Operation Scuttle: what the experts say

The IPKat has received this message from MARQUES, which he feels is so important that he is posting it immediately:

MARQUES, the European Association of Trade Mark Owners, has recently become aware of the Commission’s now advanced proposals to “codify” the 1988 Trade Marks Directive (Directive 89/104/EEC) and the 1993 Community Trade Mark Regulation (Regulation No. 40/94). MARQUES generally recognizes the benefit of codified legal texts and thus supports the policy behind the Better Regulation Programme. However, in this instance, MARQUES finds that the disadvantages clearly outweigh the advantages.

The provisions of the Trade Marks Directive and the Community Trade Mark Regulation are an integral part of the daily professional life of trade mark owners and practitioners in Europe and elsewhere, both as to their substance and as to their titles. To codify and thereby to re-title these provisions will thus have a very notable legal and practical impact. In this regard, MARQUES observes that it has never received any request from its members to press for such codification, which clearly indicates that users of the system as it stands do not experience any problems with it. In addition, MARQUES notes that the Commission has indicated that it seeks to undertake a general review of the European trade mark system. This in turn may lead to new legislative proposals and further amendments of the present texts. The impending prospect of a general review clearly speaks in favour of postponing the present planned codification.

MARQUES therefore shares the views expressed by the European Communities Trade Mark Association (ECTA), whose Council resolved on 1 July 2008 to request the European Commission to withdraw these proposals from the agenda of proposed legislation and to request the governments of the Member States of the European Union to oppose the legislative proposals when they are presented for adoption in the Council of Ministers.

Unfortunately, statements like this are of no value at all unless sensible, concerned people act upon them. So the IPKat urges you: if you have any influence, or know anyone who has any influence, please support MARQUES and ECTA in their request to the Commission. And if you know who within the Commission is the individual whose job it is to deal with this matter, please tell the IPKat so that he can urgently contact him in person in order to press the professions' case.

Good news for Sir Cliff and eBay

Commission adopts extended performers rights

The European Commission has today adopted a proposal for 'extending the term of protection for recorded performances and the record itself from 50 to 95 years'. [Press release here]. This is said to benefit both performers and record companies. This is designed to 'bridge the income gap' when the sound recordings of performances made in an artist's twenties expires when they reach their seventies.

At the same time, the Commission appears to be tinkering with more general copyright protection for musical works. According to the press release:

In addition, when it concerns a musical composition, which contains the contributions of several authors, the Commission proposes a uniform way of calculating the term of protection. Music is overwhelmingly co-written. For example, in an opera, there are often different authors to the music and to the lyrics. Moreover, in musical genres such as jazz, rock and pop music, the creative process is often collaborative in nature. According to the proposed rule the term of protection of a musical composition shall expire 70 years after the death of the last surviving author, be it the author of the lyrics or the composer of the music.

The IPKat isn't entirely sure if he has read this correctly, but it looks like the Commission is proposing to lump together musical and literary authorial works set to music and grant a single term. If this is correct, this goes against our traditional notions of how such works are viewed, and the same logic (of treating both works as one) could conceivably apply elsewhere, such as in judging infringement.

The Commission is also launching a Green Paper on on the long-term future of copyright policy in the knowledge intensive areas. This will cover scientific publishing, the digital preservation of Europe's cultural heritage, orphan works, consumer access to protected works and the special needs for the disabled to participate in the information society.

The IPKat notes that this is another example of IP rights being expanded to the max. For one thing, record companies appear to be getting some sort of slice of the pie. The 95 year term is generous (though the Kat notes that this would be an increasingly common lifespan). He remains unconvinced that recording artists have a right to be remunerated for life. The seeming changes to authorial copyright also go for the maximum by extending protection of the whole work to the last to die of the group (previously different elements of the work could potentially come out of copyright at different times.


eBay wins in US

Things are looking up for eBay. A US District Court held on Monday that the internet auctioneer had not infringedTiffany's trade marks in failing to prevent fake Tiffany goods to be sold through its site. According to the New York Times, the court found that it was the responsibility of trade mark owners, and not online retailers, to police the online sites for infringers. The US decision runs counter to the emerging trend it Europe, where eBay has been found to have infringed in both France and Germany.

