the Münchner Weisswurst (Schutzgemeinschaft „Münchner Weisswurst“) filed an application with the German Patent and Trade Mark Office in 2005 to register the term Münchner Weisswurst as a geographical indication. If successful, production of the Weisswurst, along with the use of the term Münchner Weisswurst, would have only been permitted for butchers located in the City of Munich and its surrounding administrative council.

The German Patent and Trade Mark Office held that the term Münchner Weisswurst was eligible for protection as a geographical indication. This decision was appealed by several competitors and federations of producers, who stated that it would spell doom for the Weisswurst if competition would have been impaired by its protection as a geographical indication.

The Federal Patent Court allowed the competitors' appeal on the ground that Weisswürste have been produced in other regions of Bavaria and not just in and around Munich for decades. The sausage is a regional, mostly southern Bavarian speciality and is not limited to the Munich area. The court added that assessment of whether a term is eligible for protection as a geographical indication depends on an objectively determined assement of the prevailing conditions in the market, and only to a lesser extent on public opinion polls, this being in line with the most decisions of the European Court of Justice on geographical indications.

The decision however should not be perceived as being a massive disappointment to the local community of Münchner Weisswurst fans. The question of whether this Weisswurst originated from Munich is highly debated since a similar sausage, the "boudin blanc", was created by a French cook before Sepp Moser was even born".

Monday, 23 February 2009

What is the value of the NetBook trade mark?

The IPKat's friend and IP Finance weblog colleague Rob Harrison has penned the following piece which seems so interesting that the IPKat asked if he could give it a wider audience. Writes Rob:

"Some of you may have been following UK/Canadian company Psion Teklogix’s attempts to enforce its rights to the trade mark Netbook against a number of vendors. Psion filed the mark in the EU 1996 and it was registered in 1998 (Number 000428250). The trade mark was being used in May 2000 (as this article in German demonstrates) and at least until 2004 in the US, if this entry is to be believed.

In the meantime, the term “netbook” has been widely used to describe small laptops that are designed for wireless communication and access to the internet (see link here).

Psion (now called Psion Teklogix) started sending a number of bloggers and vendors cease and desist letters to stop the trade mark being used. While some larger retailers seem to have complied (Germany’s MediaMarkt, for instance, now just calls them notebooks), a whole community has grown up to oppose Psion’s attempt to monopolise the mark. Their discussion can be found here.

Dell it seems have now filed for revocation of the mark in the EU and in the United States on the grounds that the trade mark has not been used. Dell – which last year attempted to monopolise another common industry term by filing a trade mark application for “Cloud Computing” in the US -- have been hailed as “saviours” in the community. Nothing has, of course, yet been decided. Dell’s representatives have stated that the mark has not been used in the European Union for five years – but at this stage no detailed explanation has been given.

The case is fascinating. We see a company like Psion filing a trade mark for a sign way before the word had entered the English (and many other languages) as a designation for a whole new category of goods. The sign then becomes the common designation for the category of goods – and Psion attempt to enforce their trade mark rights. It’s not a clear cut case like Kleenex tissues (for US and UK consumers) or Tempo tissues (for German and Austrian consumers). The mark appears not to have been continually used and Psion certainly discontinued at least one product using this brand (as noted on their discontinued products page).

The brand could be worth millions, given its adoption to designate a category of products. Or it could be worth nothing since Psion ceased using it and failed to maintain the brand".

Ever interested in his readers' comments, the IPKat throws Rob's piece open for debate.

Net book here
Net book agreement here
Newt book here

Monday meanderings

With some trepidation, IPKat team member Jeremy is taking the plunge and entering into the world of Twitter. All twittered content will be strictly IP-related. You can follow it here: If nothing interesting initially emerges, please be patient: it takes time for a Kat to screw up its courage where these new technologies are concerned ...

