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Monday, 12 December 2005


Sui generis rights to come under more scrutiny

The IPKat has just read a press release to the effect that the European Commission has published its evaluation of the protection EU law gives to databases. Most attention is given to the sui generis database right, a specific property right for databases that is unrelated to other forms of protection such as copyright and provides low-level protection for lists and other works that, while lacking literary substance, may be commercially of great value.

The evaluation (says the press release) focuses on whether the introduction of this right led to an increase in the European database industry's rate of growth and in database production and considers whether the scope of the right targets those areas where Europe needs to encourage innovation. It was conducted on the basis of two information sources: (i) an online survey addressed to the European database industry carried out by the Commission in August and September 2005 and (ii) the Gale Directory of Databases , which contains statistics indicating the growth of the global database industry since the 1970s. Individual views expressed outside the survey of stakeholders (i.e. database owners) were also taken into account.

On the basis of the information available, the evaluation finds that the economic impact of the sui generis right on database production is unproven. However, the European publishing industry, consulted in the online survey, argued that sui generis protection is crucial to the continued success of its activities. In addition, most respondents believe that the sui generis right has brought about legal certainty, reduced the costs associated with the protection of databases, created more business opportunities and facilitated the marketing of databases.

According to the Commission, further evidence on the usefulness of "sui generis" protection needs to be gathered. Its working paper invites stakeholders to submit their views and comments and to provide further evidence on the economic impact of sui generis protection. The evaluation is available here.

Stakeholders are invited to comment on the evaluation by 12 March 2006. The IPKat notes that European Court of Justice decisions have left sui generis protection a good deal narrower than many assumed it to be, following its rulings in British Horseracing Board v William Hill and in the Fixtures Marketing cases.

Text of evaluation here
Database rights directive here
More on the sui generis right here
Teach yourself Latin here

No stay - it only slows the settlement

This Patents Court decision of Mr Justice Lewison was found by the IPKat on subscription service LexisNexis: it's Pozzoli SPA v BDMO SA and others, which was decided last Friday.

Pozzoli, who owned a patent for a design for moulded plastic packaging for CDs and DVDs, sued three defendants: the first and second of them made allegedly infringing products while the third defendant sold them in the UK. The first and second defendants attacked the patent's validity, while the third defendant admitted doing the allegedly infringing acts although an issue remained as to whether, on the true construction of the patent, the product fell within the scope of its claims. The third defendant then sought to stay the proceedings and offered to give undertakings (i) not to sell the product pending trial or further order and (ii) to be bound by the decision given at trial. It was the third defendant's position that, if the claim against the first two defendants were settled, the supply of the product to the third defendant would cease, which would put an end to the alleged infringement.

Lewison J dismissed the application to stay. He held that the burden of justifying a stay of proceedings which would effectively preclude Pozzoli from vindicating his legal rights rested on the applicant. In this case, however, the third defendant failed to discharge that burden: it also reserved its position so that it might argue its case on the construction of the patent at trial. If the claim against it were not stayed, a settlement as between all parties was more likely to be agreed. Accordingly, the court would refuse the stay.

The IPKat, who hopes that more of the facts will be made available in due course, can see the point of this. While the grounds upon which the third defendant based its application are superficially attractive, the courts are now taking a greater interest in encouraging a global settlement. Merpel says, but isn't this rather harsh on the defendant here? And supposing it hadn't reserved its right to argue the patent's construction at trial?

Pozzoli here
Silver Pozzoli here

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