The IPKat can't help but compare this to Napster. The difference is though that eBay's business model isn't built on third party infringement. Quite the opposite - it creates bad will if consumers unwittingly purchase 'fake' goods. The whole thing's a bit of a mess though. Will this mean that US eBay will need to be blocked off to European consumers?

IP Fashion conference -- and competition!

The IPKat is supporting this year's conference, "Intellectual Property in the Fashion Industry", which will be held in Central London on 23 September. Team blogger Jeremy will be in the chair and there's an exceptionally strong cast of speakers. The principal attractions are as follows:

* IP in the Fashion Sector: an Overview, by Carina Badger, Macfarlanes;

* How far can trade marks protect fashion? Dawn Osborne, Rouse Legal;

* Design Right Issues: Sarah Wright, Olswang

* What sort of contract issues arise from dealing with freelance and employee designers? Vicki Salmon, Eversheds;

* Protection of Fashion in Continental Europe: Estelle Derclaye, University of Nottingham

* Distribution Strategies and Pitfalls: Christopher Stothers, Milbank, Tweed, Hadley & McCloy LLP

* Shows, Exhibitions and Other Horrors: What ACID Can Do: Dids Macdonald, ACID

* Can You Protect a Style? Jason Rawkins, Taylor Wessing

4.20 Stripes in the Sportswear Sector: adidas under the Microscope: Gino Van Roeyen, Banning, The Netherlands

You can read up on all the juicy bits of biographical detail relating to the speakers, as well as savouring the finer points -- the bullet points -- of each presentation if you click here.

To celebrate his sponsorship of this joyous event the IPKat is conducting a competition, the prize being FREE ADMISSION to this event. The rules of the competition are simple: all you have to do is to write a limerick which starts with the line "There once was a fashionable Kat". Please send it to the IPKat here, with the subject line "Merpel Limerick", by not later than midnight (IPKat Time) on 1 September 2008.

Right: wearing nothing but her necklace and her fur, Miffles wondered why the captions that accompany IPKat blog illustrations are always more titillating than the pictures that accompany them ...

Multiple entries are welcome and the best entries will be posted. Warning: if you are afraid that the publication of your name will cause embarrassment or dismissal from your employment, please tell the IPKat before he has posted it alongside your entry.

Simply simplistic

European Commissioner for Competition Policy Neelie Kroes, speaking last month at an OpenForum Europe Breakfast seminar, delivered a speech entitled 'Being open about standards', in the course of which she said:

"It is simplistic to assume that because some intellectual property protection is good, that such protection should therefore be absolute in all circumstances.

It is simplistic to assume that because standardisation sometimes brings benefits,
more standardisation will bring more benefits.

It is simplistic to assume that if the best approach is sometimes to base a standard
on proprietary technology, then that is always the best approach.

And it is simplistic to assume that we can fix on a standard today, without paying
attention to the risk of being locked-in tomorrow".

Indeed, says the IPKat, but he can't help wondering whether the somewhat hostile use of the word "simplistic" is reserved solely for the arguments in favour of intellectual property protection -- or does the Commissioner ever use the word to describe any of the propositions raised in support of competition policy?

G8 on IP

On thing that the G8 leaders, meeting in Japan, seem to have agreed on is that intellectual property is a jolly good thing. So good in fact that they want it better protected.

Speculation is rife, including in the Guardian, that they want to ratify an Anti-Counterfeiting Trade Agreement (Acta), which will empower border control agencies to search for intellectual property infringement. It is claimed that this may give customers officers the power to search individual users' laptops and MP3 players for illegal downloads.

