|Just a copyright-related research ...|
Wednesday, 29 March 2017
GS Media and its implications for the construction of the right of communication to the public within EU copyright architecture: a new article
|Opening the door for new legislation,|
the EU Trade Secrets Directive may prove
to create a busy year for Member States
"In Denmark, the EU Trade Secrets Directive which came into force on 5 July 2016 (as reported on the IPKat here), will be implemented in an entirely new and independent act on trade secrets.
Although we have yet to see the proposal for the new act (which we cannot wait to get our paws on), the implementation of the directiveLike in the US, these are exciting times for trade secrets in Europe. The AmeriKat will be back to report on other Member States efforts in implementing the EU Trade Secrets Directive.
- will introduce a legal definition of trade secrets (which does not exist in Denmark today);
- is expected to improve the right holder's possibilities of being awarded damages in case of unlawful acquisition, use or disclosure of trade secrets, as it follows from Article 14 of the Directive that the court when setting damages should also be able to take into ac-count any unfair profits made by the infringer, which is not possible under the current rules (as opposed to damages for IP infringements governed by the IP Enforcement Directive);
- is expected to lead to new, clearer rules concerning preservation of confidentiality of trade secrets in the course of legal proceedings. The present rules do not allow for a guarantee of confidentiality of trade secrets submitted in court proceedings and do not allow for limiting the access to trade secrets to a limited number of persons; and
The proposal for the new act is supposed to be published just before or after the summer break, and the final act is expected to be adopted with effect as of 9 June 2018, i.e. the date of the deadline for implementation of the directive."
- may make it possible to obtain measures for preservation of evidence (search and seizure orders), if the right holder can render it probable that an unlawful acquisition, use and/or disclosure of trade secrets has occurred or will occur, which is today only possible in case of infringement of intellectual property rights (all Kats know that the difficulties connected with obtaining the necessary evidence are, in practice, one of the main reasons right holders often decide not to pursue misappropriation of trade secrets. During a meeting at the Patent and Trademark Office, these GuestKats therefore meowed that the office should consider to either extend the existing rules on preservation of evidence regarding intellectual property rights or adopt a similar set of rules, which the office promised to consider).
|Top FIVE PCT applicants 2016|
Overall, applicants based in the United States maintained their number one ranking for the 39th year running, accounting for roughly a quarter (24.3%) of the 233,000 applications filed under the PCT in 2016 – itself a 7.3 percent year-on-year increase – followed by applicants in Japan (19.4%) and China (18.5%), with the latter driving the overall growth in demand. If this current trend continues, China will overtake the U.S. within two years as the largest user of the PCT System. Germany and the Republic of Korea with 18,315 and 15,560 applications were ranked fourth and fifth, respectively (Annex 1).
In total, Asia accounted for 47.4% of total PCT applications, just short of the combined share of Europe (25.6%) and North America (25.3%).
Among the top 15 origins, China recorded extraordinary growth (+44.7%), while Italy (+9.3%), Israel (+9.1%), India (+8.3%) and the Netherlands (+8%) also saw strong growth rates. In contrast, Canada (-17.3%) – for the second consecutive year – saw a substantial decline in filings, linked to declining applications from RIM/Blackberry and Nortel.
ZTE Corporation (4,123 published PCT applications) and Huawei Technologies (3,692) – occupied the top two spots in the list of top PCT applicants, with ZTE moving up two spots to push Huawei out of the leader position.
|IPKat is adapting|
Filings for design protection under the Hague System increased by no less than 13%. Germany with 3,917 designs was the largest user of the Hague System, followed by Switzerland (2,555). Fonkel Meubelmarketing of the Netherlands (953 designs) overtook Samsung Electronics of the Republic of Korea (862) as the largest user of the Hague System (if you never heard of Fonkel Meubelmarketing - me neither. They do not even have a website. It appears that they do business as Maxfurn). The Republic of Korea’s LG Electronics with 728 designs was in third position, followed by Swatch of Switzerland (383) and Procter & Gamble of the U.S. (348).
The EPO has released its annual report 2016 a while ago, see here for key figures. Beware of the "European patent filing" indicator, which grew by 6.2%. European patent applications (i.e. only including PCT applications that entered the regional phase) are down 0.4%. Philips is the largest filer before Huawei and Samsung. Granted patents are up a massive 40%.
