For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 2 March 2015

Monday miscellany

Finding Stockholm wasn't so hard but, try as
she might, Gina couldn't locate that Brewery ...
Forthcoming events. Some readers don't take the trouble to check out the IPKat's Forthcoming Events page since they assume that, with so many of the Kats being based in England, it's only English events that are on the list.  This is not so!  The list contains plenty of non-UK events.  For example, C5's Pharma & Biotech Patent Litigation Forum (here) takes place in Amsterdam's Hotel Okura on 19 and 20 March. Less than a week later the Nordic IP Forum assembles in The Brewery, Stockholm, on 25 and 26 March 2015: details here. Later in the year the Office for Harmonisation in the Internal Market (OHIM) is holding an IP Mediation Open Day in Alicante on Monday 15 June 2015. If you are interested, you can find all the details here.  The first two of these events offer handsome registration fee discounts to IPKat readers; the third is free.

On the subject of forthcoming events, let's not forget the Queen Mary Journal of Intellectual Property monthly list of events for March, which you can peruse here.  If nothing else, this shows that the number of IP events coming up seems to be very much on the increase.

Better late than never. It seems that the Court of Justice of the European Union's Translation Unit has finally managed to catch up with itself. This Kat learns that the English language versions of Advocate General Bot’s Opinions in Cases C-146/13 Kingdom of Spain European Parliament, Council of the European Union and C-147/13 Kingdom of Spain Council of the European Union were finally made publicly available last Thursday. These Opinions, delivered on 18 November of last year, deal with such sensitive topics as the use of the enhanced cooperation mechanism for the establishment of a unitary patent system, the question of effective control of a non-EU institution, non-discrimination and judicial review. For a summary of the issues raised and the Advocate General's take on them, see this earlier Katpost here.

Fashion event in Soho. Katfriend Tania Phipps-Rufus writes to tell this Kat that she is hosting an event at Condé Nast College of Fashion, 16–17 Greek Street, Soho. Perhaps unsurprisingly the subject is "Fashion, Law & Business", and there is a particular focus on intellectual property as it affects the fashion sector. The event will be on 18 March at 6.30 - 8.30pm. Tickets for the event are available here. There are Super Early Bird and presumably ordinary Early Bird reductions for early registrants but, since the very most it can cost you even if you miss all the deadlines is only £20, it sounds agreeably affordable.

Burk's Law. Not to be confused with Burke's Law,  this year's three LSE Leverhulme Public Lectures are being delivered by Professor Dan Burk over the next two weeks (between Friday 6 and Friday 13 March) at the London School of Economics.  The topics?  The Gene Patent Controversy [nothing to do with Burke's Law star Gene Barry, notes the IPKat], The Software Patent Puzzle and Patenting Information Technologies. These are public events and no tickets are required. Just turn up and look intelligent. Click here for details.

Around the weblogs. Always full of surprises, Mark Anderson's IP Draughts explains why, if you are looking to register a company name, you can register "OMG F**K :–) Limited" straight off but need permission before you can register "Sheffield University Patent Licensing Institute".  IP Finance hosts a request to participate in a short survey on patent ownership being run by Aistemos. On SOLO IP, Barbara Cookson points out that the OHIM Board of Appeal decision in Canal Plus, designed to prevent unused marks being used to oppose later registrations, does not yet seem to part of UK law.  

Struggling to understand trade mark infringement issues? Here's my checklist

IPKat readers might remember that a few months ago I posted my Copyright Infringement Checklist, ie a list of the main aspects to consider when addressing potential infringement issues. 

I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.

Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases. 

Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.

Any feedback/suggestions on how to improve it are - as usual - very welcome.

