new ip inter action - locke lord · 2011. 2. 2. · kertel vs. google and cartophone court of...

The Honourable Society of Lincoln’s Inn The Old Hall & Crypt

London WC2A 3TL

The Second Annual Edwards Angell Palmer & Dodge IP Update Conference

IP INTERAction

Tuesday, 1 February 2011

from 8:30 am - 4:00 pm

IPInteraction.com

Speakers’ Notes

1

New Frontiers or Same Old Metropolis?

Developments in the Law and Practice of Brands On-line

Nick BolterPartner

2

Summary Keywords… the New Frontier Google… “Don’t be evil” Google AdWords What is it? How does it work? Why do we care?

Keywords Litigation A different standard applied to keywords? What do we learn from the US? Where do we go from here?

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3

Keywords – What are we talking about?

4

Keywords – What are we talking about?

AdWords Advertiser bids for terms or

combinations of term Formula 1

Advertiser supplies advert (heading, text and URL)

Google ranks sponsored ad by reference to amount bid, quality and relevance of site

Some trade mark owners object to Google’s sale of trade marks to third parties

3

5

Keywords – What’s in it for Google?

AdWords 99% of Google’s $23.7 billion in revenue

6

Keywords – Why do WE care?

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7

Litigation….THE UNITED KINGDOM

Reed Executive -v- Reed Business Information Limited [2004] EWCA Civ 159, 3 March 2004

Wilson -v- Yahoo! UK Limited [2008] EWHC 361 (Ch)

Interflora Inv -v- Marks & Spencer Plc Chancery Division, 29 April 2010

8

Litigation….

OTHER EUROPEAN COURTSFrance Voyageurs du Monde et Terres d’Aventure v Google

Tribunal de Grande Instance de Paris (3rd Chamber, 3rd section), 7 January 2009

GIFAM, De Dietrich, Electrolux, Hoover-Calor-Seb et al v SARL Google France and Google Inc (no.06/13884)Paris Court of Appeal (Cour d’Appel) (4th Division, Section B), 1 February 2008

TWD Industries v. Google France, Google IncCourt of Appeal of Aix en Provence (2nd Chamber), 6 December 2007,

Atrya vs. Google and K par K/Techni FeneresCourt of Strasbourg, 20.7.2007

Google v. MeridianCourt of Appeal of Versailles, 24.5.2007

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9

Litigation….France… Laurent C. vs. Google

Court of Paris, 13.2.2007

Overture vs. AcorCourt of Appeal of Versailles, 2.11.2006

Citadines vs. GoogleCourt of Paris, 11.10.2006

GIFAM vs. GoogleCourt of Paris, 12.7.2006

Auto IES vs. Google FranceCourt of Paris, 27.4.2006

CNRRH, Pierre Alexis vs. Google and TigerCourt of Appeal of Versailles, 23.3.2006

Promovacances & Karavel vs. GoogleCourt of Paris, 9.3.2006

Viaticum & Luteciel (BDV) vs. Google France Court of Appeal of Versailles, 10.3.2005

Louis Vuitton Malletier vs. Google Court of Paris 4.2.2005

Accor vs. Overture Court of Nanterre, 17.1.2005

Meridien vs. GoogleCourt of Nanterre, 2.3.2006

Kertel vs. Google and CartophoneCourt of Paris, December 8, 2005

Amen vs. Google and Espace 2001Court of Paris, 24.6.2005

Viaticum & Luteciel (BDV) vs. Google FranceCourt of Appeal of Versailles, 10.3.2005

