Monday miscellany

Not often seen in Algeria ...
Around the blogs. Today sees the first in a weekly series of posts on Afro-IP which collectively will form an A to Z guide to all the official intellectual property websites of every country in Africa. This series, which is provided for the pan-African IP blog by the IPKat's friend Kingsley Egbuonu, starts up in the Mediterranean-facing north of the continent with Algeria.  Barry Sookman's annual epic "Developments in Computer, Internet and E-Commerce Law (2010-2011)", lovingly prepared for enthusiasts of that side of IP, is now available here.  While Barry might be just a bit, well, Canadian, and all Kats know that Canada is that thin ribbon of civilisation which separates the Americans from the polar bears, his list of key developments embraces a wide variety of legal cultures and jurisdictions; nothing parochial here!

Parallel Importation under EU Law is not only a subject that greatly excites this member of the Kat team: it's also the title of a book by Thomas Hays, published by Sweet & Maxwell. It is hoped and planned that a second edition of this book will be published, to which end the publishers seek the assistance of an IP scholar or expert [Merpel hopes these categories are not mutually exclusive!] who would be willing to edit the second version.  Enrico Bonadio, of the City Law School, is assisting Sweet & Maxwell with their quest to find the right person. If you think that you might be that person, email Enrico here, and copy Amanda Strange (Sweet & Maxwell) in here, telling them why you are!

EQE: a term with secondary meaning ...

A little while ago (two and a half years, to be precise), the IPKat posted this piece entitled "What should you take with you to the EQEs?", the EQEs being the European Qualifying Examinations for patent attorneys.  A reader now writes:
"I am probably taking the EQE in 2014 (ages away!), but I got myself a copy of Visser (18th ed) updated till 15.11.2010. I love reading it and annotating it. Do you think I would have to get a new one in 2013? Seems a waste to tab and annotate my current version (cutting up the edges takes time!) if I'm just going to be using a brand new book for the exams. Advice please!! Thanks!"
The Kat is not in a position to answer this question himself, but is sure that some very eminent readers of this weblog will be pleased to do to.

Another poser which the IPKat is passing on to his readers relates to the completion of an IP lawyer's professional qualifications.  A friend has written in to say, "we are attempting to find an in-house patent/IP barrister with registered pupillage supervisor status so that a final six months of experience can be completed in London".  If anyone fits this bill, or knows someone who does, can they please let the IPKat know here?

Not everyone takes "no" for an answer.  Last week the IPKat reported on the ruling of the Court of Justice of the European Union in Case C-462/09 Thuiskopie v Opus.  The intention of the court was that cross-border traders in blank CDs and DVDs can't escape paying a private copying levy which is imposed under the domestic law of the country of importation. Indeed, in a note prepared on this case, Vivien Rörsch (De Brauw Blackstone Westbroek) writes:
"This decision has far-reaching consequences; commercial traders cannot for instance escape paying the private copying levy by locating their business in another country".
This Kat has a funny feeling that a good deal of ingenuity will be expended in trying to get round this -- not because there are vast sums to be saved by not paying the levy but because, the moment you tell many people they can't do something, they feel duty-bound to prove you wrong and he's almost willing to bet that some interesting business schemes for avoiding the levy will end up being litigated over the next few years.

Finally, the IPKat has been receiving a blow-by-blow account of the fate of the controversial "safe harbour" for genetic tests which have been raising eyebrows and tempers in the US, where the dust refuses to settle on the current round of patent law proposals. According to GenomeWeb, here:
" ... A measure in the House of Representatives that would create a safe harbor from patent infringement for some genetic tests used to confirm an initial diagnosis, but not provided by the patent holder, may soon be scrapped in favor of a study of the issue by the US Patent and Trademark Office [this looks like the US equivalent of setting up a Committee to review things, an approach which is much loved in the UK]. The safe harbor amendment ... would have enabled patients to receive diagnostic genetic tests as second opinions from alternate providers by protecting those offering the tests from standard infringement suits ....

... Representative Debbie Wasserman-Schultz (D – Fla.) offered an amendment to the amendment, attached to the America Invents Act (H.R. 1249) in the House Judiciary Committee, to replace the safe harbor proposal with a plan for a study of the best ways to provide second opinion genetic diagnostic tests in the current patent landscape. The safe harbor plan, which was originally proposed by Wasserman-Schultz and was later adopted into the Judiciary Committee's manager's amendment draft of the bill by Rep. Lamar Smith (R – Tex.), quickly drew sharp criticism from a wide range of advocacy groups. 
"The amendment in question would not only fail to resolve second opinion testing issues, but it would not address the many problems with gene patents, including the inhibitions on research, treatment, and scientific progress ," the American Civil Liberties Union said in a letter to House leaders yesterday. "A real solution would not only allow for second opinion testing, but allow hospitals and laboratories to develop and offer testing in the first instance."

