From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 14 March 2016

Never too late: if you missed the IPKat last week

Away last week or too busy to read the IPKat? Don’t worry, as Never Too Late is back, now on its 87th edition.

Neil Feinson, International Policy Director at the UK's Intellectual Property Office, provides an insightful take of the latest round of negotiations regarding the Unified Patent Court's Rules of Procedure.

According to a recent article on Scottish microbrewery BrewDog's open-source approach, post-capitalism is here. London housing prices would suggest otherwise, but the rejection of capitalism in favour of open-source, commons approaches sparks some interesting debates, says Nicola.

Are myth and metaphor the primary drivers of innovation in intellectual property law?  Some might answer "no", but they likely play a role in shaping public opinion, Mike says.

David pens about the UK Supreme Court's judgment in the famous Trunki case, ie PMS International Limited v Magmatic Limited [2016] UKSC 12. It addressed the appeal filed by Magmatic, owners of the Community registered design (CRD) for Trunki ride-on suitcases. 

A new reference for a preliminary ruling in the area of trade marks has just been made to the Court of Justice of the European Union (CJEU). It's about the long-running litigation over the (in)famous Louboutin red soles. Can they be a trade mark? Eleonora reports.

Patent attorneys in Europe have become accustomed in recent years to the EPO appeal boards refusing to consider on appeal claim amendments that could have been, but were not, filed in first instance proceedings. Katfriend Heiko Sendrowski tells us that this approach is now being adopted by the German courts also.

Katfriend and sharing-economy enthusiast Revital Cohen (Baker & McKenzie, Milan) tells us about what appears to be the very first attempt to provide an overall legal framework for (almost) all those disruptive business that usually go under the definition of "sharing economy". Do Italians really got what sharing services among EU Member States is about, she wonders?

Eleonora is the Kat-reporter from the Faculty of Law at the University of Cambridge, where the annual Spring Conference of the Centre for Intellectual Property Law & Information Law has taken place.

A valued reader who goes by the nom de plume of Archibald Calculus has taken raw data of various types from the EPO, tabulated it, graphed it, and tortured it mercilessly until it gave up its essential truths. Over the next few posts, Merpel will be passing on to her readers the results of Archibald’s invaluable analysis. Are pendency times improving measurably? Does an independent analysis back up the claims of efficiency made to the AC? Find out in this post!

Is there IP in culinary recipes? As readers may know, this has been a topic dear to this very blog's heart and its contributors' mouths for a while now [here]. Readers may also remember that recently a Dutch court rejected the claim that copyright could subsist in a peculiar kind of cheese. Via Katfriend Federica Pezza (LLM candidate, Queen Mary University of London) comes the news that yet another culinary IP battle is now taking place in a country where food indeed matters: Italy.

Guest Kat Mike Mireles reported on partent trolls in terms of myth and metaphor. In this post, Neil explores the patent troll from a different angle. Has that issue moved off center IP stage to at best a supporting role, he wonders? 

Annsley pens of Mr Justice Arnold's decision in Napp v Dr Reddy's and Sandoz[2016] EWHC 493, which flags up a new generic battle in the English Patents Court and is a helpful reminder to those who may be considering bouncing their opponents into court hearing without proper notice. 



Never too late 86 [week ending on Sunday 6 March] – Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 | The IPKat team: news, new arrivals and farewells | CJEU in Shoe Branding Europe BVBA v Adidas and OHIM | World IP day | Advocate General's opinion in Henrik Saugmandsgaard Øe in Austro-Mechana | EPO v trade union | OLG Munich on YouTube liability | UPC judges' salary | The UK implements Unitary Patent | CJEU in Daimler AG Együd Garage Gépjárműjavító és Értékesítő Kft | Monsanto and tech-transfer in India | French ancillary right over on-line images | Stockholm District Court refuses to issue blocking injunction against access provider | CJEU on GIs in  Viiniverla Oy V Sosiaali- ja terveysalan lupa- ja valvontavirasto | Trinidad’s Carnival and copyright | Again on Article 28 and trade-mark portfolios.

Never too late 85 [week ending on Sunday 28 February] – AG Yves Bot's take in Reha Training | Battistelli having hard times | Blocking injunctions in trade mark cases | AIPPI UK event | Patent Enforcement Worldwide | Why Mickey Mouse is not mickey mouse | UPC court fees.

Never too late 84 [week ending on Sunday 21 February] – Domain Name Law and Practice | Unwired Planet v Huawei and Samsung | In memoriam of Justice Antonin Scalia | Celltrion Inc. v Biogen Idec Inc., F. Hoffmann-La Roche AG and Genentech Inc. | Design v Copyright in Italy | Unitary patent and double patenting | Regeneron Pharmaceuticals Inc v Kymab Ltd & Anor | IKEA in Indonesia | Eli Lilly v Janssen Sciences.