Louis Vuitton Malletier vs. GoogleCourt of Paris 4.2.2005

Accor vs. OvertureCourt of Nanterre, 17.1.2005

Meridien vs. GoogleCourt of Nanterre, 2.3.2006

Kertel vs. Google and Cartophone Court of Paris, December 8, 2005

Amen vs. Google and Espace 2001 Court of Paris, 24.6.2005

10

Litigation….Germany I ZR 125/07 – Bananabay

Order 22 January 2009 - I ZR 30/07 - Beta Layout

Judgment of 22 January 2009 Higher Regional Court of Frankfurt

Case 6 W 17/0826 February 2008

LG BraunschweigAz. 22 O 2623/07

OLG HamburgAz.: 7 U 137/0622 May 2007

LG KölnAz. 81 O 174/069 February 2007

OLG DüsseldorfAz.: I-20 U 79/0623 January 2007

OLG Karlsruhe26 September 2007

OLG StuttgartAz.: 2 U 23/0726 July 2007

OLG BraunschweigAz.: 2 U 24/0712 July 2007

OLG DresdenAz.: 14 U 1958/069 January 2007

OLG BraunschweigAz.: 2 W 177/0611 December 2006

OLG BraunschweigAz. 2 W 23/065 December 2006

LG BerlinAz.: 15 O 560/06 21 November 2006

LG LeipzigAz.: 3 HK O 2566/0616 November 2006

LG Braunschweig Az. 9 O 1840/0615 November 2006

LG BraunschweigAz. 9 O 1778/0627 July 2006

OLG HamburgAz. 3 U 180/044 May 2006

LG Hamburg312 O 324/0421 September 2004

LG BraunschweigAz. 9 O 2852/05 28 December 2005

OLG DresdenAz.: 14 U 0498/0530 August 2005

LG LeipzigAz.: 5 O 146/0508 February 2005

LG LeipzigAz.: 5 O 146/0508 February 2005

LG DüsseldorfAz. 2a 0 10/05 19 January 2005

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11

Litigation….Netherlands

Endless Webdesign v. Google Netherlands B.V.Amsterdam District CourtDecision of August 24, 2006,

Pretium–YiggerDistrict Court of The Hague12 November 2004

12

Litigation….THE COURT OF JUSTICEPortakabin Ltd v Primakabin BV

Case C-558/08A reference from the Hoge Raad in the NetherlandsJudgment, 8 July 2010

Eis.de GmbH v BBY Vertreibsgesellschaft mbHCase C-91/09A reference by the Bundesgerichtshof in Germany Judgment, 26 March 2010

Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbHCase C-278/08A reference from the Oberster Gerichtshof in AustriaJudgment, 25March 2010

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Cases cont.. Google France v Louis Vuitton Malletier

Case C-236/08

Google France v Viaticum, LutecielCase C-237/08

Google France v CNRRHCase C-238/08

Three references from the Cour de Cassation in France

Judgment, 23 March 2010

L’Oréal SA and others v eBay International AG and othersCase C-324/09

14

Court of Justice and AdWords

LVMH v Google Question 1: Was Google’s offer of TM with AdWords

program “trade mark use”?

Answer: No

Question 2: Was Advertiser’s use of TM “trade mark use”? Answer: Yes

Question 3: Did advertiser’s use of TM create customer confusion?

Answer: No, provided advertiser is clear there is no association with trade mark owner

Question 4: Could Google rely on the ISP defence available under the e-commerce Directive (2000/31/EC)?

Answer: Yes

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15

Court of Justice and AdWords

LVMH v Google A sponsored ad will be infringing if it “does not enable

an average internet user, or enables that user only with difficulty to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark … or on the contrary, originate from a third party.”

Google cannot be held responsible for infringing sponsored ads that it is hosting “unless, having obtained knowledge of the unlawful nature of those data or of that advertiser's activities, it failed to act expeditiously to remove or to disable access to the data concerned” [emphasis added].

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LVMH v Google: Impact

Google: 4 August 2010 announcement that from 14

September: Harmonise policy in United States and Canada (2004),

Great Britain and Ireland (2009) and now Continental Europe

More aggressive with takedown requests of misleading advertisements with “AdRemoval” system

https://services.google.com/inquiry/aw_tmcomplaint

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Where are we now?

Google: $$

Notice and Take Down

Advertisers: Free to use competitor’s marks as AdWords?

Risk of Notice and Take Down?

Brand Owners: Police your own marks

Notice and Take Down – effective?

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Where are we going? Bold New Frontiers… Do we now have US style “likelihood of confusion”

even where marks and goods/services are identical?

What about free-riding? Article 9 (1)(c) CTMR 1. … The proprietor [of a CTM] shall be entitled to

prevent all third parties not having his consent from using in the course of trade …

(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of the distinctive character or the repute of the Community trade mark.

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19

Where are we now?

What we learn from the US Rosetta Stone v. Google Inc., 09-00736, U.S. District Court, Eastern

District of Virginia (Alexandria)

"Google estimated that its 2009 policy change would result in at least $100 million, and potentially more than a billion dollars, in additional annual revenue to Google.“

"Between September 3 2009, and March 1 2010, Rosetta Stone notified Google of approximately 190 instances of Google sponsored links promoting counterfeit Rosetta Stone products."