A coalition of groups that gathered with ACLU against the amendment includes Breast Cancer Action, Friends of the Earth, the International Center for Technology Assessment, National Women's Health Network, and religious groups. That coalition said the amendment would allow gene patent holders to continue to challenge second-opinion testing, ignore "the many harms that result from gene patents," such as restrictions on genetics research, and would "allow gene patent holders to argue that Congress has implicitly endorsed the validity of gene patents." 
The new amendment ... would direct the USPTO to conduct a study of the best ways to provide independent, confirming diagnostic tests in the current environment, which includes gene patents and exclusive licensing for genetic diagnostic tests. This study would look into the effects that the current lack of independent second-opinion testing has on medical care and on innovation for testing and diagnoses practices. Under the proposal, the USPTO would examine the impact that current exclusive licensing and patents for genetic tests have on medicine, and it would study the role that cost and insurance coverage have on the provision of genetic diagnostic tests. The report generated by these studies would be presented to judiciary committees in both the Senate and House".
This Kat feels strongly that the issues here, which include the intersection of incentives to invent, the provision of healthcare, morality and the operation of the patent system itself, are (i) so important that a solution to this issue should be identified and pursued on a global basis rather than country-by-country and (ii) so sensitive that any outcome is unlikely to be based on general consensus. He hopes therefore that any study by the USPTO will welcome input which runs wider than the US's borders and that any recommendations are seen as a way of kick-starting wider debate rather than preempting it.

Thank you again, Chris Torrero, for keeping this Kat informed.
Monday miscellany Monday miscellany Reviewed by Jeremy on Monday, June 20, 2011 Rating: 5


  1. With regard to updated books for the EQE you will certainly have to buy a more recent edition. One of the most up-to-date books currently available is Procedural law under the EPC-2000, Kastner (Veronese & Watchorn), which was published in March of this year.

    The same authors also published an update of their book on the PCT (PCT Procedures and Passage into the European Phase, Kastner) in March 2010, which pre-empted PCT changes entering into force in July of 2010 and EPC changes coming into force on 1 April 2010 and 1 Jan 2011.

    Both were mentioned in the IPKat.

  2. Re Visser.....
    I sat in 2011 and used the version updated till Nov 2009. You will definitely need a more up to date version than your current one for the 2014 exams. Personally I didn't use the most up to date edition as I didn't think it would give me enough time to annotate it, (as it only comes out in November) but rather spent time annotating the the previous edition and topped it up with updates from the newest edition once it came out in November prior to exams. So my advice would be to annotate maybe the updated till Nov 2012 edition for your exams and then make sure you add any new updates from the latest edition before you sit, bearing in mind that you will only need to know the law as of Dec 31st of 2013 (as the regs currently stand at least).

  3. "Do you think I would have to get a new one in 2013?"

    Always make sure you have the latest copies of literature when you take the EQE, as well as during study.
    You will be tested for sure for the latest changes in law and you personally do not want to be responsible for the evergreen remark of the exam committee that there are always candidates who use outdate literature :-)

    Derk Visser's book is great for reference - both for study and daily work -, though I found the book "References to the European Patent Convention" more efficient to use during the EQE. I would also recommend "The Cross-Referenced Patent Cooperation Treaty".

  4. Visser marks all new passages with a line down the side, so I annotated the previous years version, and then put in any legal updates in the margin. Tabing your current one isn't a complete waste of time though, you'll probably use it quite a lot in your work at first.

  5. There's no need to buy any books for the EQE: the EPO's Guidelines for Examination are more than sufficient to pass first time.

  6. With the greatest of respect, I would suggest that any prospective EQE candidates ignore the advice of the 10:58 am anonymous poster above...

  7. Not only would I not rely on the Guidelines for the EQEs (maybe provides support for a mark in the legal paper), I would not use an attorney who relies on the Guidelines in the real world. The Guidelines exist to try and encourage attorneys to do things the way the EPO examiners would like and are not a definitive interpretation of the law. In the interests of their clinets, attorneys must apply the law based on the EPC and thekey case law.


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