Alison Brimelow on the EPO's future

The IPKat has spotted an interesting article here where Ms Brimelow , the current president of the European Patent Office, has been speaking her mind about where the EPO might be heading in the near, middle and distant future.

(right, Alison in a slightly less severe picture than the one from the EPO here)

This Kat was particularly interested in the apparent possibility of a referral to the Enlarged Board of Appeal in the near future on the subject of those much-discussed Article 52 exclusions, something that the previous president emphatically said 'non' to (as the IPKat noted here).

Oh, and there's something about Chinese patents.

UPDATE (7 Feb): Apologies to readers who cannot access the article linked to above, which appears now to have been locked-down to subscribers only. It was freely available when the post was originally written.

SCRIPT-Ed migrates to a new home, and back again

The IPKat has learned that, "In a further move to support the academic legal community, Bailii is now hosting (including searching and automated citations) the Law and Technology journal Script-Ed". You can now read this excellent e-journal for yourself, at abslutely no cost, http://www.bailii.org/uk/other/journals/Script-ed/--in theory. On following this link the IPKat was disappointed to be greeted with a "Not found" message, but he was relieved that Script-Ed could be found in its old home here. Merpel adds, cats, dogs and pigeons are famous for being able to find their way home -- but this must surely be the first recorded case of the same behaviour in an IP journal.

STOP PRESS: the IPKat has tested the BAILII link again, and this time it worked perfectly.

Learn more about the Microsoft case

UCL's Centre for Law and Governance in Europe, together with the Competition Law and Regulatory Forum (CLRF) are holding a seminar this Thursday entitled 'Refusal to License IP: are we closer to an optimal legal standard after Microsoft v. Commission?' In the hotseat is Professor Yannis Katsoulacos (Professor of Economics at the Department of Economic Science of the Athens University of Economics and Business; Vice Rector, Athens University of Economics and Business). The event runs from 5 to 6pm in the UCL Faculty of Laws (Bentham House) in sunny Bloomsbury. All are welcome.


On ths same subject, Birmingham University are hosting an event entitled 'The Microsoft Case:The IT industry and the Future of EC Competition Law' on 16 May. Further information can be obtained here.

Tuesday trivia

It's not immediately apparent to the IPKat what prompted this initiative, but readers of the UKIPO website will have noticed last week's little item on how to extend UK (and in some cases EPO- or EU-originated) intellectual property rights to the Pacific paridise of Kiribati -- an independent republic within the Commonwealth which does not usually get much publicity from the UKIPO.

Right: Kiribati's flag just about sums it up -- lots of sun, plenty of water, but not enough land for the birdie to land on ...

Kiribati has no IP grant system of its own, it seems, but the following principles operate:

"Patents: If you apply for a patent based on an existing United Kingdom (UK) patent, within 3 years of UK date of issue, registration will normally be granted, the patent will expire with UK patent.

EP(UK): If you apply for a patent based on an existing EP(UK) patent, within 3 years of EP(UK) date of issue registration would normally be granted, the patent will expire with EP(UK) patent.

Trade marks: You may apply for a registration based on a UK trade mark. Applications can be at any time during the life of the UK trade mark and will expire with UK trade mark. A registered user under the UK registration may, on application, be entered as a registered user in Kiribati. Community Trade Marks (CTM's) have effect.

Designs: UK designs registrations are automatically extended but may be declared invalid in Kiribati on any grounds existing under UK law, including publication of the design in Kiribati prior to the UK registration".

The contact address for IP in Kiribati is the Ministry of Commerce, Industry and Tourism, P.O. Box 510, Betio Tarawa, Republic of Kiribati, Central Pacific. In case it's not convenient for you to visit the office in person, you can phone (686) 26 157 or 26 158, fax (686) 26 233 or even email commerce@tskl.net.ki


The IPKat's Australian friend Duncan Bucknell, of IP Thinktank Blog fame, is speaking to the Solo IP group in London on 14 February 2008. He plans to discuss some recent trends in IP strategy across the globe and what to watch in 2008. He has also been asked to give an insight into how the sole practitioner can promote a practice offering strategic advice to top of the range clients.

Left: the sole practitioner -- a species in need of protection, or a good cull?