A quick look at the Report of the G8 Intellectual Property Experts’ Group Meeting reveals other issues on the agenda. The group reaffirms its commitment to the merits of a 'well functioning and efficient' IP system. and outlines the following measures:

1. Advancing our anti-counterfeiting and piracy initiatives
2. Facilitating an efficient and fully functioning IP system conducive to economic
development (including patent law harmonisation)
3. Promoting the benefits of IPR as a development tool of economy and
innovation
4. Enhancing Cooperation with emerging economies through the Heiligendamm
Process

The IPKat is rather suspicious of anything which is so wholeheartedly in favour of IP, without mentioning the need to balance between the rights of owners, competitors and users, though he suspects anything so detailed would be beyond the ambit of a general summit of world leaders. As for individuals being stopped at customs, the IPKat reckons this would be too costly and time consuming to do on a large scale.

Friday furnishings

As usual, the IPKat begs to remind you of the 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page. It contains some fresh entries which you may not yet have seen. Don't forget to check them out.


Personal note: IPKat team member Jeremy owes a lot of people a lot of letters, both regarding the planned courses on How to Write Good IP and on research assistance for a forthcoming project. He's been so overwhelmed that he hasn't been able to write to everyone before going off for his summer holiday. It's only a week -- and he promises to get back to everyone when time permits, later this month. Oh -- before he goes, he can tell you that he has 'pre-posted' a small number of items that will appear on this weblog during his absence.


The IPKat has been nominated for one of the Computer Weekly Blog Awards for 2008 -- in the IT Law and Governance category. Voting continues throughout the month of July. If you think he's a deserving character and would like to vote for him -- or indeed if you'd like to vote for any of the other nominated blogs -- click here for a link to the Computer Weekly Blog Award site.


Last month the IPKat reported that Elizabeth Obisinya failed in her copyright infringement claim against writer and film-maker Sean Ellis, whose Cashback she believed he had copied from her own screen play of the same name. Faced with an order to pay £10,000 costs and to stop claiming that Ellis infringed her work, she now plans to appeal.


Stephen McClelland has emailed the IPKat to say that he has prepared a SlideShare presentation, 'Creative Content Online in the European Single Market'. He explains, "I am a publisher and support the International Institute of Communications, a non-profit membership organization that has just run a conference that featured this presentation. I think it is of considerable interest to anyone interested in E Commission copyright plans... " The slides illustrate a talk by Simona Martorelli, from the Information Society and Media Directorate General. Thanks, Stephen.

Bertelsmania comes to Luxembourg

They don't come much longer and more complex than Case C-413/06 P Bertelsmann and Sony Corporation of America v Impala, yesterday's decision of the Court of Justice of the European Communities in a case that, while not actually being an IP case, says a lot about how the ECJ views the concentration of IP rights -- even weak ones like copyrights.

The ECJ was asked to rule on an appeal against the decision of the Court of First Instance (CFI). That court, in a controversial decision, annulled the European Commission's approval of a 2004 merger between Sony Music and BMG. According to the CFI, the examination into whether there was already collective market dominance in the music industry, and whether that dominance might grow following the Sony BMG deal, was too cursory.

Yesterday the ECJ overturned the decision of the CFI and effectively supported the original decision of the Commission. The new judgment runs to 22,439 words. Fortunately, for those who like the easy way out, ECJ Press Release 49/08 has made things a little easier. This, in gently edited form, is what it says:

"... On 19 July 2004, the Commission approved the concentration of the global recorded music businesses of Bertelsmann AG and Sony (with the exception of Sony’s activities in Japan) into three newly-created companies to be operated under the name Sony BMG.

Following an action brought by Impala, an international association of independent music production companies, the Court of First Instance annulled that decision ... on the grounds that it was vitiated by manifest errors of assessment and was inadequately reasoned.

As a result of that annulment, the Commission carried out further review proceedings relating to that merger and approved the creation of Sony BMG for a second time on 3 October 2007, again without imposing any conditions or stipulations.

At the same time as those proceedings were taking place, Bertelsmann and Sony brought an appeal before the Court of Justice against the judgment of the Court of First Instance, claiming that that court had overstated the legal requirements to be applied in relation to a Commission decision approving a merger and that court’s role in carrying out judicial review.