20

Where are we now?

US Proceedings Rosetta Stone v. Google Inc., 09-00736, U.S. District Court, Eastern


"In discovery, Google produced more than 100,000 pages showing that other trademark owners have lodged complaints about the infringing nature of Google's practices... Rosetta Stone identified 9,862 complaints lodged by 5,024 trademark owners from 2004 to 2009."

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Where are we now?

US Proceedings Rosetta Stone v. Google Inc., 09-00736, U.S. District Court, Eastern


"In connection with its 2004 policy change allowing the purchase of trademarks as keywords, Google conducted in-house experiments... [which] concluded that the use of trademarks anywhere in the text of the sponsored link resulted in a "high" degree of consumer confusion... 87.5% of users were confused at least once during Experiment 2... 94% of users were confused at least once during the study."

1

IP strategies in times when Uncertainty is the new Normal

Ben GoodgerPartner

2

Overview Why does IP need a ‘strategy’?

Emergence of IP strategy as a discipline

Some case studies

Conclusions

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Why does IP need a ‘strategy’? 52% senior management still does not understand

value and importance of IP and not involved in its strategic management (IAM / Thompson ReutersSurvey 2010)

how do you value it?

accounting rules not well set up for intangibles

seen as a ‘legal’ issue

seen as a ‘technical’ issue

too slow to get protection

too expensive to get protection

too expensive to enforce

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Where is the value in your business?

Source: Ocean Tomo

01020

3040

5060

7080

90

1975 1985 1995 2005 2009

TangibleAssetsIntangibleAssets

IA as components of S&P 500 Book Value

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A good IP strategy can deliver …

increase of market share

preservation of market share

increased licensing revenues

improved alignment with overall business goals

more focused internal R&D

enhanced collaboration

open innovation programmes

better marketing returns

enhanced customer loyalty

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... ladder to success

A well-aligned IP strategy

$$

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A misaligned IP strategy

IP strategy (?)

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‘Top 250 IP Strategists’ - IAM Magazine

Chief Intellectual Property Officer (CIPO) – ‘the person responsible for the creation, management and exploitation of corporate IP value’.

INTIPSA – International IP Strategists Association – to be launched spring 2011

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Levels of IP strategy

5 -Visionary

4 Integrated

3 – Profit centre

2 – Cost Centre

1- Defensive

No strategy at all

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The practical application of the theory

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Some case studiesPharmaceutical industryreliance on patent-protected blockbusters no longer

enough

multi-layered approach:

acquisitions driven by need to enhance pipeline

stepping in to fund external innovation – e.g. Novartis BioVentures

open innovation

litigation to protect scope of SPCs

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Some case studiesPharmaceutical industry multi-layered approach

focus on biologics – because even when patent has expired, harder to manufacture generic version

brand as way to sustain / prolong market share

pharma originator co’s acquiring generics (e.g. Solvay)

life cycle management of ageing assets

14

Some case studiesUniversities Glasgow University felt the existing TTO model was not

working

Reviewed its overall mission: creating and disseminating knowledge

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15

Some case studiesTraditional TTO model - assess disclosures, file patents and try

to license these to companies

very inefficient process turns every university into a broadly-based product

development organisation with people and development costs, this quickly becomes an

expensive business thus an expectation as to what University is going to ‘get back’ Universities always being criticised for overvaluing technology and for being difficult to negotiate with… Knowledge Exchange not happening at the rate that it should

be

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Some case studiesGlasgow's view:

- process of commercialising the top 5-10% of the IP created has commercial application and does generate returns

- these transactions work pretty well (spin-outs, high value licences)

- the process of commercialising the 90-95% remainder is expensive, difficult and doesn’t generate returns

….so as of Nov 2010, University will now give it away for freeThe ‘Easy Access IP’ scheme

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Some case studiesWhy is this a better model? the relationship starts out positively, not with resentment the company will usually want to sustain and grow the

relationship consultancy, training, placements….all build the

relationship and help move it forward these relationships will be the ones that lead to

research and other collaborations generates immediate revenue

AND it is getting the University’s knowledge out there to be used

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Some case studies

4 conditions for ‘giving it away’:

demonstrate benefit to the economy

guarantee University’s right to do continuing academic research

3 year time limit to do something / anything

acknowledge the University’s contribution

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Some case studiesStruck the right balance? They claim: commercial approach to small proportion of valuable IP easy access mechanism for the rest reduces University’s costs increases volumes of transactions lets business get to work in creating value helps show that University is innovative in finding ways

of translating value from what they do, into the economy

We’ll see!