The event takes place at 5pm at the Hall of the Chartered Institute of Patent Attorneys at 95 Chancery Lane, London WC2A 1DT. All are welcome, even if they're not sole practitioners (or even from small practices), but can anyone who attends please just let Soloist Barbara Cookson know by emailing her here.


Birkbeck College, University of London, is holding a major international conference on "The Creative Industries and Intellectual Property", 22-23 May 2008. According to the blurb,

"The Creative Industries are widely cited as an increasingly important part of national economies both in terms of impact and size as well as job creation and value added to Gross Domestic Product. They are also heralded as a potential source of national competitiveness, an important area of current and future export and a key contributor to the knowledge economy.

Right: here's something to cherish -- an illustration of the theme of 'creative industries' that does NOT employ the standard cliche of the lightbulb

In line with many national government policies, a central aim of this conference is to support the creative industries and their participants by raising their profile and by assisting their development, in order to support their businesses and the cultural expressions of societies.

This research based conference contributes by comparing, discussing and analysing if and how the current rules, norms and standards stimulate and/or hinder creativity, innovation and the appropriation of knowledge and value in the creative industries.

The topic of Intellectual property rights (IPRs) will be dominant throughout this conference, but other related intellectual property observations are also welcome".

For further details and information, please consult the conference website here or email here.


Spicy IP blogger, scholar and IP activist Shamnad Basheer is in London the week after next. If you want to pop in to see him during his brief visit to Holborn on Wednesday 13 February, between 5.30pm and 6.30pm, email Jeremy here and let him know.


The third executive briefing of the Chartered Institute of Library and Information Professionals (CILIP) on digital copyright will take place at Ridgmount Street, London, on Thursday 29 May.
The Briefing will be chaired by Tim Padfield, Information Policy Consultant at The National Archives, and Chair of LACA - the Libraries and Archives Copyright Allicance. Click here to download the conference brochure.

From Vicom to Astron Clinica

For those who have not yet had enough of the recent kerfuffle over computer program patent claims in the UK, IPKat co-blogmeister David has written a short article on the subject. This was written at the request of Laurence Eastham, editor of the publication Computers & Law, and it will apparently be making an appearance in the next issue (not the latest issue: right). The article is already available online here, but unfortunately to subscribers only. The author is therefore making it available to all interested readers here. All constructive comments are welcome.

French connections

France backs term extension for sound recordings

It seems that the show’s not over for an extension to the copyright term of sound recordings. According to an article in Friday’s Times, France is due to make the extension a priority of its upcoming six-month presidency of the EU, despite opposition from the UK and Germany. According to the French Culture Minister, Christine Albanel

“Today, whole swathes of the recording catalogue of the 1950s and 1960s, representing a significant part of the national pop heritage, are falling progressively into the public domain…That creates an obvious problem of fairness. Artists who began their careers very young are being stripped today of all remuneration from their first recordings.”

The IPKat can’t quite share Ms Albanel’s indignation. There aren’t many other industries where success in your youth guarantees you an income for life.

For French-speakers only

Speaking of the French, they will be the only people able to understand last week’s Art.8(5) (dilution and unfair advantage) CFI case regarding the CAMEL trade mark, which still isn’t available in English. Even worse, Professor Lionel Bently has informed the IPKat that the ECJ’s judgment in Procter & Gamble v. OHIM, Case C-107/03P (23 Sept 2004) is not available in English from the ECJ’s website. The IPKat could (very very grudgingly) understand why a CFI judgment mightn’t be translated instantly, but a more than three year wait for an ECJ decision is very poor.

Monday miscellany

On Tuesday 19 February 2008 the Helsinki Institute of Information Technology (HIIT), Pilotti-rakennus, Metsänneidonkuja 4, Espoo, is conducting a seminar on software patents. The programme features Associate Prof (Hokkaido) Na Ri Lee speaking on "Fragmented Infringement of Computer Program Patents in the Global Economy", and Rosa Maria Ballardini, (IPR University Center, Hanken) then addresses the topic of "Software Patents in Europe: the Technical Requirement Dilemma". This is an internal seminar, which is not open to the public. But a version of Rosa Maria Ballardini's paper will be published later this year in the Journal of Intellectual Property Law & Practice. The IPKat will let everyone know when this happens.