Reminder: registrations are now coming in for the first-ever CLT one-day conference, "Intellectual Property in the Education Sector: meeting the challenges of changing times". This event takes place on Thursday 19 March, in Central London. You can read the programme, which has the booking arrangements, here. The conference competition, for which the prize is free registration (worth £495 + VAT -- and with a decent lunch thrown in), is to compose a haiku in the traditional Japanese style, connecting the subjects of intellectual property and education. There are two further conditions: (i) no references must be made to cats or Kats and (ii) there are to be absolutely no arguments as to what constitutes a haiku. The deadline is Sunday 8 March, midnight (Greenwich Mean Time) and entries should be emailed to the IPKat here with the subject line "Educomp".  Some of the early entries are hilarious; let's have yours too.

Above: three of the speakers from Trade Marks on the Downturn (left to right): Stephen Reese, Neil Wilkof, Larry Cohen

Last week the Trade Marks on the Downturn seminar
drew an attentive audience of over 60 participants to Hardwicke Building, to discuss various problems faced by trade mark owners and their licensees during the current economic difficulties. The IPKat had hoped to publish a report on this seminar, but he was right in the middle of everything and didn't have time to take notes. He hopes to publish all the speakers' PowerPoints, but the only set he has received so far is "Trade Mark Licences & Termination", a review by Stephen Reese (Olswang) of the issues as seen from both the licensor's and licensee's perspective. If you'd like sight of these PowerPoints, please email IPKat team blogger Jeremy here.

The IPKat is pleased to inform his readers
that the Intellectual Property Office in the UK has just launched a new free online service to help "artists, inventors, sole traders and small and medium sized businesses identify, protect and commercially exploit their Intellectual Property (IP)". This is the IP Healthcheck, a diagnostic tool which is aimed at helping lay users discover (i) if they have IP to protect, (ii) whether it's theirs or someone else's, (iii) how to protect it -- and whether it's worth protecting, and (iv) how to exploit that IP commercially. You can try it out here; feedback should be emailed here.

Sunday, 22 February 2009

IP rights in the Court of Appeal, but not as we know them ...

Every so often a case comes along that deals with intellectual property, but not in a way that the IPKat can easily recognise or understand.  One such case is Office of Communications v Information Commissioner [2009] EWCA Civ 90, 20 February 2009, a decision of the Court of Appeal, England and Wales (Lords Justices Waller, Thomas and Richards).

This case arose from a set of facts that might initially seem to the casual observer to have little to do with IP at all.  The Office of Communications (Ofcom), the independent regulator for the UK communications industries, operated the Sitefinder mobile phone base station website, Sitefinder being a database that was set up as a result of recommendations made in the Stewart Report 2000 following public concern as to the potential risks to health which might be occasioned by electro-magnetic radiation emitted from mobile telephones.

The Information Manager for Health Protection in Scotland, in the course of some epidemiological investigations it was conducting involving electromagnetic radiation, asked Ofcom for some information it held concerning location, ownership and technical attributes of mobile phone cellular-based stations, to be provided in searchable format. Ofcom accepted that the information held on the website was 'environmental information' for the purposes of the Environmental Information Regulations 2004, SI 2004/3391, which implemented Directive 2003/4 on public access to environmental information, but said that, since the requested information was already available on its website, Regulation 6(1)(b) of the Regulations did not require it to provide that data in another other format.

On an internal review of its own decision, Ofcom upheld its refusal to disclose the requested information, citing Regulations 12(5)(a) and (c) of the 2004 Regulations. Under Regulation 12(5) a public authority might

'refuse to disclose information to the extent that its disclosure would adversely affect—(a) international relations, defence, national security or public safety ... (c) intellectual property rights ... '.
Ofcom was concerned that disclosure of the national dataset in a readily comprehensible and searchable form would compromise the security of sites, called TETRA sites, which provided the police and emergency service radio network, and that they would adversely affect the intellectual property rights of mobile network operators (MNOs).

Ofcom applied to the Information Commissioner under section 50 of the Freedom of Information Act 2000 for an assessment of that decision. The Commissioner ordered Ofcom to make the disclosure sough, finding that Regulation 12(5)(a) didn't apply and that there was no adverse effect on IP rights that might trigger the Regulation 12(5)(c) exception.