Patent statistics are to be taken with a grain of salt. For starters, US companies appear to rely less on the PCT than Asian countries, so PCT statistics may not reflect their patenting activities. But the increase in Asian, specifically Chinese, filings shows from where the wind will be blowing. On the (domestic) Chinese patent boom see IPKat post here.
|RoboKat at your service|
Monday, 27 March 2017
"On March 2011, the WIPO Handbook on Industrial Property Information and Documentation recommended to National and Regional Intellectual Property Offices to standardize the presentation of priority application numbers in order to identify each application received. The recommended standard would make it possible to link patent families in databases and search system and would thus make it easier for users of patent information as well as for Examiners during the examination process.
The recommendation consisted of standardized priority application numbers to be used for filing abroad under the Paris Convention as follows:
"The country code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, orUntil several months ago, the Mexican Patent Office (MPO) had not acted on the WIPO recommendation for patent applications filed under the Paris Convention, with the result that the priority data listed in the national applications were accepted without regard to whether the WIPO recommended standard appeared on each certified copy of priority claimed submitted at the MPO. That meant that no objections or office actions were issued requesting that the priority data should correspond to the WIPO recommended standard.
“The organization code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, wherein
XX: Two letters country/organization code
NNNNNNN: Serial Number in accordance with the worldwide application and priority format
However, since mid-2016, the MPO has embraced the standard outlined in the WIPO Handbook. As a result, several office actions have been issued requesting amendment of the priority data in accordance with the information disclosed in the priority document.
According to the MPO, the new practice will ensure that priority data contained in patent filings under Paris Convention comply with the WIPO standardization criteria with the resulting benefits as described above. The MPO requires that applications filed in 2016 and thus far in 2017 be amended to follow the WIPO recommended standard and applicants can expect an office action if the priority application number does not follow the standard.
In light of the above, applications filed in Mexico under the Paris Convention should keep these changes by MPO in mind."
No admission after the show has started - transfer of priority right must occur prior to filing of subsequent application (T 577/11)
to Article 87(1) European Patent Convention, any person who has duly filed, in
or for any state party to the Paris Convention or any member of the WTO, an
application for a patent or his successor
in title, shall enjoy, for the purpose of filing a European patent
application in respect of the same invention, a right of priority during a
period of twelve months from the date of filing of the first application
(emphasis added). The reference to the "successor in title" in Article 87(1) EPC is generally interpreted as
requiring a transfer of the right of priority before the filing of the
subsequent application (T 205/14, Reason 3.4).
In T 577/11 of 22 March 2017, Board of Appeal 3.2.05 confirmed this. Transfer of the priority date had undoubtedly taken place in this case, but three days after the filing of the subsequent application. The applicant argued that Article 87(1) EPC did not require that the transfer of the priority right had to occur prior to the filing of the subsequent application. The Board, based on the wording of Article 87(1) EPC and noting that its interpretation was in line with Article 4A(1) Paris Convention and the legislative history of both the relevant provisions of the Paris Convention and the EPC, rejected the appellant’s argument. The transfer had to had taken place by the time the subsequent application was filed.
The Board notes that German case law considers the date the declaration of priority with the particulars relating to the priority application is filed – which can be done up to 16 months from the earliest priority date claimed (Rule 52(2)), and therefore up to four months after the filing of the subsequent application – as the relevant date (German Federal Patent Court, decision of 15 February 2012, 5 Ni 59/10 (EP), Reasons, point I.2, and decision of 28 October 2010, 11 W (pat) 14/09), Reasons, point II.B.2(a)(cc)). In the case at hand, Rule 52(2) was not applicable because the application that led to the patent was a PCT application. Under Rule 4.10(a) PCT, the declaration was to be made on filing the subsequent application, which it was. Nonetheless, the Board indicates that even if the present application had not been a PCT application, it did not consider the German approach convincing, as the filing of the declaration of priority was a “mere formality” that did not change the relevant date, which was the filing date of the application.
The decision does not come as a great surprise. There has long been a consensus that the transfer of a priority right must occur prior to the subsequent filing. However, given the careful reasoning and the amount of space the Board dedicates to the issue, T 577/11 may be considered the leading case on this for the coming years. The take-away for applicants and their representatives is that they better get those assignments signed prior to filing the subsequent application, or else the curtain falls on the priority claim.