ROSATI TRADE MARK Infringement Checklist*
Main aspects to consider when addressing potential infringement issues

Trade mark infringement is about 7 essential things

(1)  Use (NB: non-exhaustive list!)[1]
                            i.          Person affixes sign to goods or packaging thereof;
                          ii.          Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2] or offers or supplies services under the sign, or offers or supplies services under the sign;
                         iii.          Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);
                         iv.          Person uses the sign on business papers or in advertising, including comparative advertising.[3]

(2)  Without consent[4]

(3)  In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]

(4)  In the relevant territory
·        UK for UK trade marks, EU for Community trade marks;[6]
·       For online uses, Bently and Sherman hold the view that targeting required.

(5)  Of a sign
·        Same hyphoteses as in relative grounds for refusal of registration:
1)  Identical marks for identical goods/services[7];
2)  Identical marks for similar goods/services[8] + likelihood of confusion (including association)[9];
3)  Similar marks[10]  for identical/similar goods/services + likelihood of confusion (including association);
4)  Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]

(6)  Where such use affects one of the functions of the registered trade mark[12], eg:
·        Indication of origin;
·        Quality;
·        Advertising;
·        Investment.

(7)  And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)
·        Trade mark should be removed from register;
1)  Because it is invalid = should have not been registered in the first place
                                                                    i.          Absolute grounds for refusal of registration, eg lack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;
                                                                  ii.          Relative grounds.[13]
2)  Because it should be revoked
                                                                    i.          Non-use
·        Within 5 years from registration;
·        Use suspended for uninterrupted period of 5 years.
                                                                  ii.          Trade mark has become generic;
                                                                 iii.          Trade mark used to deceive consumers.
·        Use of another trade mark (UK trade marks only);
·        Use of one’s own name/address;[14]
·        Descriptive use, including use to indicate intended purpose;
·        Comparative advertising[15];
·        Local use;
·        Exhaustion;
1) put on the market[16]
2)  “without consent[17]
3)  no “legitimate reasons
                                                                    i.          Alteration of goods
                                                                  ii.          Change of packaging
                                                                 iii.          Change of mark
                                                                 iv.          Advertising
·        Freedom of expression (NB: no codified defence as such).

* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.
[1] Key case on notion of “use” is Google France.
[2] Key case on notion of “under the sign” is Céline.
[3] Key case on comparative advertising is L’Oréal.
[4] Cf trade mark exhaustion sub (7).
[5] Key cases on notion of “use in the course of trade” are Arsenal and Céline.
[6] Use in one Member State alone can suffice: see DHL.
[7] Key case on notion of identity is Sadas.
[8] Key case on notion of similarity of goods/service is Canon.
[9] Key case on likelihood of confusion is Puma.
[10] Key case on notion of similarity of signs is Puma.
[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon (use of a trade mark as embellishment) Intel (notion of “link”), L’Oréal, Interflora.
[12] Key case on functions of a trade mark is Interflora.
[13] See supra sub (5).
[14] Key case is Céline.
[15] Key case is L’Oréal.
[16] Key case is eBay.
[17] Might be problematic when a licence is in place: see Dior.

OHIM and the Midas Touch: how can a EU agency stop making too much money?

New OHIM logo?
"The more the wealth, the more the worry". It is strange but true but affluence can bring as many headaches as poverty, both for individuals and, within the context of intellectual property, for institutions that administer IP rights.  In this context Katfriend, former MARQUES chair and current trade mark guru Tove Graulund has some pertinent comments to make about the problems facing the Office for Harmonisation in the Internal Market (OHIM), a body which has never been able to shake off the Midas Touch.  This is what she has to say:
"As many readers of this weblog will know, OHIM has too much money. This is as much a blessing as a curse. OHIM is a self-financed EU agency and, according to the basic Regulation, its fees must be fixed at a level that ensures that the agency's budget is balanced. Consequently, even if this is not explicitly stated, any surplus or deficit should be avoided.

Community trade mark *CTM) fees have been reduced twice (in 2005 and 2009), but to no avail. The money just keeps coming in and the reductions have not been enough to deal with the accumulated surplus. In order achieve a balanced budget, the focus has essentially been to accelerate consumption of reserves by increasing spending.