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Some case studiesGovernmentsChina:

IP is high profile in China in Government circles

Move from ‘imitation’ to ‘innovation’ economy

National IP Strategy published 2008 Aim: to give China a secure IP / innovation base for the

long term

strengthen IP protection / preventing abuses of IP

fostering a ‘culture’ of IP

Named key industry sectors where China wants to obtain strategic patents, including ICT – expect a lot of patent activity in China in this area

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China seeks to climb the global value ladder

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Some case studies Governments UK:

Nov 2010 - “We are reviewing our IP laws, to see if we can make them fit for the internet age."Prime Minister, announcing (another) government review of IP laws.

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Some case studies Brands: stretch-to-fit or skin-tight? EASY

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easy .. cruises?

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Some case studies APPLE

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Conclusions every business needs an IP strategy - to make it

sustainable and scaleable IP no longer about just protecting assets, it IS an asset,

sometimes the MAIN asset

IP is the new form of business currency. Without it you have no bargaining position

IP strategy has to be tailored to each business, each sector – no ‘cookie cutter’ solutions

IP not just about stopping others: can ‘give it away’ for free, but need IP to underpin that (e.g. Open Source)

alignment with what the company is about is essential

discipline and ‘from top to bottom’ approach is essential

1

Selection of recent decisions of the Enlarged Board of Appeal and Technical Boards of Appeal of the European Patent Office

Dr. Ursula Kinkeldey

2

Topics

Exceptions to patentability

Second medical indication

The "not-yet-ready" invention

Right to Priority when there are mistakes in DNA or amino acid sequences?

Disclaimer

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Are embryonic stem cells patentable subject matter?

Referral of questions to the Enlarged Board of Appeal

• T 1374/04

Decision of EBA G 2/06

Oral proceedings on 24 June 2008

Decision issued in writing on 25 November 2008

4

Questions to the EBA relating to patentability of human embryonic stem

cellsDoes Rule 23d(c) EPC apply to an application filed before the entry into force of the rule?

• If the answer to question 1 is yes, does Rule 23d(c) EPC forbid the patenting of claims directed to products (here: human embryonic stem cell cultures) which - as described in the application - at the filling date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, if the said method is not part of the claims?

• If the answer to questions 1 or 2 is no, does Article 53 (a) EPC forbid patenting?

• In the context of questions 2 and 3, is it of relevance that after the filing date the same product could be obtained without having to recur to a method necessarily involving the destruction of human embryos (here: eg derivation from available human embryonic cell lines)?

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G 2/06 Embryonic stem cells

• Request to refer the case to the European Court of Justice (ECJ)

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Answers of the EBA in G 2/06

• Question 1: Rule 28(c) EPC applies to all pending applications, including those filed before the entry into force of the rule

• Question 2: Rule 28(c) EPC forbids the patenting of claims directed to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, even if the said method is not part of theclaims.

• Question 3: No answer necessary

• Question 4: Not relevant if later methods are developed avoiding the destruction of human embryos.

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What does the term "essentially" mean in Article 53 (b) EPC? "Entirely" - as

now prescribed in Rule 23b (5) EPC?

Referrals to the EBA by Board 3.3.04:

T 83/05 (Broccoli)


T 1242/06 (resin-like tomatoes)


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Referral T 83/05

• Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

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Referral T 83/05

Exclusion of essentially biological processes for the production of plants (Article 53(b) and Rule 23b(5) EPC)

• Legislative history of Article 53(b) EPC

• Relevant case law

• T 320/87, T 19/90, T 356/93, T 1054/96

• Legislative history of Rule 23b(5) EPC

• (Art. 2(2) Biotech Directive)

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Decisions G 2/07 (Broccoli) and G 1/08 (Tomatoes)

Interpretation of the exclusion of “essentially biological processes for the production of plants”

The meaning of the wording of the terms

Plants vs plant variety

The Article 52(4) EPC 1973 analogy

The computer-related invention approach

The T 320/87 approach

Criteria linked to the state of the art

Human intervention

The systematic context and objective purpose of the exclusion in Article 53(b) EPC

The object and purpose of the exclusion as derivable form the legislative history

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Conclusions I

• It is clear from the above cited historical documents that the original exception of horticultural or agricultural processes from patentability, which was later removed as being unjustified, was regarded as a provision excepting a whole “class” of inventions from patentability.