Sunday, 26 March 2017
|IP is gr-r-reat!|
IP, unsurprisingly, has a role to play. There are multiple direct references to IP in the strategy:
- A commitment to commission research on how institutions commercialise their IP, looking licensing and spin outs, and how practices vary between different institutions (institution here generally meaning universities)
- A commitment to reviewing how the IP system maximises incentives for collaboration and licensing
- New IPO representatives in the the Northern Powerhouse and the Midlands Engine
- The role of IP in innovative public procurement
- The independent review in to the UK creative industries which will include the role of IPR
Non-UK readers may curious as to the "Northern Powerhouse" and "Midlands Engine." Every good economic spin needs a catchy name (see Asian Tigers, Celtic Tiger). [Merpel is very upset the UK monikers are no longer of the feline persuasion. She suggests instead the Northern Panther and Midlands Manx.] Northern Powerhouse refers to the economies of the North England cities of Manchester, Liverpool, Leeds, Sheffield and Newcastle; Midlands Engine is the economy of the area between the South of England and the North. The focus on these areas is likely in recognition of the need to decentralise the UK economy away from London, although Scotland, North Ireland and Wales do not seem to have received the same treatment.
Friday, 24 March 2017
"What is this thing called love, this funny thing called love"? And while you're at it, what is a covenant not to sue?
Some topics in IP attract more attention than they deserve, while others are underappreciated. Think about all the academic ink that has been spilled about genericism in trademarks; it seems that the more that is written, the less likely it is that genericism will be found. To the contrary is IP licensing. Most Kat readers can anecdotally confirm that IP licensing is wide-spread. However, there is a surprisingly thin corpus of commentary, with the result that certain licensing practices are, frankly, not well-understand.
A good example of the latter is the notion of “covenant not to sue” (also referred to as a “nonassertion agreement”). Again, anecdotally at least, it seems that a covenant not to sue is frequently used, especially in patent and trademark licensing. Notwithstanding, this Kat has not found a satisfactory way of defining, or at least describing, what the covenant is. “Come on Kat”, you might say, “the fault lies with you.” Perhaps. But this Kat would argue that the problem rests with the notion itself.
Focusing on patents, consider that the statutory treatment of licenses and licensing varies greatly. In the U.S., the subject is largely absent from the patent statute, with no real treatment of the differences between an exclusive and a non-exclusive license. By contrast, take a country like Israel, whose patent statute provides (at least a partial) definition of exclusive and non-exclusive licenses, with special attention to the right to sue. Here, as well, however, there is no statutory reference made to a covenant not to sue. Varieties of these two approaches can be found in most other jurisdictions; what seems common to all is that none provides a real definition of what is entailed in a covenant not to sue.
“Not so fast, Kat, there is a body of understanding about what is meant.” Let’s explore this claim. A useful book on patent licensing, at least under U.S. law, is Drafting Patent License Agreements, by Brian Brunsvold and others (now apparently published in its 8th edition). The lead paragraph on their brief treatment of the topic in the 6th edition (written by Brunsvold and Dennis O’Reilly) states as follows:
“A patent owner may contractually agree not to assert the patent. Such an agreement, interchangeably known as a nonassertion agreement or a covenant not to sue, is used where a nonexclusive license is in inappropriate or is to perceived have unacceptable consequences.quitclaim deed in real property, where the grantor does not warrant that it has any rights in the property). So far, so good—if the parties want to bind themselves in this fashion, they should be allowed to do so.
The grantor of a nonexclusive license impliedly represents possession of the power to grant the license and necessarily represents the power to impose the equivalent of a lien on the patent. Similarly, the grantor of a covenant not to sue will be presumed to have a right of action against the grantee at the time the covenant is granted. Since a patent application does not give its owner a right of action, a covenant not to sue cannot be granted until the patent issues. Notwithstanding a presumption that the grantor has a right of action, i.e., owns or had the right to enforce the patent, good practice suggests obtaining an express representation to that effect.
A covenant not to sue is a promise of the grantor that does not necessarily future owners of the patent. Thus, even where the grantor owns the patent at the time, the grantor may assign it to another who, absent a contractual provision, would not be bound by earlier covenants not to sue. The recipient of such a promise, therefore, should obtain an express representation of ownership by the grantor and should contractually require the grantor to impose the same promise on any future assignee of the patent” (footnotes omitted).