Never too late 83 [week ending on Sunday 14 February] – Indigenous IP | Arnold J's latest judgment flags down the iconic London black cab | Life of a national/EU trade mark ... in a map | A comprehensive explanation of trademarks | Actavis v Lilly.


Confused cat said...

Can anyone tell me what is (or will be) "the law applied to European patents with unitary effect" in Germany? I have looked at the recently proposed amendments to German patent law, but can see nothing that tells me how the substantive provisions governing infringement will be applied to unitary patents. I only ask because I understand that the law in Germany will be the default for many unitary patents.

Confused cat said...

Seriously, is there no one out there who can answer my question? Am I to believe that, whilst we might be on the verge of the UPC becoming reality, the law of infringement that will apply to a significant number (and perhaps even a majority) of European patents having unitary effect is currently unclear / unknown?

Darren Smyth said...

Dear Confused Cat

I don't think your question is answerable with certainty for several reasons, not least since Germany has still not ratified the UPCA or passed the necessary law changes. Perhaps more importantly, I expect that, despite what the Regulation says, the UPC will not apply strictly "the law applied to European patents with unitary effect", but will simply apply the UPC text directly.

I did not reply earlier since I hoped that one of our German readers might comment, but in the absence of that I thought I would give my view now. Of course, other views would still be welcomed!

Best wishes


Confused cat said...

Darren - thank you for your input. I too had hoped for input from a reader who is an expert in German patent law. Perhaps that could still happen...

As no law changes have yet been passed in Germany, I accept that no answer can (yet) be provided with absolute certainty. However, it would be nice to know whether there are even any proposals on the cards that might start to clarify the situation. As far as I can tell, the changes to German patent law that have been proposed so far simply do not address the law of infringement for EPUEs.

My fear is that ratification of the UPC by Germany will happen solely upon the basis of the changes to national law that have already been proposed - leaving us no better off than we are now in terms of figuring out the applicable infringement law(s).

I am not so sure about the possibility of the UPC applying the UPCA infringement laws directly. For a start, that might not be consistent with the reasoning behind the CJEU's decisions to dismiss Spain's challenges to the UP Regulations. And for another thing, the UK IPO seems pretty convinced that national provisions governing / clarifying exemptions from infringement will prevail over the UPCA provisions.

However, if you are correct, it would be nice if there were some form of authoritative confirmation of your view, so that we can all narrow down the possibilities when considering FTO vs. EP applications that might grant at EPUEs.

Kant said...

Why should the provisions governing infringement, other than contributory infringement, change in Germany as a result of the UPC?

Confused cat said...

Kant - please see the divergences between the UPCA and current German national law regarding the exemptions from infringement. That is why, in addition to the issue of indirect infringement, German law as it currently stands cannot apply to EPUEs.

Darren Smyth said...

Dear Kant

I believe that, for example, in Germany as in the UK the national "Bolar" exemption from patent infringement is broader than that in the UPCA. So will Germany go with the UPCA exemption, its current national exemption, or (as the UK has done) keep both, in respect of a unitary patent. That is one issue. There may be others (in addition to contributory infringement, as you have mentioned).

Then there is the issue of providing a national law relating to unitary patent at all, which the Regulation requires and the UK has done, but which Confused Cat is saying (I do not know) is not in the current German proposals.


kant said...

If German law provides for the minimum provisions set out in the UPC, i.e. is in conformity with the various directives etc., no amendment is necessary. By including the provision for the interpretation of infringement to vary dependent on the applicable national law, this variation is an accepted part of the UPC.

Confused cat said...

Kant - please explain how German national law will allow the provisions governing infringement to vary. Please also explain how the infringement provisions of the upcoming are incorporated into German law. Maybe I am missing something, but neither of those points was clear from your answer.

Kant said...

Take the Bolar exemption. §11, 2b PatG provides the following: "
Studien und Versuche und die sich daraus ergebenden praktischen Anforderungen, die für die Erlangung einer arzneimittelrechtlichen Genehmigung für das Inverkehrbringen in der Europäischen Union oder einer arzneimittelrechtlichen Zulassung in den Mitgliedstaaten der Europäischen Union oder in Drittstaaten erforderlich sind." Accordingly Art. 10(6) of Directive 2001/83/EU is implemented as required by Art. 27(d) UPC. Art. 5(3) and 7(3) UPR then provides for German national law to apply if the applicant is not an national of a member state. If German national law contains provisions which exempt certain acts from patent infringement beyond those required by the regulation the proprietor will be worse off than if it were resident in a participating state having a more narrow interpretation of the regulation.

Confused cat said...