• As regards the exclusion of essentially biological processes for the production of plants from patentability, no such express statement is to be found in the preparatory documents.

• The exchange of the word “purely” for “essentially” was deliberate and reflects the legislative intention that the mere fact of using a technical device in a breeding process should not be sufficient to give the process as such a technical character and should not have the effect that such process is no longer excluded from patentability.

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Conclusions II

• However, the clear intention of the legislator behind replacing the word “purely” by “essentially” can even today not be simply ignored, given that the wording of this provision has remained unchanged over time and that not one of the various legislators has apparently seen a need to revise that text.

• Hence, it must be concluded that the provision of a technical step, be it explicit or implicit, in a process which is based on the sexual crossing of plants and on subsequent selection does not cause the claimed invention to escape the exclusion if that technical step only serves to perform the process steps of the breeding process.

• Hence, in more general terms, the conclusion to be drawn is that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, remains excluded from patentability as being essentially biological within the meaning of Article 53(b) EPC.

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Methods for diagnosis, therapy and surgery according to Article 52(4)

(EPC 1973), Article 53 c) (EPC 2000)


Referral T 992/03


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Conclusions in G 1/07

• A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the humsn or animal body by surgery pursuant to Article 53(c) EPC.

• A claim which comprises a step encompassing an embodiment which is a "method for treatment of the human or animal body by surgery within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

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The second medical indication I

Development of the case law

G 5/83 Swiss Type claims/new disease

T 144/83 Prophylaxis

T 19/86 New group of patients

T 51/93 New way of application (subcutaneous)

T 317/95 Different view board 3.3.02

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The second medical indication II

T 1020/03 New Regimen

T 1319/04 Referral to the EBA by Board G 2/08

T 1314/05 Swiss type claim for device rejected by Board 3.4.01 (Physics)

EPC 2000 Article 54 (5)

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The second medical indication III

• Conclusion in G 2/08 “Dosage regime”

• Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

• Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

• Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so-called Swiss-type claim as instituted by decision G 5/83.

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The “not-yet-ready” invention (1)

T 1329/04

“Plausibility-test” Even data filed later not sufficient to make it plausible that “the invention” was ready (Article 56 EPC)/worked (Article 83 EPC)/was industrially applicable (Article 57 EPC)

T 1306/04 follows

T 1336/04 follows

T 609/02 follows

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The “not-yet-ready” invention (2)

T 1396/06

“Modifies” the case law - each case has to be judged on its own merits. If data of evidence are filed later these may support disclosure already in the application

T 433/05 follows

T 1262/04 follows

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Articles 56 and 83 EPC -The role of post published evidence (1)

T 1329/04:

• contribution to the art

• solving a technical problem

• requirement - plausibility

• definition of an invention

• post-published evidence? - circumstances

• BUT: not as the sole basis

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• Resonance to T 1329/04

• “performable” vs “performed”

• completeness of an invention?

• subjective plausibility approach

• plausible to whom ... the skilled person?

• network of patentability requirements

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• Relevant Case Law

• Board 3.3.08

• T1306/04 T1336/04 T 293/04

• Board 3.3.04

• T 1396/06 T 433/05

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Articles 56 and 83 EPC -

The role of post published evidence (4)

• T 609/02

• therapeutic effect is a functional feature

• qualification of the product for the medical use

• post-published evidence to confirm the original disclosure

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Mistakes in DNA - or amino-acid-sequences

T 65/92 Molecular weight never exact, therefore right to priority valid

T 923/92 (t-PA) amino-acid-sequence a true technical feature and therefore, when different in priority document and application as filed, right to priority denied

T 351/01 as t-PA

T 70/05 as t-PA

T 30/02 as t-PA

T 1213/05 Myriad I

T 80/05 Myriad II

T 666/05 Myriad III

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The Disclaimer

• Referral to the EBA T 1068/07 Board 3.3.08

• “Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?”

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What is a disclaimer?