... the Court of Justice rejects the argument put forward by Bertelsmann and Sony to the effect that there is a general presumption that a notified concentration is compatible with the common market [this was surely no more than an optimistic punt, or is there a serious basis to it?], which would mean that the standard of proof the Commission is required to comply with in the case of a decision approving a concentration is less high than in the case of a decision prohibiting a concentration.

None the less, the Court of Justice considers that the Court of First Instance committed a number of errors of law in its judgment.

First ..., the Court of Justice holds that the Court of First Instance did not merely use the statement of objections as a basis for verifying the correctness, completeness and reliability of the factual material which underpinned the contested decision, but treated certain of the conclusions set out in that statement as established, whereas those conclusions could, however, only be considered as being provisional.

Furthermore, the Court of First Instance committed an error in requiring, in essence, that the Commission apply particularly demanding requirements as regards the probative character of the evidence and arguments put forward by Bertelsmann and Sony in reply to the statement of objections and in finding that the lack of additional market investigations after communication of the statement of objections and the adoption by the Commission of the arguments in defence put forward by those companies amounted to an unlawful delegation of the investigation to the parties to the concentration.

The Court of Justice also considers that the Court of First Instance committed an error of law in relying on documents submitted by Impala on a confidential basis, since the Commission itself could not have used them for the purposes of adopting the decision, by reason of their confidential nature [it would be good if there were common and consistently-applied standards in the EU relating to issues like confidentiality, privilege and the admissability of evidence, but this is presumably not something that advocates of the single European market see as an immediate priority].

In addition, the Court of First Instance misconstrued the legal criteria applying to a collective dominant position arising from tacit coordination [are they legal, or really economic?]. The Court of Justice finds that the assessment of the relevant criteria in that regard, including the transparency of the market in question, should not be undertaken in an isolated and abstract manner, but should be carried out using the mechanism of a hypothetical tacit coordination as a basis. However, the Court of First Instance did not carry out is analysis of market transparency in the light of a plausible theory of tacit coordination.

Lastly, the Court of Justice rejects the arguments of Bertelsmann and Sony that a Commission decision approving a concentration can never be annulled on the ground of inadequate reasoning [yes, reasoning can be inadequate but the conclusion can still be correct]. Nevertheless, the Court of Justice considers that the Court of First Instance could not find that the Commission had failed, in this case, to comply with the duty to provide an adequate statement of reasons for the decision. In that regard, the Court of Justice notes that the decision showed the reasoning followed by the Commission in a way which subsequently allowed a party such as Impala to challenge its validity before the Court of First Instance. Furthermore, the Court of First Instance was aware of the reasons for which the Commission decided to approve the concentration and devoted numerous paragraphs in its judgment to the analysis of whether those reasons were well founded. It cannot therefore be claimed that it was impossible for the Court of First Instance to exercise its power of judicial review. ...

Since the Court of First Instance examined only two of the five pleas relied on by Impala, the Court of Justice considers that it is not in a position to give a ruling itself on the dispute. It is accordingly referring the case back to the Court of First Instance".

Right: not afraid of music concentration -- Kitty DJ (from Jasmine's blog - worth a look)


The IPKat notes that the ECJ sees its role as examination of the legal mechanisms by which the CFI reached its decision, not as reaching its own decision on the merits and substituting it for that of the Commission or CFI. That is why the judgment -- apparently quite long -- is really quite short.

BMG here
BFG here

Poetry in motion: database right back in the limelight

If you thought that the European sui generis database right was dead, welcome to the resurrection. Today Advocate General Sharpston delivered her Opinion in Case C-304/07 Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg, a reference for a preliminary ruling from the German Bundesgerichtshof.

Right: this picture says it all. Cats may come and go, sui generis database right refuses to die --- and poetry continues to haunt the living

The facts run like this. Professor Dr Ulrich Knoop, of the German Department of the Albrecht-Ludwigs-Universität Freiburg, directed the ‘vocabulary of the classics’ project, which led to the publication of the Freiburg Anthology, a collection of verse from 1720 to 1933, as part of this project, Knoop drew up a list of verse titles that was published on the internet under the heading ‘The 1,100 most important poems in German literature between 1730 and 1900’. This list, which served as a basis for the Freiburg Anthology, set out, in order of the frequency with which the poem is mentioned, the author, title, opening line and year of publication for each poem.