Ofcom then appealed unsuccessfully to the Information Tribunal, which found that the Regulation 12(5) exceptions were engaged but that, in each case, the public interest in maintaining the exception did not outweigh the public interest in disclosing the information. Following a further failed appeal to the High Court, Ofcom appealed further to the Court of Appeal.

At this stage the Court was asked whether
(i) the tribunal had erred, when carrying out the public interest balancing exercise under the Regulations, by looking at each applicable exception separately and declining to consider whether the aggregate public interest in maintaining the exceptions outweighed the public interest in favour of disclosure;

(ii) the tribunal had erred by taking into account, as an aspect of the public interest in disclosure, the 'benefit' arising from the use of the information for epidemiological research even though such use might breach the IP rights of the MNOs;

(iii) whether the tribunal was entitled to find that the public interest in maintaining the exception in Regulation 12(5)(c) did not outweigh the public interest in disclosing the names of the MNOs, as distinct from the disclosure of the remainder of the requested information.
Faced with this truly knotty problem, in which IP rights had been placed at the heart of the dispute but no IP owners were represented, The Court of Appeal (in a judgment delivered by Richards LJ, the other judges concurring) allowed the appeal in part. In its view,
(i) (Allowing Ofcom's appeal on this ground only) Tte exceptions under Regulation 12(5) should be considered together rather than separately, when balancing the public interest for or against disclosure;

(ii) The legislative scheme involved a weighing of pros and cons, with a presumption in favour of disclosure and in the context of a strong legislative policy of promoting access to, and dissemination of, information. Where use of information in breach of IP rights had beneficial as well as adverse consequences, the proposition that only the adverse consequences could be taken into account ran wholly counter to that scheme;

(iii) Since an adverse effect on IP rights was the subject of a specific exception under Regulation 12(5)(c), it was obvious that breaches of such rights should be taken into account both in determining the application of the exception and in assessing the public interest in maintaining the exception. It was equally obvious that regard should be had not just to the immediate effect of disclosure but also to its wider consequences, including subsequent use of the information disclosed;

(iv) the tribunal was entitled to take into account, when carrying out the public interest balancing exercise, the benefit from use of the information in epidemiological research even if that use would be in breach of the database rights of the MNOs. Together with other public interest considerations, those beneficial consequences fell to be weighed in the balance against the adverse effect on the rights of the MNOs;

(v) It was open to the tribunal to find that the public interest in disclosure of the environmental information had extended to disclosure of the names of the MNOs. The public interest facts referred to in the Directive (these being a greater awareness of environmental matters, a free exchange of views, more effective participation in environmental decision-making and a better environment), being broad and intangible in nature, did not depend upon direct evidence linking disclosure of the information with specific benefits.
The IPKat notes that, while the IP rights at stake in this case were principally Europe's sui generis database rights, the provisions might equally have repercussions for confidential information. As Richards LJ said at paragraphs 57 and 58:
"Where information is stored in a database, then it is possible in principle for the realisation of the benefits of disclosure of that information to depend entirely on the post-disclosure manipulation of that database. If third parties enjoy relevant database rights which would be infringed by such manipulation of the database, then on Ofcom's case the benefits would have to be excluded from consideration altogether and there would be nothing left in the public interest side of the balance to weigh against the public interest in maintaining the exception. It would follow that there could be no order for disclosure. Yet that outcome would be wholly at odds with the legislative policy. This may be an extreme example (though I suspect that it may become an increasingly real one in practice), but it provides an illustration of why in my view the case put forward by Ofcom cannot be right.