The problem is, and has been, that the setting of the fees is a political hot potato. The CTM fees will inevitably have an influence on the attractiveness of filing national trade mark applications in the EU. At present the CTM and registered Community design (RCD) fees are determined via the "comitology" procedure that involves the Council and the European Commission, based on input and proposals from OHIM's Administrative Board and Budget Committee (ABBC). Typically, the Member State representatives at the ABBC come from the national offices [at this point, Merpel's ears prick up. Does this mean that they are the same folk who sit on the Administrative Council of the European Patent Office and who are, she imagines, far too preoccupied with patent matters to spare too much thought for an organisation such as OHIM, which gives every impression of running fairly smoothly as well as profitably?].

Never mind the closed doors,
what about the closed ears?
At the moment the CTM Regulation and the Directive on approximation of national trade mark laws are under reform, and the negotiations have reached their final stages. The reform was initiated as a result of inabilities to reduce the accumulated surplus, and the same issue is one of the stumbling blocks to finalising the negotiations. The question of how the fees are set and who can propose and decide on the fees is crucial to the future of IP offices in Europe, and it is very likely that there is a bit of a power struggle going on behind closed doors between the Commission, the Parliament and the Council represented by national offices [the IPKat does wish that these struggles were not taking place behind closed doors. All of these people, without exception and however much they earn, are public servants or elected representatives who are answerable to him and his fellow EU citizens. These closed-door discussions are hardly about vital issues of national security, when all is said and done].

One proposal on how to deal with the OHIM surplus is to put in place a distribution of funds to national offices and other national bodies that deal with trade marks and designs, i.e. the courts and customs authorities. The question is whether this is legal. As one example, access to justice is free of charge at EU level. If fees are kept at a level where a surplus is generated and this surplus is partially aimed at financing EU courts, this could be viewed as the introduction of an appeal fee, which would constitute a discriminatory measure only affecting holders of EU trade marks and design rights.

On the other side of the spectrum, the user organisations have not been able to agree on or present a joint proposal of how to deal with the surplus. It is probably partly due to the fact that the CTM filing fees are generally thought of as reasonable, partly that some brand owners wish to strengthen the fight against counterfeiting and partly due to the fact that national offices are not perceived as being particularly receptive to ideas that might go against their interests.

The Graul-tiger was
a bravo cat ..."
One interesting document has just surfaced – almost a half year since it was presented to the European Parliament, this being a study conducted by Deloitte Consulting for the Parliament. The report presents the dilemmas in a way that is more open and direct than that which we normally see, which makes the reading all the more interesting. The report can be found here ["The income of fully self-financed Agencies and the EU budget", 82 pages, which focuses on OHIM and the Community Plant Varieties Office: remember, the European Patent Office is not an EU Agency.  The IPKat's not sure why EURid, the EU domain name registry, isn't looked at here, but he's sure there's a good reason]. Anyone in the mood to update themselves on the background can find all the relevant documents on the MARQUES website here.

After the expiry of the public consultation period, OHIM is working on its final proposal for the strategic plan 2015-2020, and it seems clear that the activities that are unrelated to its so-called core business (as EU trade marks and designs registrar) will continue to increase. One might suspect that some Commission activities are placed with OHIM because OHIM has money to cover the costs where the Commission has not. At the same time OHIM, will be obliged to cut staff expenses by 5% while it is expected that filings will grow by 5%. Perhaps this will all help to eat the accumulated surplus away bit by bit. Time will tell.

It is hoped that the negotiations on EU trade mark reform will be finalised before summer. Again, time will tell".
King Midas here; the Midas Touch here 
King Midas in Reverse here and (recommended for anyone who likes decent lyrics, 1960s harmonies and the closest the Hollies ever got to sounding like the Beatles) here

EPO Enlarged Board tells Chairman: "disobey President when necessary"

The European Patent Office (EPO) Enlarged Board of Appeal (EBA) has issued an interlocutory decision in case R2/14 (PDF file, 2.3 MB), in which it once again addresses the dual roles of the Board's Chairman, who is also a Vice-President of the Office (VP3), among other issues.