Sole IP practitioners of the world unite! The IPKat's friend Barbara Cookson (of Filemot fame) has finally taken the plunge and launched a weblog, Solo Independent IP Practitioners, for ... er ... solo independent IP practitioners. The IPKat is a keen supporter of anyone who toils alone on behalf of IP clients and hopes that anyone who is interested in the IP Soloists group will make themselves known to Barbara by emailing her here. Meanwhile, you can visit the new weblog here.


Bailii Monographs are on the way! The IPKat learns from his friend, the scholarly Professor Philip Leith (Queen's University Belfast) that

"Bailii is currently undertaking a trial of publishing out of print monographs dealing with legal issues. ...

Most publishers have no commercial interest in books after the print run has finished and they are happy to reassign copyright to the author, if copyright was assigned to them. Bailii will only republish a text if there are no copyright limitations.

Bailii has no funds to digitise books, but it does have substantial expertise in processing word processed files into 'Bailii format'. An author wishing to make his out of print monographs available to Bailii will normally thus provide the original word processed files from which the publisher worked. Alternatively, funding might be sought to digitise the work - something around £300 to £400 would be an average cost.

Clearly there is no financial advantage to the author. However, it gives a text a second life and makes it available to potential readers who may have difficulty in finding the original.

Authors can also revise a work before it is republished.

Bailii has no password protection, students can link directly from reading lists to the specified work, and there are none of the constraints on making copies/printing/saving which are usual with commercial systems".

At present, two monographs are available on the system (in both of which Professor Leith was an author). They are Harmonisation of Intellectual Property in Europe: a case study in patent procedure (1998) and The Barrister's World and the Nature of Law (co-authored with Jon Morison). The books have had paragraph numbering added. To make a link to a specific paragraph, you simply need to add #paraXX to the end of the url, e.g.:
http://www.bailii.org/uk/books/1992/b1.html#para101
will take you to paragraph 101. Professor Leith adds:

"It would be helpful if you gave feedback on formatting, ease of system use, and any other comments you might have. Bailii's structure is oriented towards case law, so comments on how books might best be handled are particularly relevant. Please email me here, with the header 'Bailii Books'".

Ben Challis (Music Law Updates) has surprised the IPKat with news from Slashdot and Ars Technica that the Italians are indavertently legitimising the publication and free sharing by P2P users of copyright music.

Left: an Italian purr-2-purr users celebrates ...

The new law, reputedly passed by both houses of the Italian legislature, allows users to disseminate through the internet, free of charge, images and music at low resolution or "degraded," for scientific or educational use, if such use is not for profit. Italian copyright expert Andrea Monti is quoted as saying that the word "degraded" is technical, with a very precise meaning that includes MP3s since they are compressed with an algorithm that ensures a quality loss. The law still awaits implementation through a Ministerial decree.


Can you recommend a good introductory book or article on intellectual property finance, ideally taking in securitisation, valuation, project finance, calculation of royalty streams and damages and so on? If so, please email the IPKat here and he'll be delighted to compile a list for public consumption.


The IPKat has been reliably informed that the Washington Legal Foundation (WLF) is hosting a Web Seminar Series on 5 February 2008. The topic is ‘Smithkline Beecham v Dudas: Challenging the US Patent Office’s “Continuations” rule and the suit’s repercussions.’ The contributors are Mark Fox Evens (Director with the Washington, D.C. law firm of Sterne, Kessler, Goldstein, & Fox) and Richard C. Pettus (Partner, King & Spalding). This program will be available online via live webcast at http://www.wlf.org/, and will be archived for future viewing and available as a downloadable read-only file. There is also the ability to ask questions of the speakers in real time by emailing interactive@wlf.org during the programme.

So you CAN cancel a mark that's been revoked

The decision of Appointed Person Amanda Michaels back in December 2007 in T-Mobile (UK) Ltd v O2 Holdings Ltd is now available online from the UKIPO website. This is one of those technical decisions that excite lawyers - and academics - more than consumers, but here goes anyway ...