It is also interesting to consider, by way of comparison, the case of confidential information falling within regulation 12(5)(e). In that case the very act of disclosure is likely to destroy the confidentiality of the information and to prevent the bringing of a claim for breach of confidence to prevent or restrict post-disclosure use of the information, so that any benefit arising from such post-disclosure use can unquestionably be taken into account as part of the public interest in favour of disclosure. It would be surprising if the position were fundamentally different in relation to information protected by intellectual property rights within regulation 12(1)(c) just because in their case the rights happen to remain enforceable after the information has been disclosed. Again I do not think that such a difference of outcome can be the legislative intention".
Merpel adds: have I missed anything, or has this dispute rumbled on for all this time and risen all the way to the Court of Appeal without anyone spotting it? 

Mobile phones and health: the World Health Organization's view here

Will German cameraman's compensation claim get The Boot?

The IPKat is delighted to have heard once again from his friend and increasingly frequent contributor Thorsten Lauterbach (Aberdeen Business School, The Robert Gordon University), who has sent him this revealing account of a provision of German law that allows an under-remunerated author to squeeze more money out of a licensee who successfully exploits his work:

"The Sueddeutsche Zeitung newspaper has reported that famous cameraman Jost Vacano is seeking fair remuneration for his input into the making of "Das Boot" before the Munich District Court (Landgericht Muenchen I). Many will recall "Das Boot" (which both hit the cinemas as a feature-length movie as well as TV in a six-part series), a story about a German submarine during World War II. Vacano is responsible for the unforgettable pictures and feeling of claustrophobia, panic and hope, giving viewers the impression to be right among the movie's protagonists.

The technology available at the time the movie was made was not up to that sort of camera work, so Vacano (an electrical engineer by trade) had to undertake much innovative development work himself in respect of lighting and camera equipment. For example, he developed a "Gyroscope" which enabled him to rush through the narrow boat, steady camera in hand, while armoured like an American Football player. He also oversaw the putting together of a purpose-built camera which was required specifically for the making of the movie. He was nominated for an Oscar for his work and won various prizes/awards in Germany. His work is of global renown, having worked with directors like Petersen, Schloendorff and Verhoeven and helped to make blockbusters like 21 Hours at Munich, The Never-ending Story, Robocop, Total Recall, Hollow Man, Starship Troopers, The Lost Honour of Katharina Blum, Dear Fatherland Be At Peace, as well a s many TV productions.

In respect of "Das Boot", Vacano's claim is based on the German Copyright Act ("Urhebergesetz"). While he was recognised as joint author of the movie and he had conceded limited exploitation rights to producers Bavaria Film, he argues that the agreed remuneration for that concession was strikingly disproportionate to the revenue derived from the commercial exploits by Bavaria under §32a of the Act. His lawyer expanded on this in an interview with the newspaper, maintaining that according to that provision there had to be a strict differentiation between the input by Vacano and the remuneration for the concession of user or ownership rights. However, having been paid roughly £20 an hour (amounting to around £9,000 overall) did not leave a lot of scope for fair remuneration, considering the likely money made from commercially exploiting the movie worldwide. Targets of Vacano's legal action are, apart from Bavaria, the West German Broadcasting Station (WDR) in respect of commercially exploiting the movie and the series via TV broadcasting, as well as Euro-Video Ltd, a subsidiary of Bavaria and distributor of videos and DVDs. Vacano seeks access to the respective user licensing and related agreements which would then enable his legal team to calculate an exact amount of compensation, likely to reach a six-figure sum.

Bavaria have largely been tight-lipped but declared that they did not regard Vacano's claims as justified. They also argue that Vacano, at the time the movie was made, had received remuneration 40% above the tariff ceiling amount. In addition, they claim that the "break-even" point - i.e. the point when Bavaria starts to make a profit from commercially exploiting the movie, merchandise etc - has not yet been reached. His lawyer responded to the latter with traditional sarcasm, accusing Bavaria of employing "creative accountancy methods", saying that Bavaria will find it difficult to convince the court on 5 March that "Das Boot" has not yet made a profit. It remains to be seen which party is going to be sunk by the court.