The quite explosive highlights of this Decision, which is analysed in more detail below, are the following findings made by the EBA, at a time when the independence of the Boards and the degree to which they must be subordinate to the management of the Office have never been more closely examined:

    The Enlarged Board members getting ready
    to defend their judicial independence
  • As long as the Chairman of the Enlarged Board ("the Chairman" from here on) is also a Vice-President of the EPO, there is a potential conflict which might compromise his judicial independence unless properly handled.
  • The proper way to handle this is to balance the Chairman's obligation to obey the President (as VP3) against his invariable obligation to act at all times with complete judicial independence.
  • In cases of conflict the judicial role must take precedence, even at the expense of disobeying a direct instruction from the President.
  • The President's authority and power to give instructions to the Chairman in his role as VP3 and to exercise supervisory authority over him are limited by virtue of Article 23(3) of the European Patent Convention (EPC), which lays down the principle of independence of the Boards.
  • The requirement to disobey an instruction or direction from the President or to fail to provide assistance to the President must also apply where the effects of complying would be indirectly liable to affect the "work or working conditions" of the Board members.
  • The only proper, long-term solution is to revise the EPC so as to take the Boards out of the structure of the Office completely, placing them as a separate independent body within the European Patent Organisation.
Mr Battistelli, President of the EPO, was reportedly furious when, in a previous decision, R19/12 (reported here), the EBA decided that the nature of the Chairman's involvement in the management of the Office gave rise to a justified suspicion of partiality, and ordered that he be replaced by an alternative member for that case.

One cannot imagine that the new decision will make Mr Battistelli any happier. As noted above, the EBA specifically alludes to instructions from the President whose effects might affect the work or "working conditions" (a very hot topic across all levels of EPO staff ranks), particularly at a time when speculation abounds that the President is strongly supportive of a proposal to send the Boards of Appeal to Berlin and there is widespread concern within the Boards that this will hamstring their work.

So reading between the lines (perhaps more than was intended), Merpel discerns the EBA telling its Chairman that, if he is asked to assist with or support this move at an organisational level (after all DG3, under his wing, would have to be involved in the move), he must refuse to do so unless he is satisfied that there will be no adverse effect on the Boards, however indirect that might be. Even more clearly, if VP3 is called on or instructed to implement any sort of efficiency goals within the Boards, it appears that the Vice-President must refuse, again unless there is absolutely no possibility of this affecting the work of the Boards, and one cannot see how this would be the case.

And naturally we mustn't overlook the fact that the EBA also speaks directly to the President in this decision, telling him that his power to instruct the Chairman (as long as the latter is subordinate to the President as VP3) is limited by Article 23, and he may not issue instructions that would compromise judicial independence. This is an important shot in a power struggle between the Boards and the President, have no doubt.

While stated to be a non-public decision, it appeared on the EPO Register for public download (this may change) and the issues it covers are of such central importance to the independence of the EPO judges that it requires publication. Merpel has considered the balancing of interests between non-publication, the stated reason for which was to protect the private rights of the three Board members whose participation was objected to, and the strong public interest in reporting the decision which for the first time states that the President's power to direct the Vice-President of DG3 Appeals is limited by the overriding interest in judicial independence (as long as the Vice-President is also the Chairman of the Enlarged Board) and believes the correct course of action is to publish. More pragmatically, it does not read like a decision that is only for the benefit of private parties to an appeal; it reads like one that is expected to have a wide audience including the President, the Administrative Council, and probably everyone else -- not that this affected Merpel's thought processes.

So with that, let's look at the decision.

At the time of Decision R19/12, in his role as VP3, the Chairman sat on two high level committees of the EPO, the Management Committee (MAC) and General Advisory Committee (GAC). The petitioner in that case (this being a petition for review of an allegedly wrong decision of a lower Board of Appeal) objected to the Chairman sitting on the Enlarged Board, saying that he was compromised by his dual roles. A reasonable observer would have a justified suspicion that he might be influenced in his review of administrative decisions taken by the Office given that he was involved intimately in the management of the Office. The Enlarged Board agreed and took him off the panel for that hearing.