What this Kat does not understand, however, is the suggestion by the authors that express representations be given by the grantor regarding ownership and assignment of the covenant. If these explicit assurances are contractually given, what is the difference between a non-exclusive license and a covenant to sue, whatever the caption? Consider the sample clause provided by the authors—
“Company A hereby covenants not to sue Company B under any patent listed in Exhibit A for infringement upon any act by Company B of manufacture, use, sale, offer for sale, or import that occurs after the effective date of this Agreement. Company A hereby represents that it owns full and equitable title to each patent listed in Exhibit A. Company A further promises to impose the covenant of this paragraph on any third party to whom Company A may assign a patent listed in Exhibit A.”What makes this provision a covenant not to sue, as opposed to an alternative formulation of a grant of non-exclusive license? This Kat has no answer.
See also, “When is a licence not a licence? When it’s a covenant not to sue?”, IP Draughts, 26 January 2013, here.
MARQUES Class 46 (trade marks)
The 1709 Blog
"Coffee Cat" was the punny headline that caught reader Chris Ellins's (Westminster Law School) eye. Chris wrote in to let us know that something was brewing in Swiss Cottage. In a Doppio-and-Goliath fight, Doppio had lost. Yes, a coffee kiosk named "Star Box" was being forced to change its name following action by the coffee giant Starbucks. After the fight, there were grounds on the ground.
Looking under the lid of the matter, there are some interesting twists. According to the Camden New Journal, Nasser Kamali, the owner of the Camden Star Box, named his coffee kiosk in honour of Marxism, “I do believe in Marxism and that is very important to me. That is why I had the red star logo on my stickers. I am in a box. It’s my red, star box.” Alas, this got Kamali into hot water with a global multinational corporation, and in the name of keeping its brand strong, Starbucks requested he no longer use "Star" and change his logo (which contains a red star). Kamali has complied.
|Photo by benho.sg|
Yet "Star Box" itself is not original. Oddly enough, this Kat has history with Star Box, and Starbucks. Her coffee roots go back to high school in the 90s in Washington State, when having a bumper sticker that said, "I drive espresso because I am latte" was considered cool, and Starbucks was a local business with less than 150 stores. The mermaid logo was only partially clothed.
Fast forward to 2007, and now both a coffee and an IP fan, this Kat was delighted when she came across "Star Box" in Teheran, Iran. She sent a photo to IP Professor Susan Scafidi's Counterfeit Chic blog. It then got picked up in 2008 in an Iranian forum, again in 2010, hit Reddit in 2011, made it to Buzzfeed in 2014 and NewsDay in August 2015. The image is currently on at least 30 websites, all pointing to the amusing similarities with Starbucks."Star Box" clearly has brand appeal. Curiously, Kamali is Iranian, perhaps this Kat's photo caught his eye? [Merpel would also like to note that the Katonomist now uses this story in lecturers to demonstrate how digital content is often copied without attribution or incorrectly attributed.]
|Buzzfeed screen shot, Photo |
incorrectly attributed to Reddit
While this make look like a heated and strong debate, the distilled version is simply large brand versus small brand. This Kat has previously written about the interaction between lookalikes and brands. It's hard to imagine any of Star Box's London customers mistook the kiosk for Starbucks. Using a homonym of Starbucks is useful for attracting attention, and Star Box has benefitted Kamali, both in current new coverage and customer appeal. Starbucks's pursuit of Star Box may have some negative impact on the Starbucks brand, but could have deterrent effects. The public pursuit of Star Box could dissuade lookalike brands, which may save Starbucks potential legal costs - assuming that legal action is necessary. However, the pursuit of lookalike brands for such a dominant global brand is questionable, and Starbucks recently lost a case to a small coffee roaster named Charbucks. The economic impact is unclear.
And now, for gratuitous conspiracy theories. Could this be the start of a global political takedown of American capitalism - starting with the tarnishment of coffee brands? Is Big Tech making "tarnishment" autocorrect "garnishment" to annoy human beings whose jobs will be replaced with machines?
However, Kamali isn't wasting time over spilled milk - he's back to selling coffee.