Legal note: when authors grant to others the right to exploit commercially the work they created, they are usually the party in a much weaker bargaining position. This may be particularly so in case of young or unknown authors who, in order to become known by a wider audience, often agree to accept paltry sums by way of royalties or remuneration in return. In exceptional cases, German copyright law assists such authors to get a fairer share for their creative output. If the work proves to be a great success and the author’s remuneration originally agreed is totally incongruent with profits made by the right holder, a court may agree to adjust the contractual provisions.
Until 2002 authors had to rely on the “bestseller rule” contained in §36 of the German Copyright Act in order to claim better remuneration than was originally agreed in the contract with the right holder. Successful claims by authors, however, were very rare due to the high hurdle set by the provision: the claimant had to prove that his payment was “grossly disproportionate”. Many commentators argued that the law required reform, and German parliament eventually introduced §32a.

At first, the proposal was for the establishment of a general, inalienable right to appropriate remuneration for authors vis-à-vis any user of the respective work. However, this proved too revolutionary to get through parliament, so a watered down “fairness rule” made it on to the statute book: authors retain their claim based on contract law, but they would also be entitled to a settlement based on fairness for ex post compensation claims if there is an “exceptional/striking imbalance” between the rewards attained by the right holder and the corresponding reimbursement which was originally agreed as going the author’s way. While the provision applies to all contracts between authors and right holders, irrespective when these were agreed, the “exceptional imbalance” test only looks at amounts of money made since 29 March 2002, when the law came into force. §32a particularly applies to authors and joint authors of films which under German Copyright Law involves the principal director, the cameraman/director of photography, the cutter and others if they make a telling contribution to the overall creation of the work. The old (and still operational) §36 only allows authors of primary works to stake a claim – in relation to films that would be the author of the screenplay, soundtrack etc. So, if only that provision was available, Jost Vacano could not have been able to bring his action".
Many thanks, Thorsten, for this insight into remuneration for creators.  The IPKat wonders whether, in the light of the possibly confidential nature of the commercial data that will be discussed in evidence, this claim will be heard in camera. 

Cure your own claustrophibia here
Puss in Boots here

Saturday, 21 February 2009

Is it a Grinch, is it a Gruffalo ....? No, it's a Greffier!

Readers with long memories may recall that, in November 2008, Andrew Duff -- a Member of the European Parliament -- took it upon himself, at the instigation of the IPKat's friend Justin Watts, to champion the notion that the judicial output of the Court of Justice of the European Communities might be made available in the English language (see earlier post here).  

Right: the Gruffalo may scare little children, but the Greffier can ward off awkward questions from MEPs ...

The IPKat has since learned that Mr Duff received a response dated 11 February 2009 from one R. Grass, on headed notepaper that indicated that Mr/Mrs/Ms Grass was Le Greffier (at this point, Merpel dives for her dictionary and Tufty, with a superior air, points his paws to Babelfish).

For the record, Le Greffier says that more than 60% of Advocate Generals' Opinions appear in English. This means that somewhere close to 40% don't.  The Kats are poor statisticians, but they would love to know whether, of that 60%, (a) how many were the important ones and (b) how many were made available in English for any reason other than the fact that the AG had drafted them in English in the first place or because they must be issued in English as the language of the case. In other words, what percentage (and it must be less than 60%) is the court's translation service able to say it deserves credit for contributing?

Adds the IPKat, in the great tradition of fantastic creatures beginning with Gr, first we have the Grinch, the Gruffalo, and the Gryphon -- but now we have the Greffier ...  Are there any others?

Friday, 20 February 2009

A Curious Kat Speaks

The IPKat has commented twice recently (here and here) about the possible consequences of certain new regulations relating to the European Qualifying Examination, which are referred to here as the IPREE.  The IPKat has not, as yet, seen the fabled document in question and is getting a little puzzled as to why he keeps hearing second-hand accounts of what it allegedly contains, rather than seeing the document itself.  

The IPKat gathers, possibly incorrectly, that the IPREE have been already approved by the Administrative Council of the EPO.  And yet, the IPKat hears, the document itself still has the status of being 'confidential', so cannot be seen by the people to whom it will matter most. This is curious.