What was the professor's methodology? From some 3,000 published anthologies of poetry, 14 were selected. That selection was supplemented by the bibliographic compilation of 50 German-language anthologies by Ms Anneliese Dühmert under the title ‘Who wrote that poem?’, which yielded some 20,000 poems. Poems which were listed in at least three anthologies or were mentioned on at least three occasions in Ms Dühmert’s bibliographic compilation qualified for inclusion in the list. As a precondition for that statistical analysis, the titles and opening lines of the poems were standardised and a list of all verse titles compiled. Finally, the poems were referenced to the works in which they were published and the year of their composition was established. This task, completed under Knoop's direction, took around two and a half years and cost the University EUR 34,900.

Directmedia sold a CD-ROM called ‘1,000 poems everyone should have’, which appeared in 2002. Of the poems on the CD-ROM, 876 were from 1720 to 1900 and, of these, 856 appeared in the list of verse titles generated by the ‘vocabulary of the classics’ project. In selecting the poems for inclusion on its CD-ROM, Directmedia used the list of verse titles from the ‘vocabulary of the classics’ project as a guide. It examined attentively the selection made by Knoop, omitting some of the poems listed and adding others of its own choice. Directmedia took the actual verse texts from its own digital resources. Professor Knoop and the University took the view that, in reproducing and distributing its CD-ROM, Directmedia had infringed the copyright of Professor Knoop as compiler of an anthology and the related right of the University as maker of a database. They sought an order requiring Directmedia to desist from reproducing and/or distributing the CD-ROM ‘1,000 poems everyone should have’, as well as damages and delivery up for destruction.

The Landgericht ruled in favour of Knoop and the University. Directmedia’s appeal to the Oberlandesgericht failed so it appealed on a point of law to the Bundesgerichtshof. In its initial judgment the Bundesgerichtshof dismissed the appeal against the judgment for copyright infringement granted in favour of Knoop. It then proceeded to consider the appeal against the database infringement judgment granted in favour of the University. After hearing the arguments of both sides the bundesgerichtshof referred the following question to the Court:

"Can the transfer of data from a database protected in accordance with Article 7(1) of Directive 96/9/EC and their incorporation in a different database constitute an extraction within the meaning of Article 7(2)(a) of that directive even in the case where that transfer follows individual assessments resulting from consultation of the database, or does extraction within the meaning of that provision presuppose the (physical) copying of data?"

Elearnor Sharpston advised the ECJ to rule as follows:

"Extraction’ within the meaning of Article 7(2)(a) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases does not presuppose the (physical) copying of data;

– In order to constitute an ‘extraction’ within the meaning of Article 7(2)(a) of the directive, it is immaterial whether the transfer of data from a database protected in accordance with Article 7(1) of the directive and their incorporation in a different database takes place following individual assessments of the data after consulting the database".

The IPKat is still in a state of shock at seeing serious analysis of the provisions of the Database Directive again. He marvels anew at the verbosity and complexity of its minutiae; indeed, this is a perfect example of disproportionality between the simplicity of the facts and the complexity of the means of their resolution. Merpel however notes the comments of the Advocate General on the need for legal certainty:

"56. The referring court suggests that legal certainty is better served if (as it proposes) there is no ‘extraction’ if the database is used merely as a source of information, even where that use is particularly extensive. It argues that users who do not obtain their data directly from the database itself, but from derived sources, are often unable to tell whether (and if so, how) those data have been taken from a protected database, and whether the data adopted constitute a substantial part of a database or were obtained by unauthorised repeated and systematic extraction.

57. As I understand it, protection of legal certainty is here being deployed as an argument against holding that indirect copying of databases is an infringement of the sui generis right. The argument is, at first sight, not unattractive. However, the Court has already implicitly decided that considerations of legal certainty are not necessarily conclusive, inasmuch as it has already held that direct access to the original database is not necessary for there to be an unauthorised ‘extraction’. Hence, indirect copying of a protected database can indeed infringe the sui generis right".