Superficially it may have looked as if the EBA was rapping the Chairman over the knuckles for having given cause for someone to object, but the reality was very different. This was a Board protecting its Chairman and sending a message to the President: if you think that you can keep control of the Boards by appointing the Enlarged Board Chairman to a managerial role where he is bound (under Article 10) to obey your instructions and assist you unconditionally, think again. Doing so has compromised his role and the independence of the Boards -- hence the reported fury of Mr Battistelli at this decision.

The Chairman subsequently stepped down from both of the managerial committees, other than retaining an observer role for appeal-related matters.

The latest decision, R2/14, deals with a similar objection by a petitioner against the composition of the Enlarged Board panel assigned to its case (concerning an appeal decision with which the petitioner was dissatisfied). The petitioner objected to all three of the members, again including the Chairman, and the two other members.

The objection to the other two members

Before turning to the much more interesting case of the Chairman, let's look at the two other members. The petitioner asked for replacement of these Members, on the grounds that they came from the same Technical Board of Appeal, giving (said the petitioner) that one Board undue influence over the EBA in this case; also, that Board was in a similar area of technology as the Board whose decision they were being asked to review, which was likely to lead to partiality and undue sympathy for the decision under review; and finally, it was argued that EBA members in a petition for review procedure should not be members of the lower Boards of Appeal also.

None of these objections gained much traction and were dismissed pretty quickly. In particular it was held that the design of the legal framework envisaged that Enlarged Board members would also serve on Technical and Legal Boards, and no change in this scheme, or in the appointment of particular members to an Enlarged Board panel, was intended when the EPC was revised to permit petitions for review under Article 112a.

The objection to the Chairman

As regards the Chairman, the initial objection simply referred to the finding in R19/12, and initially the petitioner appeared to believe that the nature of the objection was self-evident from that decision (the EBA agreed as it happened, i.e. the nature of the objection was clear). When the Chairman was asked to comment on the objection he submitted a statement saying that he had relinquished the duties that had given rise to a problem in R19/12, quoting from the relevant order of the President removing him from the committees; he further stated that he was not aware of any pressures on him to compromise his judicial role in pursuit of e.g. efficiency goals.

The petitioner tried to expand its case three times. In a first reply it enumerated several reasons why it believed the role of the Chairman was institutionally compromised due to his alternate role as VP3, even if he had stepped down from the relevant committees. Then, before oral proceedings, it sought production of numerous internal and confidential documents that (it said) might reveal the extent of the Chairman's involvement in management activities and/or the President's interference in the Boards of Appeal, and also requested that evidence be taken from various parties to explore the extent of the Chairman's management activities. Thirdly, following oral proceedings and while waiting for the decision to issue, it wrote to the EBA again saying that the "house ban" affair, covered in this weblog at length, exposed an incident of partiality: nearly all of the internal members of the EBA had written a letter of protest at the President's actions (in suspending a Board member and kicking that member off the Office premises). However, the petitioner noted that the Chairman had not signed this letter, which the petitioner said demonstrated that "other [Board] members could not expect the Chairman to defend their rights vis-à-vis the President."

Did the Chairman's failure to openly criticise the President suggest partiality?

The Board did not look at the "house ban" point, i.e. the inference that should be drawn from the failure of the Chairman to sign a letter critical of the President (a letter signed, incidentally by each of the members who wrote this interlocutory decision along with nearly every other internal member of the EBA). It was made late, and was different from the initial objection. The initial objection had been based on an alleged structural or institutional partiality (of the in abstracto kind) inherent in the dual roles, whereas the observations on the Chairman's failure to sign the letter of protest against the President was based on actual conduct and were aimed at establishing in concreto partiality.

The EBA explicitly said it was not considering the house ban point for procedural reasons alone and that it had not looked at the merits, suggesting to Merpel that there may be scope for a new objection on this explicit point -- and the petitioner appears not to have any qualms about rocking the boat, so perhaps we can expect another new objection and a second interlocutory decision.