The IPKat would therefore very much like to know if such a document exists, and if it could be passed on to him so that he can communicate it to all who may be interested.

UPDATE: The IPKat's plea has been answered.  The document is not apparently the latest version, but is quite informative nonetheless.  Axel Horns has helpfully provided a summary on his own blog. 

Friday again

Don't forget to check out the Forthcoming Events feature in the IPKat's side bar. Currently there are 44 items in the list. Events you can attend for free are coloured BLUE.

The third edition of the MARQUES Designs Team Review of the First 400 Decisions on the Invalidity of Registered Community Designs has just been launched today, at the MARQUES midwinter meeting in Venice. The text of the review covers 47 pages: you can download it here. Illustrated coverage is given to the 63 OHIM Board of Appeal decisions that deal with appeals from the Invalidity Division (there were during the relevant period 80 Board of Appeal decisions, but 17 of them are from examination, not invalidity); you can download this material here. Finally, Annex C consists of a summary chart of decisions of courts in Member States (sitting as Community Design Courts or national courts) and Switzerland; this Annex is available here.  Well done, MARQUES Designs Team. This elite squad, led by David Stone (Simmons & Simmons) is to be commended for its huge effort to compile this data and make it available.

More news of designs in Europe -- OHIM has changed the way in which it examines priority documents before the registration of Community designs. No longer will the Design Department examine whether the subject matter of the priority application and the registered Community design application are the same. So if you send in a priority document that doesn't have any pretty pictures, like a German registration certificate, the examiner will still rely on it. This change, which is in line with the practice in most EU member states, will speed up the registration process. has proudly informed the IPKat that it now holds 3.5 million inventor records. You can check them out for yourself here.  According to Merpel, if you read one a day, that will take you, er, a very long time ...  

Meanwhile, freepatentsonline has equally proudly informed the same fictional feline that it has just logged its one millionth user.  Slightly alarmed, Merpel thought that logging was something best left to lumberjacks.   Anyway, you can check out freepatentsonline here.

A word of warning to air travellers in Germany comes from Patentanwalt Rainer Boeckelen, who writes from Munich -- home to the much-visited European Patent Office:
"The Higher District Court of Duesseldorf given a ruling (here) on the reimbursement of legal costs to the extent that business class flight tickets shall not be reimbursable.

... I think that the court disregards the actual situation. The costs of the economy class flight tickets referred to in the decision relate to a non-flexible ticket. The price difference between economy flex and business is actually 30 Euro on inner German flights.

Furthermore, the decision disregards the fact that the flights MUC -DUS -MUC are permanently fully booked. Thus the traveller does not only have the risk to pay for another ticket in case of a delay, but risks returning home late, or not at all, because of a delay in the oral proceedings. This is the only reason why I still book business, certainly not because of the extra sandwich. Frequent travellers can sing a nice song about the "Warteliste". Economy travellers rank as last on the list.

The court might forget that attorneys are usually not travelling for fun. And what happens to the economy ticket if the oral proceedings are cancelled? Who will pay for it?"

There's a conference coming up on 7 and 7 October in the lovely if sometimes expensive city of Vienna. It's the Conference on Patent Statistics for Decision Makers, “New Technologies, Patent Quality and Entrepreneurship”, organised by the European Patent Office and by the Organisation for Economic Cooperation and Development, with lots of other bodies cooperating too. Anyway, the organisers are now calling for papers. Topics of interest are
§ Emerging and evolving technology fields e.g. clean technologies: What do patenting trends imply for the rate and direction of the dissemination of new technologies. Do patents affect the price of clean technologies? As to how far do patents co-exist with new and alternative protection measures in these technology fields?
§ Patent quality: Too many different understandings of the patent quality exist according to the functional definition of quality. What are the statistically reliable elements of patent quality that can be identified? What are useful measurements and indicators?
§ Patenting fees: Are fees a good means to influence applicants' behaviour? What is the impact in terms of volume and quality of applications that procedural fees have? What is the fee sensitivity of applicants in general and of SMEs in particular? Does the current fee structure of the patent system spur innovation and steer applicants' behaviour?
§ Business dynamics and entrepreneurship: Entry and exit of companies and their relationship to technology; innovation strategies by companies (e.g. interfirm co-operation, merger and acquisitions).
§ Shining a light on uncertainty in the patent system: Patent applicants use increasingly the patent system in a way it was not designed for (e.g. increase pendency time of applications; enlarge the scope of claims etc.). Many of these critical practices lead to uncertainty for third parties and the society as a whole. What could be reliable indicators for patenting strategies in this respect?
§ Impact of economic crisis on patenting activity: Patenting is seen as an important element for innovation and economic growth but the recent economic and financial crisis gives reason to ask as to how far patenting activities are dependent on scarce resources (patenting budget). What can be learned from past crises in this respect and in how far react big companies and SMEs different with patenting activities in times of economic crisis?
Details may be found on the IPKat's left-hand side bar.