World's best poems here
World's worst poems here
Best poems about cats here

IPKat nominated for blog award

The IPKat found out yesterday that he has been nominated for one of the Computer Weekly Blog Awards for 2008 -- in the IT Law and Governance category. He is very touched at the nomination and thanks whoever put him forward.

Voting continues throughout the month of July. If you'd like to vote, click here for a link to the Computer Weekly Blog Award site.

Own-it needs a content editor

The IPKat has been asked to post this advertisement and is delighted to do so.

"Own-it, based at the University of the Arts London, provides IP advice and support for creative businesses. This innovative business support service is highly succesful and recognised at government level for its work in its field. Own-it, which has 16,000 members, works with 10 law firms and over 30 creative industry organisations.

The Own-it website is the main point of access and communication with its audience. We now need someone with good journalistic skills and knowledge of IP who is full of exciting ideas and will help grow the site's content and increase its profile.

We are looking for a "self starter" to develop and source new content, update existing content, create case studies and edit the site. The web editor will need to have an excellent understanding of the relevance of IP and creative businesses and how to make this knowledge accesible and appropriate to the user. This role is part time and will be for 1 - 2 days per week.

If this is of interest please email info@own-it.org with the subject line WEB CONTENT EDITOR for further information".

IPKat team member Jeremy has spoken for Own-it in the past and was impressed with its caring commitment to the needs of its members. So, if you want to help people whose creativity and capacity to innovate exceeds their mastery of intellectual law and/or their range of business skills, this could be the part-time job for you. Merpel says, an added bonus is that you can do all your shopping in the Elephant & Castle shopping centre ...

Own-it here
Disown it here

Did MEPs vote to cut off copyright infringers' internet?

The Registry reports that Members of the European Parlioament (MEPs) may have accidentally included measures forcing ISPs to cut off internet access for those who infringe copyright through dowloading. The test calls for "cooperation" between ISPs and those "interested in the protection and promotion of lawful content". The trouble is, no one quite knows what "cooperation" means, including Malcolm Harbor, one of the MEPs responsible for the text. Today he said

"The interpretation ... is alarmist and scare-mongering and deflects from the intention which was to improve consumers' rights".

He has also promised to amend the text if it causes confusion.

The IPKat reckons that such vague language is an attempt to make everyone happy, which ultimately means that it will make no one happy. He also notes that it's not that hard to get and internet package and reckons that hardcore downloaders can probably find ways to get internet access, even if their original ISP cuts them off.

Balloons and oxymorons -- the Lords' decision

Further to this morning's earlier posts (see immediately below), the IPKat can now say a bit about the approach taken by the House of Lords to the proper test of inventive step in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. The facts, taken from the judgment of the trial judge, were as follows. Angiotech owned a European patent designating the UK for a stent used in coronary angioplasty. the basic idea of a stent is that, when it is inserted into a diseased artery in the course of angioplasty, a little balloon can be inflated which keeps the artery open.

Right: the humble balloon was part of the prior art -- they work best with taxol, though

Angiotech's patent claimed a stent coated with a polymer which was loaded with the drug taxol: this inhibited the development of tissue that might result in the gradual closure of the artery (a condition known as restenosis). Angiotech licensed the patent to Boston Scientific, which made stents. Conor, a competitor of Boston Scientific, sought to revoke the patent, claiming that it was obvious in the light of the prior art.

Pumfrey J allowed the application and revoked the patent. The mere fact that no-one had used stents like this before might make them new, but it didn't make them non-obvious. Given the state of the art, it was obvious to anyone who needed a stent of this nature that he would have to use taxol. Accordingly, in his view, the patent was invalid for obviousness. The Court of Appeal, for whom Lord Justice Jacob delivered the judgment, dismissed Angiotech's appeal.