This was the hearing of an appeal by O2 against a decision of the UK Trade Mark Registry that O2 could not pursue its invalidation actions against the BUSINESSZONE PLUS and BUSINESSZONE trade marks, which were registered by T-Mobile in May 1996 for goods in Class 9 and services in Class 38. Why did O2 want these marks out of the way? This was because, in February 2004, O2 applied to register its own marks BUSINESS ZONES and BUSINESS ZONES FROM O2, by sheer coincidence also for goods and services in the same classes. For good measure, O2 applied at the same time for revocation of the T-Mobile marks for non-use under the Trade Marks Act 1994 s.46.

The registrar revoked both T-Mobile registrations with effect from March 2004. Despite the slight overlap of dates between the revoked marks and O2's applied-for marks, the latter were accepted by the registry. T-Mobile then filed oppositions based on its marks which, while now revoked, were still registered at the time of 02's filing date. In response, O2 filed requests for the invalidation of the T-Mobile marks on the basis that the revocation of T-Mobile's marks only with effect from March 2004 had left O2's marks vulnerable to opposition. The registry took the view that it was not possible to pursue the invalidity action because the revocation of T-Mobile's marks meant that they no longer existed on the register. The registry was also concerned that an application for invalidation might also be an abuse of process. The hearing officer upheld that view. T-Mobile subsequently withdrew its opposition to O2's trade mark applications.

In this hearing the Appointed Person was required to determin whether (i) given the withdrawal by T-Mobile of it opposition, was the appeal a purely theoretical one which was of solely academic interest and thus ought not to be heard? (ii) could a revoked mark be invalidated and did the phrase "the registration of a trade mark may be declared invalid" at the beginning of s.47 of the Trade Marks Act 1994 refer only to a registration that remained extant, active or live at the date of the application for invalidity? (iii) was O2's application an abuse of process?

Amanda Michaels allowed O2's appeal. In her view,

* despite the withdrawal of T-Mobile's opposition, there remained a very small risk - which could not be completely ignored - that T-Mobile would seek to rely on its marks to achieve some commercial end. This being so, the invalidity proceedings could not be stigmatised as purely academic and the substance of the appeal should thus be dealt with.

* Since section 47(1) concerned the validity of a trade mark as at its application date, the phrase "the registration of a trade mark" in that section should be construed as referring to the process of registration, or the initial registration, of the mark. It would be inappropriate to construe those words as applying only to "live" marks which had not been revoked, surrendered or abandoned by not being renewed.

* The hearing officer was wrong to have found that O2's application under s.47 of the Act was an abuse of process. The fact that a party had made an application for revocation of a trade mark on the grounds of non-use under s.46 of the Act would not as a matter of course preclude that party from subsequently applying for a declaration of invalidity of the same mark under s.47 of the Act, as making such an application was not subject to any statutory preconditions.

The IPKat really enjoyed this one but wishes he had already used these facts as the basis for an exam question. Merpel says, these marks look horribly descriptive/distinctive for lots of things in Classes 9 and 38, but there shouldn't be any problem registering them for lollypops.

T-Mobile here
T-shirts here
T-steak here

Friday folderols

The IPKat is delighted to discover from his friends at WIPO that the Republic of Bulgaria has notified its accession to the Singapore Treaty on the Law of Trademarks and that the Republic of Honduras has done the same for the Trademark Law Treaty (TLT). The date of entry into force of the Singapore Treaty won't be known until a critical number of countries sign up for it. The TLT is a different kettle of fish, though: it's already up-and-running and will take effect with regard to Honduras on 22 April 2008 (sources: WIPO notices Singapore No. 4 and TLT No. 47).


Those interested in the monetary issues arising from IP law and practice -- securitisation, the effects of insolvency, IP valuation, calculation of royalty rates, transfer pricing, tax, assessment of damages and so on -- may also be interested in a new weblog, IP Finance. This little venture is designed to identify, share and spread information on these issues and to try to build a better-informed community within the IP professions, so that we IP people can deal more comfortably with banks, accountants, financial planners and so on. If you've useful information to offer, or would like to contribute to that blog on a regular basis, email here.

If you are interested in what constitutes "trade mark use" for the purpose of infringement, there's a note on the Class 46 European trade mark blog concerning litigation before the 's-Hertogenbosch Court of Appeal in Red Bull v Winters and Smart Drinks. Essentially, is there a difference between applying a trade mark to goods and applying goods to the trade mark? In this case the alleged infringement consisted of filling with drink a number of cans that were already marked with the allegedly infringing signs. To find out what the court thought, read on ...