Could the petitioner obtain internal documents and evidence from the Office?

The EBA also refused the requests for production of internal documents or the taking of evidence from the Chairman and others. The EPC did not have discovery procedures that would allow a party to uncover documents that might support its case, nor could a party expect the Board to make its case for it -- an appellant or petitioner had to produce its own case for the Board. In the absence of such documents and evidence the petitioner had merely made vague assertions and suggestions that had no evidential basis.

Merpel smiled at the additional suggestion of the EBA, apparently made without irony, that the petitioner could have asked for these documents from the competent bodies. This suggestion betrays an admirably naive faith in the power of a nicely-worded letter addressed to the management of an organisation which appears to be deeply paranoid and averse to any examination of its internal procedures, and which is at war with its own stakeholders over the very issues that the documents would reveal. But perhaps Merpel is wrong. Prizes will be awarded by this blog to any patent attorney who successfully convinces Mr Battistelli to send them the internal investigation guidelines used when investigating Board members, which is one of the documents sought by the petitioner.

The structural/institutional conflict in acting as Chairman & VP3

All of the foregoing meant that the decision was confined to the R19/12 point itself: had the circumstances changed sufficiently since that decision so that the Chairman was no longer to be regarded as under a suspicion of partiality?

The Board accepted the Chairman's account of his reduced activities and disengagement from the relevant committees without question. Nevertheless it noted that the Chairman had dual roles, one managerial in which he was subordinate to and answerable to the President (Arts. 10(2)(f) and (3) EPC), and the other in which he was "in no sense hierarchically subordinate to the President and is not answerable to him" (see Art. 23(3)). These managerial and judicial roles could in principle come into conflict with one another.

The EBA labelled this potential conflict as a "normative conflict" between two equal-ranking rules of the EPC (Art. 10(3) vs Art. 23). All other relevant rules, such as Art. 10(2)(f), or the Staff Regulation that might apply to the Chairman as an employee under Arts. 10 & 11, were subordinate to Articles 10(3) and 23.

Resolving the "normative conflict" using (you guessed it) praktische Konkordanz

The EBA once again noted [presumably in the hope that someone from the AC is listening to the highest patent court in Europe] that the only permanent and clear solution to the question of judicial independence would be to separate the Boards of Appeal entirely from the Office, making the Boards a separate, fully independent body within the European Patent Organisation. While this would require amending the EPC, they helpfully reminded the petitioner [Hmm, says Merpel, for a non-public decision it seems the authors expected a wider audience than a lone disgruntled patentee], and noted also that there was a draft amendment to the EPC ready to go, but that a diplomatic conference would be required to make the necessary changes. The proposal to give the Boards organisational autonomy had widespread support, backing this up in a deadpan footnote quoting from none other than a "B. Battistelli", writing in the GRUR Newsletter in 2010.

So with no diplomatic conference in prospect, how was the conflict between the Chairman's role to be resolved. Borrowing a legal concept called "practical concordance" (praktische Konkordanz) from German constitutional law, they said that the conflicting rules had to be interpreted in a balanced manner:
39.7  In applying the concept of "normative concordance" to the present case, the Board concludes that the President's power to give instructions to the Chairman in his function as VP3 pursuant to Article 10(2)(f) and (3) is limited by Article 23.

The Chairman is therefore relieved of any obligation
(a) to obey any presidential instructions or
(b) to observe any other administrative/executive directions or
(c) to assist the President pursuant to Article 10(3) EPC
if and to the extent that any such instruction, direction or assistance might affect him and/or any other member of the boards of appeal, including the Enlarged Board of Appeal, in performing their judicial duties [...]

39.8 An indirect effect in this context could even be caused by any measure of the aforementioned kinds which, prima facie, is not immediately and intentionally directed to the exercise of judicial duties in the narrow or obvious sense.