Today the House of Lords took a different view, allowing the appeal and affirming the validity of Angiotech's patent. The opinion of their Lordships is contained in the speech of Lord Hoffmann, to whose words Lord Walker of Gestinthorpe could add nothing useful. Lord Hoffmann said as follows:

"2. Since the decision of the Court of Appeal, Angiotech and Conor have reached a settlement. Conor does not oppose Angiotech’s appeal. But a patent confers proprietary rights in rem and the validity of a patent cannot be established simply by a judgment in default of opposition. Your Lordships therefore invited the Comptroller General of Patents to assist the court in presenting what appeared to him to be the arguments against the validity of the patent. ...

3. There is still no European Patent Court. A European patent takes effect as a bundle of national patents over which the national courts have jurisdiction. It is therefore inevitable that they will occasionally give inconsistent decisions about the same patent. ... Sometimes one is dealing with questions of degree over which judges may legitimately differ. ... In this case ... there is a question of principle at stake. It is about how you identify the concept embodied in the invention which may constitute the “inventive step” for the purposes of article 56 of the EPC and section 1(1)(b) of the Patents Act 1977. ...

12. The Angiotech stent has been a great commercial success. It has the largest share of the market in drug eluting stents, which have very considerably reduced the incidence of restenosis.

17. ... It is the claimed invention which has to involve an inventive step. The invention means prima facie that specified in the claim: .... In the present case, the invention specified in claim 12 was a stent coated with taxol. There was no dispute that this was a new product. The question should therefore simply have been whether it involved an inventive step. As in the case of many product claims, there was nothing inventive in discovering how to make the product. The alleged inventiveness lay in the claim that the product would have a particular property, namely, to prevent or treat restenosis. ... So the question of obviousness was whether it was obvious to use a taxol-coated stent for this purpose. And this, as I have said, was the question to which the experts addressed themselves.

18. [Counsel for Conor] sought to avoid this question by watering down the claimed invention by reference to what he said were inadequacies in the specification. It did not contain information about human or animal tests which showed that it would work or provide enough information about doses and so forth to enable the skilled person to work it. It was therefore nothing more than an idea that taxol might work and any skilled person would have known that.

19. In my opinion, ... the invention is the product specified in a claim and the patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description. ...

28. The question was whether that was obvious and not whether it was obvious that taxol (among many other products) might have this effect. It is hard to see how the notion that something is worth trying or might have some effect can be described as an invention in respect of which anyone would be entitled to a monopoly.

Left: is this truly an oxymoron--or is it merely two individual contradictory statements?

It is therefore perhaps not surprising that the test for obviousness which Pumfrey J devised for such an “invention” was whether it was obvious to try it without any expectation of success. This oxymoronic concept has, so far as I know, no precedent in the law of patents. ...

37. The Court of Appeal upheld the judgment of Pumfrey J on the ground that the patent contained no “disclosure” saying that taxol was specially suitable for preventing restenosis. .... But there is in my opinion no reason as a matter of principle why, if a specification passes the threshold test of disclosing enough to make the invention plausible, the question of obviousness should be subject to a different test according to the amount of evidence which the patentee presents to justify a conclusion that his patent will work. ...

40. In the event, ... neither the judge nor the Court of Appeal answered what I consider to have been the correct question, namely, whether it was obvious to use a taxol-coated stent to prevent restenosis. ...

42. In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. ...

43. But Jacob LJ rejected this approach ... because “the patent has not in any way demonstrated that taxol actually works to prevent restenosis.” I agree with the Dutch court that patent law does not require such a demonstration. It was not a sufficient reason for not applying the ordinary principles of obviousness to the claimed invention. I would therefore allow the appeal".

It seems to the IPKat that Lord Hoffmann has sought to claw back the test of inventive step from the jaws of analytical oversophistication and to bring it back to basics. "Obvious to try" is a valuable tool for enabling patent lawyers to gauge the degree (if any) of inventive step in a patented invention, but it is only a means -- and not even an exclusive means, at that -- of assisting the court to reach a conclusion.

Right: this is how arteries get furred up ...