• “Positive” exclusion of subject matter from a claim by no longer mentioning this subject matter in the claim

• Examination of this subject matter under Article 123(2) EPC: YES

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Decisions T4/80 and T433/86

Disclaimer allowable according to Article 84 EPC:

–if the remaining subject matter cannot be expressed in a clear and precise way and

–since it may not be possible to express the remaining subject matter completely there may be an undue restriction of the scope of the claim

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In practice “disclaimer” used to render a claim allowable under:

Article 54(2) EPC “accidental”

Article 54(3) EPC “not known” to the applicant

Article 56 EPC to make it inventive ????????

Article 83 EPC “swiss cheese” doctrine ??????

Article 53(a)(b) EPC “non human”“plant variety”

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What is a disclaimer ?

• “Negative” exclusion of subject matter from a claim by remaining the wording of the claim but adding: “with the exception of ...”

• Examination of this subject matter under Article 123(2) EPC: In certain circumstances: NO

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Legal situation after G 1/03 and G 2/03

• T 1107/06 contradicts T 1050/99, T 1139/00 and T 795/05

• Analysis of “history” of disclaimer in T 1107/06

• New referral to the EBA T 1068/07

• Pending as G 2/10

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Thank you

1

Brand Protection in Europe: Smoke Signals from the OHIM

James DunneAssociate

2

OverviewInterpreting the Signals

From to

The OHIM What is covered by Nice? Registrability – what will be accepted Challenging and Defending What is “use”? Recommendations

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3

The OHIM Office for Harmonisation for the Internal Market

The agency responsible for registering Community Trade Marks (“CTM”) and designs that cover all 27 member states of the European Union

Population covered: 501,103,425 (2010 projection)Source: http://epp.eurostat.ec.europa.eu

Changes following the Treaty of Lisbon which came into force on 1 December 2009

4

OHIM Statistics of Note

763

13,775

89,948

88,207

2009

869723No of cancellations

16,25218,852No of oppositions

92,79881,488No of registrations

89,57888,036No of applications

2010(Jan-Nov only)

2008

Figures from OHIM statistics http://oami.europa.eu/ows/rw/pages/OHIM/statistics.en.do

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Impressive figures…..

but what can be learned by brand owners?

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A Source of Guidance Decisions of the OHIM, and the courts of appeal,

provide invaluable guidance to brand owners on:

1) obtaining a trade mark

2) enforcing a trade mark

3) defending a trade mark

Broadly, the guidance arises from:

a) Examination by the OHIM

b) Challenges from third parties, either by opposition, cancellation or invalidity actions

Can a filing strategy within the confines of the Nice Classification system and OHIM produce results for brand owners?

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The Nice Classification System The Nice Classification system is an international

classification of goods and services applied for the registration of trade marks

Currently on the 9th Edition with 45 Classes in total

- Goods are listed in Classes 1- 34

- Services are listed in Classes 35 - 45

Each Class contains “class headings”, for example:

Class 25: Clothing, footwear, headgear

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs

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The Nice Classification System Use/intent to use based applications (e.g. United

States) compared to no use requirements for a CTM application

Broad scope of specifications with CTM applications, including three-classes for one application fee

OHIM practice holds that the class heading covers allgoods or services in that class, whether listed or not

This is not a universal practice across member states Impact of previous ECJ decisions:

- Sieckmann Case C-273/00) of 12 December 2002 - Praktiker Bau-und Heimwerkermärkte AG Case C-

418/02 of 7 July 2005 Pending reference to the CJEU to determine the point

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Class Headings Cover All? Chartered Institute of Patent Attorneys' Application filed UK

Application No. 2528977 for IP TRANSLATOR on 16 October 2009 Claimed Education; providing of training; entertainment; sporting

and cultural activities in Class 41 Three questions were referred to the CJEU, asking whether is it:

1) Necessary for the various goods or services covered by a trade mark application to be identified with any and, if so, what particular degree of clarity and precision?

2) Permissible to use the general words of the class headings of the [Nice Classification] the purposes of identifying the various goods or services covered by a trade mark application?

3) Necessary or permissible for such use of the general words of the class headings of the [Nice Classification] to be interpreted in accordance with Communication No. 4103 of the President of the OHIM?

The decision will have a substantial impact on trade mark practice before both the OHIM and the EU national offices

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Registrabilty

What will the OHIM accept?