UK patent practice on human embryos post-WARF

The Intellectual Property Office in the UK issued a notice earlier this month on inventions involving human embryonic stem cells. The text runs as follows:

"Advances in stem cell technology raise questions about the patentability of:

* stem cells which have been isolated from human embryos, and
* processes involving these cells.
Uncertainty about what can be patented in this field may arise because the Patents Act 1977, as amended to implement Directive 98/44/EC on the legal protection of biotechnological inventions, does not directly address the patentability of human embryonic stem cells.

This Notice sets out the Intellectual Property Office’s general practice on the patentability of inventions involving such stem cells, although each case will be treated on its own merits in the light of all the relevant circumstances. Moreover, the Office's practice is subject to any future guidance from the UK courts.

This Notice supersedes a previous Notice of the same title issued in April 2003. It reflects an update in the Office's practice to take account of the recent WARF decision [briefly noted by the IPKat here] from the European Patent Office Enlarged Board of Appeal (EBoA), which has addressed the patentabilty of human embryonic stem cell cultures. The EBoA held as unpatentable those products (namely, human embryonic stem cell cultures) which at the filing date of the patent application in question could only be obtained from a method which involved the destruction of human embryos. However, the EBoA concluded that the decision “is not concerned with the patentability in general of inventions relating to human stem cells or human stem cell cultures.”

The Office has reconsidered its practice in this area in light of this decision.

(i) Processes for obtaining stem cells from human embryos

According to Paragraph 3(d) of Schedule A2 to the Patents Act 1977 uses of human embryos for industrial or commercial purposes are not patentable inventions. On this basis, the Office will not grant patents for processes of obtaining stem cells from human embryos.

(ii) Human totipotent cells

Human totipotent cells have the potential to develop into an entire human body. In view of this potential, such cells are not patentable because the human body at the various stages of its formation and development is excluded from patentability by Paragraph 3(a) of Schedule A2 to the Patents Act 1977. The Office will therefore not grant patents for human totipotent cells.

(iii) Human embryonic pluripotent stem cells

Human embryonic pluripotent stem cells, which arise from further division of totipotent cells, do not have the potential to develop into an entire human body, and can be grown in culture and the cell lines stored in cell banks. Although there is some opposition in the United Kingdom to research involving embryonic stem cells, a number of reports from influential UK political, medical and scientific bodies [1] in recent years have emphasised the enormous potential of stem cell research, including embryonic stem cell research, to deliver new treatments for a wide range of serious diseases. This indicates that on balance the commercial exploitation of inventions concerning human embryonic pluripotent stem cells would not be contrary to public policy or morality in the United Kingdom. Thus, the Office will continue to grant patents for inventions involving such cells provided they satisfy the normal requirements for patentability and provided that, at the filing or priority date, the invention could be obtained by means other than the destruction of human embryos".
The IPKat, who thanks his friend Sophie Maughan for spotting this, notes that nothing in the foregoing text affects the patentability of embryonic stem cells belonging to fictional cats.