He also speculates whether his Lordship's comment at para. 12, relating to the patented product's great commercial success, throws a significant ray of light on Lord Hoffmann's thought-processes; in its day, "commercial success" was often a carefully deployed argument in favour of a patent's non-obvious nature. But the reality is that the test of inventive step is one that applies to the invention as patented, as embodied in its claims, not by the success or failure in the marketplace of any manufactured product which incorporates its functions. Merpel says, is that the sound of Champagne corks I hear from the celebrating Angiotech -- or is it the popping of stents?

Breaking news: Angiotech appeal allowed

Do Kats have moles? This one does, and his mole has just reported from the House of Lords that the United Kingdom's highest appeal court has just allowed the appeal in Conor MedSystems v Angiotech Pharmaceuticals and that the patent in dispute has been found valid.

Right: in order to penetrate the House of Lords without detection, the IPKat's mole was forced to disguise himself as a Law Lord (nb. you can buy this mole here).

Further details will be posted when they're available. Meanwhile, for the story so far click here for the original decision of the late Mr Justice Pumfrey and here for the now reversed decision of the Court of Appeal. The IPKat's comments on these decisions may be perused here and here respectively.

FOOTNOTE: the full text of the Lords' speeches can be found here

Ryanair takes on Dutch screenscraper

Fresh from The Post, via the smiling Deirdre Kilroy, comes the exciting story that cut-price (or is it cut-throat) economy airline Ryanair has commenced copyright infringement proceedings against Bravofly before the Commercial Court, Dublin, to prevent it from using Ryanair’s booking engine to sell flights online. Bravofly, a Dutch-based business with offices in Dublin, Switzerland and Italy, is allegedly practising the subtle skill of screenscraping, contrary to the published terms for the website's use.

Right: now passengers can save money by flying in the bus that takes them to their airport.

Ryanair’s website offers the ability to make flight bookings on its website to individual passengers only and opposes the practice of others piggybacking off its booking infrastructure in order to offer flights to customers without going on to its own website directly. By screenscraping Bravofly helps users of its own website compare prices and flight times for routes operated by a number of airlines. For this benefit Bravofly adds an administrative fee of up to €10 to the price charged by the airlines chosen by its web-users. Customers who use Bravofly's services miss the chance to read the ads and choose the offers on Ryanair's site.

The IPKat says this action raises serious issues for cut-price airlines in a recessionary economy, whose profit-margins may be squeezed by higher overheads and lower volume: a decline in click-throughs can make all the difference. Merpel demurs: what's sauce for the goose is sauce for the gander, she says. If screenscraping is so profitable, why doesn't Ryanair do it back to Bravofly?

Screenscraping here
Windscreen wiping here
Fly on the Windscreen here

Latest JIPLP

The July 2008 issue of Oxford University Press's flagship IP journal, the Journal of Intellectual Property Law and Practice (JIPLP), is now ploughing its stately course through letterboxes and on to the desks or breakfast-tables of excited recipients across five continents. Unlike the May issue, which was a trade mark special, which was an IP pot-pourri, the July issue has a strongly patent flavour to it.

Right: there's also a current intelligence note, ‘chocolate’ unregistrable for portable communications apparatus', by Hong Kong IP experts Mena Lo and Emma Tsang

Features in this issue include

* "US patent exhaustion: yesterday, today, and maybe tomorrow" by the four-man team of John C. Paul, Kia L. Freeman, Bart A. Gerstenblith, and Jessica R. Underwood (abstract here);

* "Crystal clear: a landmark pharma patent victory in Japan", a nice law-meets-techie-stuff feature from John A. Tessensohn and Shusaku Yamamoto (abstract here) and

* a really challenging piece on the scope of trade mark protection by Robert M. Kunstadt, "Trade marks: not just for the rich and famous" (abstract here).

The editorial for this issues, "New Leader, New Problems", not unsurprisingly alludes to the condition of the World Intellectual Property Organization and the tasks facing its soon-to-be Director General Francis Gurry. You can read the editorial to this issue in full, and at no cost, here.

Read all the editorials of the past twelve months, here
Full contents of this issue here
For free sample, click here; to subscribe, click here; to write, click here
50 most-read articles since 2005 here