Similarly, measures directed to less central aspects of the work and working conditions of the Chairman and other members of the boards of appeal and of the Enlarged Board of Appeal could also have longer-lasting effects. These might be perceived by the members concerned and/or by a reasonable observer, for example a party to proceedings before a board of appeal or the Enlarged Board of Appeal, as influencing the independence of the members of the boards of appeal or the Enlarged Board of Appeal.
The Board continued that, even if he scrupulously tries to balance his two roles, the Chairman/VP3 could be faced with an unresolvable conflict where he either obeys the President (and fails to uphold the principle of judicial independence as a result) or he disobeys the President and thus fails in his role as VP3:
In that event, one may legitimately expect that his judicial duties under Articles 23 (3) and 24 and under Article 6(1) ECHR must prevail.
So there it is. As long as the Chairman remains subordinate within the hierarchy of the Office to the President, nothing in the EPC, his contract or the service regulations, permits him to compromise the independence of the Boards, and nor may the President legitimately instruct him to do anything that affects the working of the Boards.

Sunday, 1 March 2015

Subject Matter Relationships: the need for strictness, complexity and fuzziness

Valentine’s Day made this Kat think about relationships: the cruelty, the complexity and the cuddles. This progressed to patent law and how subject matter ‘relates’ to other subject matter. How is patent law cruel, complex and cuddly? For those of you who are not as obsessed with patents as I am, a few words of background. Practitioners spend a lot of their time showing:

* how claims are novel and inventive over what is known (i.e. patentability over the prior art),
* why the claimed matter represents the same invention as described in the priority document (and so is entitled to priority), and
* why amendments to the claims don't go beyond the contents of the patent application as originally filed (i.e. why the amendments don't add matter).
In patent litigation a lot of people spend a lot of time thinking and arguing over whether the claims cover particular activities being carried out by third parties (i.e. whether there are products and activities which are infringing the claims).

Cruelty: what is the ‘same invention’ for priority and for double patenting?

Good fences make good neighbours
The European Patent Office (EPO) finally decided on what the ‘same invention’ was for priority purposes in G2/98. Before this decision there was the possibility that trivial features or those that did not contribute to the technical effect could be ignored when assessing whether the invention described in the priority document was the same as that described in the Convention application. However, G2/98 held that the ‘same invention’ for priority required a strict test. The example was given of overlapping European applications where one needs to decipher which subject matter in an application is citable against which subject matter in another application, based on the filing date to which it is entitled. That is only possible if the test is strict, essentially requiring every single feature to be present for it to be the ‘same invention’.

That makes sense. However it leads this Kat to wonder about double patenting. Is it the same strict test? Given the logic of G2/98 are trivial features enough to avoid being the same invention for double patenting purposes?

As an aside, priority could become even more cruel. The UK already has a doctrine of poisonous priorities (see Katpost here) and now the EPO Enlarged Board is going to be thinking about it too in a referral from appeal proceedings on T557/13.

Complexity: added matter and who is being protected?

Manipulating matter in a specification
When does added matter arise? On the face of it added matter at the EPO is quite simply about something being ‘directly and unambiguously derivable’. Examiners have treated this as requiring very explicit disclosure. However, increasingly the EPO is accepting ‘implicit’ disclosure. It is clear that ‘implicit’ does not mean what is ‘obvious’ from the text. It is something more subtle (see Katpost here on added matter and the new EPO Guidelines).

If one wants to generalise a feature from a specific embodiment, things gets more complicated, and require consideration of whether the relevant feature is inextricably linked to another feature. Deleting a feature requires this three-part test. Clearly if one is in the situation of having to generalise or delete features, something has probably gone wrong and one is attempting to manipulate the original contents of the specification in ways that were not intended when drafting it. At this point I will only mention selection inventions in passing, to minimise the risk of losing non-chemical readers.

Things get even more complex for disclaimers. At the EPO there are two types of disclaimer. There is the ‘G2/10’ type which is based on disclosure in the application as filed (see Katpost here). Such a disclaimer will add matter if it results in ‘new technical information’. The second type of disclaimer is the ‘G1/03’ type where the wording does not need to come from the disclosure of the application. This is only possible in certain situations: to overcome prior art that is only relevant to novelty and to disclaim embodiments excluded from patentability for legal reasons.