Thanks again to Simon Haslam (Abel & Imray) for this BBC link to news that French President Nicolas Sarkozy and his girlfriend Carla Bruni are suing low-cost airline Ryanair over a picture of the couple it used in an advert. The photo shows a thought bubble coming from Ms Bruni, saying: "With Ryanair, all my family can attend my wedding". The former model is seeking 500,000 euros ($743,000; £373,000) - the amount she says her photo normally costs. Possessing an unusually long memory for a small furry feline, the IPKat recalls that easyJet have used the same marketing technique, but chose different victims.

No presumption against parallel proceedings in patent revocation cases

The last day of a cold, blustery January saw the Court of Appeal for England and Wales hand down its decision in Glaxo Group Ltd v Genentech Inc and Biogen Idec Inc. [2008] EWCA Civ 23. The judgment in this case was read by Lord Justice Mummery, with whom Lords Justices Ward and Jacob concurred.

Right: a second non-medical use - can retuximab also be used as laundry balls?

This was Genentech's appeal against the refusal of Mr Justice Lewison (noted here by the IPKat) to stay revocation proceedings in respect of the United Kingdom bit of a Genentech second medical use European patent. Claim 1 of the patent was for "use of an anti-CD 20 antibody in the manufacture of a medicament for the treatment of rheumatoid arthritis in a mammal". According to Glaxo (who were developing their own product, ofatumumab, and wanted a clear ride to market with it), antibodies of the kind described in the patent such as rituximab were available and used for therapy before the patent's priority date.

Wishing to blast Genentech's patent out of its path at the earliest opportunity, Glaxo both issued opposition proceedings in the European Patent Office (EPO) and then commenced this revocation action in the Patents Court. Genentech, like any prudent patent owner, applied for a stay of the revocation proceedings, which had been set down for trial, saying that they were an abusive duplication of the proceedings Glaxo had previously instituted in the EPO. Lewison J, expressing some unhappiness about the state of the law and rather inviting guidance from the Court of Appeal (his judgment virtually had the words "appeal me" stamped on it), refused the stay and Genentech appealed. Before the Court of Appeal Glaxo maintained that Lewison J had correctly applied the legal principles and had been entitled to hold that a stay of the revocation proceedings and the extended period of uncertainty that that would entail would not be just, given Glaxo's commercial interest in an early decision on the disputed validity of the patent in view of its plans to launch its own product.

The Court of Appeal dismissed the appeal. It the court's view

* it was legitimate for a person contesting the validity of a European patent to attack it both in an action for revocation in the UK courts and by opposition proceedings in the EPO and no estoppel principle ran counter to this.

* the European Patent Convention was silent (as was the relevant national legislation) concerning the exercise of discretion to stay national patent proceedings pending EPO proceedings, whether on the ground of forum non conveniens or otherwise. But the fact that the EPC was silent didn't mean it was irrelevant: it remained a factor in the exercise of an inherent domestic law power to stay national proceedings since it supplied the context in which judicial discretion was to be exercised.

* the risk of duplication of national proceedings and EPO proceedings was inherent.

* the Patents Court should exercise its discretion to achieve the balance of justice between the parties, having regard to all the relevant circumstances of the particular case. It was the discretion of the Patents Court and not the Court of Appeal.

* if the likelihood was that proceedings in the Patents Court would be resolve the dispute significantly sooner than the proceedings in the EPO, it would normally be a proper exercise of discretion to decline to stay the Patents Court proceedings.

The IPKat deeply regrets the almost ridiculously lengthy period of time that the EPO can take to resolve revocation issues, given the relatively short maximum life-span of most patents. The fact is that the speed at which the EPO deals with oppositions -- often hindered by the parties themselves, it is conceded -- encourages parallel litigation. A better-funded, better-resourced and highly proactive EPO could, by drastically accelerating the life-span of an opposition, make the wasteful and expensive incidence of (i) parallel proceedings in national courts and (ii) litigation over whether those parallel proceedings should be stayed a thing of the past.

Slightly sheepish apology: in the earlier version of this note, I managed to write "Glaxo" every time I meant "Genentech", and vice versa. This was, at least in part, the result of my having abbreviated them both as "G" in my notes.--The IPKat.