More on human embryonic stem cells here
How to make good porridge here

Around the blogs

A stylish, sassy new blog on the block is Fashionista-at-Law, which you can find here. Not just an intellectual property blog, the opinionated, perceptive Fashionista is powered by a team of nine and it seeks to tie together the many different strands of law-meets-fashion. Naturally there's design and branding news, but this blog also covers insolvency, distribution, retailing issues, shop-lease policies, finance, outsourcing, corporate responsibility -- in short, a real shelfload of cans of worms that the fashion sector dare not neglect.

The admirable and ever-informative Intellectual Property Watch weblog has undergone a couple of discreet but welcome changes.

"Readers may have noticed a few changes ... which we hope will make us easier to use as we bring you the same great content like breaking and in-depth stories and expert views, plus new features like a microblog (the IP Burble), better subscription management, improved search capabilities, a new discussion forum, more podcasts and other products and services. For those signed up to our RSS feed, you will need to update your feed reader with the following new feed address:"

Improbably, The SPC Blog -- perhaps the most niche of all the IP niche blogs -- has just notched up its 300th email subscriber. With over 50 RSS feed-readers and over 1,500 casual visitors to the site each month, it seems that there is evidence that interest in supplementary protection certificates for patents is running at an all-time high.

Thursday, 19 February 2009

The EQEs and Languages

A couple of work colleagues of the IPKat's newly-installed amenuensis Birgit, Paul Briscoe and Daniel Weston, were wondering about what might be happening to the regulations for the European Qualifying Examination, and wondered if the IPKat's readers might be able to assist them.  He is, of course, happy to help and would in any case like to know as well.

The IPKat commented recently (here) about one apparently particularly divisive part of the proposed new implementing regulations (which the IPKat has still not yet seen in full: can anyone forward a copy to him?).  Another, not quite so contentious but nevertheless important, change has also been mooted, this time relating to the number of languages a prospective EPA will need to be familiar with when taking paper C (opposition).  

The question is whether the new regulations (available here, ici & hier) will require all the examination documents to be made available in all three EPO languages, and not just two as they are at the moment (meaning that at least one document will not be in your preferred language).  For English speakers, this generally means that you need to pick either French or German and hope that the document that turns out to be not in English is not too crucial (which, unfortunately for this Kat, it was last year). For those fluent in two of the languages this is, of course, not an issue so you can stop reading now.

The relevant bit of the current regulation (which applies to the 2009 exams) is Article 15, which states:

(1) The examination papers shall be drawn up in the three official languages of the EPO and all candidates shall receive them in all three languages.

(2) At least three separate and different documents on the state of the art shall be supplied with the examination paper mentioned in Article 13(3)(c). Such documents shall each be drawn up in one of the official languages and be accompanied by a translation into at least one of the other official languages. The three official languages shall always be equally represented. The aforementioned examination paper shall be accompanied by a glossary of the specialist terminology contained in the prior art documents in all the languages requested under paragraph 3.

(3) The candidates' answers should be given in one of the three official languages. Nevertheless, candidates may, if they so request when enrolling for the examination, submit their answers in another language being an official language of a Contracting State. In such cases, the Secretariat shall have a translation made in one of the official languages of the EPO and shall submit the translation together with the original answers to the appropriate examination committee."

The relevant bit of the new regulation (which will apply to the 2010 exams) is Article 12, which states:

(1) The examination papers shall be drawn up in the three official languages of the EPO and all candidates shall receive them in all three languages.

(2) The candidates’ answers shall be given in one of the three official languages of the EPO unless otherwise prescribed in accordance with paragraph 3.

(3) The IPREE may contain special provisions concerning the use of an official language of a contracting state other than one of the official languages of the EPO."
What the IPKat would like to know is whether this means that all the examination papers (including the state of the art documents in paper C) will be available in all three languages, or whether (as he suspects) there is something else specific in the IPREE that applies.  Can anyone help?  If anyone has a copy of the proposed IPREEs, the IPKat would be very interested to see them, and will happily make them available for all to see.

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