Is all of this fair? Well, third parties should have a level of certainty as to what amendments could be possible. However, equally applicants need to be given a little bit of leniency as they are often surprised by what turns up in the Search. Clearly balancing things in the right way seems to lead to complex tests.

Cuddly: claim boundaries for infringement are malleable

So, we’re now at the point of using our finely honed claim scope, which is entitled to priority and does not add matter, to catch infringers. Here things become a little bit fuzzy. We suddenly find there are different ways of construing the claims and parties in litigation can disagree on about this (see a slightly old discussion of this here from Alan White). In the US different constructions can be used in different forums. The broadest reasonable interpretation is used at the United States Patent and Trademark Office (USPTO), whilst the Courts can use narrower constructions.

The bigger the net, the more
infringers you catch
A little bit of extra scope for catching the infringer

Courts seem to have ways of stretching the claims a little bit to catch infringers. Article 2 of the Protocol on the Interpretation of Article 69 EPC says we can take account of ‘equivalents’ when look at the scope of protection ‘conferred’. In the UK we still have the principle of ‘purposive construction’, occasionally thought of as the ‘Protocol Questions’, and probably no doctrine of equivalents (see Katpost here). The US does have a doctrine of equivalents but this seems to come in and out of fashion, it is difficult to define exactly and it is intimately tied to the prosecution history.

The scope of a claim is complex, but seems to become even more complex, and presumably more unpredictable, in the hands of the Courts. This Kat wonders whether this gives Courts that little bit of flexibility they need to catch an infringer that is a ‘bad guy’. In the UK omnibus claims used to be the way the Courts would give themselves a lot of leeway to find infringement somehow (see PatLit post here on a recent omnibus claims case).

Appreciating all the different factors that impact on patent claims makes one appreciate why things are as they are. This Kat does wonder, though, at how little thought is given to making the patent system easier to use. We don’t have a test for that because it does not directly impact on the tasks that Patent Offices and Courts are doing. This Kat believes that results in users of the patent system finding it more difficult than it should be.

Friday, 27 February 2015

The next celebrity zoo animal? Polar bear Knut's little half-brother is looking for a name...

This Kat is spending part of her coveted lunch time to write on one of her dearest topics (see earlier IPKat posts here): the late polar bear Knut - arguably the "first celebrity zoo animal" - and centre of numerous alluring trade mark issues and intriguing trade mark disputes.

Our readers may recall Knut's rise to stardom and his evolution into a lifestyle "brand", from cuddly cub to famous celebrity zoo animal with a massive marketing machine until his untimely death at the age of four at Berlin zoo in March 2010. German media now reports that a polar bear cub born at the zoo of Rostock, northeastern Germany, in December 2014 may be the next polar bear "superstar". US based news outlet CNN already called the cub "adorable", so that international fame might indeed be in reach...

Knut - in his heyday
History appears to be repeating itself in other ways too: Rostock zoo has decided to involve the general public in naming the cub and is asking for suggestions to be emailed to the zoo's press department until 10 March 2015.  Only condition, it needs to be a "nordic sounding" name, such as Knut or Lars.

Now, it seems like it was only yesterday when I was writing my tongue in cheek article "Knut, Flocke, and Co: the bear facts revealed"; JIPLP 2008, pages 764-774, (still available in full here).  In that article I wrote about the dangers of so-called ‘public naming campaigns’ and how not taking trade mark protection seriously at an early stage when marketing the birth of high-profile zoo animals can result in serious problems.  Infamously, Knut's name, which had also been determined by a public naming campaign, had been leaked to the media before Berlin zoo had filed for trade mark protection.  Let's hope Rostock zoo has learnt a lesson and has its IP in place before going public with the "nordic" name.  By the way, I propose to give the cub the lovely Scandinavian name Birger....

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