Kant. I really don't know where to start. But let's just say that if Germany ratifies the UPCA, then it is committed to aligning the infringement provisions for EPUEs in its national law to the provisions in the UPCA. For Bolar, the UPCA provisions are much narrower than those under current German law. Hence the current (broad) Bolar under German law cannot - at least for EPUEs - survive ratification of the UPCA. Otherwise Germany would be contravening its treaty obligations and we would all be in a mess.

Confused cat said...

Kant - have you read the UPCA? The Bolar exemption defined in Article 27(d) of that Agreement is much narrower than the equivalent exemption under current German national law. This presents Germany with a problem for the following reasons.

Article 27 UPCA begins with the phrase "The rights conferred by a patent shall not extend to any of the following...". Article 2(g) UPCA defines a "patent" as "a European patent and/or a European patent with unitary effect".

A country that ratifies the UPCA therefore has an obligation to ensure that, for all (not opted out) European patents that are valid in that country, the applicable national laws on exemptions from infringement, as well as on (in)direct infringement, are fully in line with the provisions of the UPCA.

If Germany kept a broad Bolar exemption in its national law, then that would therefore be at odds with its obligations under the UPCA.

(It is, of course, a completely different question as to whether it is permissible to have additional, statutory provisions under national law that affect the interpretation of exemptions that are otherwise fully in line with the wording of the UPCA. The IPO in the UK certainly hopes that the answer to that question is "yes".)

Have I persuaded you now that the infringement law in Germany requires amendment in advance of Germany's ratification of the UPCA?

Meldrew said...

I do not understand the carping.

It is a traditional feature of European law that ill thought legislation is passed to harmonise matters, it is implemented in a disharmonious manner with no co-ordination between countries, inconsistent decisions are reached in different countries, and eventually the CJEU has to sort matters out, and one or more countries are told their implementation is improper.

Muddling through is not such a peculiarly British trait as some imagine.

Kant said...

Since the Bundestag is of the opinion that it has implemented the directives - see - I very much doubt whether changes wished by CC will be implemented in the near future.

Anonymous said...

Meldrew, as I recall the present compromise (leave it to national law) was designed to ensure that the CJEU wouldn't get its grubby mits on the law of patent infringement. It follows that they are not supposed to "sort it out" on this occasion. Though they might try, I suppose.

Wasn't this the solution that the IPO came up with during a David Cameron table-thumping exercise in Brussels (presumably by way of a practice run for the more recent one)?

At the time, I naively thought this was a master stroke. Harmonisation by the back door instead of imposed by Brussels. All you would have to do would be to get all the member states to adjust their laws so that coincidentally they just happened to agree with the Agreement. I was young and innocent once...

Confused cat said...

Kant - you are confusing the UPCA with Directive 2001/83 (as amended by Directive 2004/27). There is a key difference between the two.

Directive 2004/27 only specified an exemption from infringement. By providing an exemption broader than that specified in Directive 2004/27, German national patent law arguably satisfied the minimum standard set by that Directive.

The UPCA, on the other hand, specifies both what infringes and what does not infringe a (not opted out) European patent. The list of non-infringing activities provided in the UPCA is exhaustive. A country ratifying the UPCA is therefore not able to add to that list without contravening its obligations under the UPCA.

Germany's current Bolar exemption effectively adds to the list of non-infringing activities in the UPCA, in that it exempts from infringement certain activities that are not mentioned in Article 27 UPCA. Thus, Germany's Bolar exemption must be brought into line with Article 27(d) UPCA.

The breach of Germany's obligations under the UPCA if this does not happen are most obvious from the answer to the following question. Can you think of any situations where applying German national law (as it will be amended based upon current proposals) would lead to a different conclusion on infringement than would be arrived at by strict application of the infringement provisions in the UPCA? If the answer is "yes", then Germany's national law governing the infringement of European patents is not in line with the UPCA.

I don't know about you, but I think that, even taking recent proposals into account, it is blatantly obvious that the answer to the above-mentioned question is "yes".

Meldrew - I agree with you that what we are seeing now is a traditional feature of European law. However, given that we are talking about uncertainties over how infringement for many pending EP applications could be determined post-grant, the stakes are pretty high on this occasion. For example, with the uncertainty over how things will work out with the Bolar exemption, the chances are high that those looking to conduct clinical trials will head off to jurisdictions (such as Spain or Poland) with favourable laws that, in the short term, are unlikely to be affected by the UPC. Is that really what the countries ratifying the UPCA want to happen?

Meldrew said...

Confused cat...

So the people most likely to want to do clinical trials will decamp for fear of the patents owned by the people who are most likely to have done clinical trials?

Sometimes I think the pharmaceutical industry consumes too much of its own products.

Confused cat said...

Meldrew - I should clarify. I meant that clinical trials will be conducted in countries such as ES or PL, and not that pharma companies would relocate to those locations. The IPO's attempts to keep (by the back door) a broad exemption for innovator clinical trials provides a good illustration of how much governments want clinical trials to be conducted on their patch.

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