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RegistrabiltyAudi AG v OHIM [2010] 21 January 2010

Court of Justice of the European Union Case C-398/08 P

VORSPRUNG DURCH TECHNIK Issue: distinctive character of advertising slogans

PromoCell Bioscience Alive GmbH Biomedizinische Produkte v OHIM [2010] 9 February 2010

General Court Case T-113/09

SupplementPack

Issue: descriptiveness

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RegistrabiltyDeutsche Betriebskrankenkasse (Deutsche BKK) v OHIM [2010] 11 February 2010


Deutsche BKK Issue: descriptiveness

Abadía Retuerta, SA v OHIM [2010] 11 May 2010


CUVÉE PALOMAR Issue: geographical indication

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13

RegistrabiltyArbeitsgemeinschaft Golden Toast eV v OHIM [2010] 19 May 2010


GOLDEN TOAST Issue: descriptive mark

14

RegistrabiltyX Technology Swiss GmbH v OHIM [2010] 15 June 2010


Issue: Positional Marks/Indicator of Origin

Exalation Ltd v OHIM [2010] 9 July 2010


VEKTOR-LYCOPIN Issue: descriptive mark

8

15

RegistrabiltyKUKA Roboter GmbH v OHIM [2010] 13 September 2010


Image: www.kuka-robotics.com

Issue: colour mark/lack of distinctive character

16

RegistrabiltyLego Juris A/S v OHIM [2010] 14 September 2010

European Court of Justice Case C-48/09 P

Issue: registrability of shape marks

9

17

RegistrabiltyRosenruist-Gestao e serviços, Lda vs. OHIM [2010] 28 September 2010


Issue: devoid of distinctive character

18

RegistrabiltyCNH Global NV v OHIM [2010] 29 September 2010


Issue: figurative mark/distinctive character/ acquired distinctiveness

10

19

Now that the application has been accepted

…..what next?

20

Relative GroundsG-Star Raw Denim kft v OHIM [2010] 21 January 2010


Issue: likelihood of confusion

Enercon GmbH v OHIM [2010] 3 February 2010


TRANSFORMERS ENERGON / ENERCON Issue: comparison of marks/likelihood of confusion

11

21

Relative GroundsRahmi Özdemir v OHIM - Aktieselskabet af 21.November 2001 [2010] 23 February 2010


JACK & JONES, JACK JONES / JAMES JONES Issue: likelihood of confusion

Lufthansa AirPlus Servicekarten GmbH v OHIM [2010] 3 March 2010


AirPlus International Issue: comparison of marks

22

Relative GroundsWeldebräu mbH & Co. KG v OHIM T-24/08 [2010] 4 March 2010


Issue: comparison of three-dimensional marks

12

23

Relative GroundsSociété des Produits Nestlé SA v OHIM [2010] 25 March 2010

General Court Joined Cases T-5/08, T-6/08 and T-7/08

Issue: comparison of marks

24

Relative GroundsLaboratorios Byly SA v OHIM [2010] 14 April 2010


BYLY Issue: comparison of marks/likelihood of confusion

Peek & Cloppenburg and Van Graaf GmbH & Co. KG v OHIM [2010] 20 April 2010


Issue: comparison of marks with visual elements

13

25

Relative GroundsBarbara Becker v OHIM [2010] 24 June 2010


BECKER, BECKER ONLINE PRO / BARBARA BECKER

Issue: likelihood of confusion

MIP Metro Group Intellectual Property GmbH & Co KG v OHIM [2010] 25 June 2010


MEETING METRO Issue: comparison of marks/ likelihood of confusion

26

Relative GroundsEngelhorn KgaA v OHIM [2010] 8 July 2010


PETER STORM / PEERSTORM Issue: likelihood of confusion

Calvin Klein Trademark Trust v OHIM [2010] 2 September 2010


/ CK CREACIONES KENNYA Issue: comparison of marks

14

27

Relative GroundsTravel Service a.s. v OHIM [2010] 13 September 2010


Issue: comparison of marks/dominant element

The Procter & Gamble Company v OHIM [2010] 13 September 2010


/ P&G PRESTIGE BEAUTE

Issue: comparison of marks/likelihood of confusion

28

Relative GroundsEnercon GmbH v OHIM [2010] 14 September 2010

Case T-400/08

ENERGOL / ENERCON

Issue: comparison of marks/likelihood of confusion

15

29

The mark has registered ®

...but how is it used?

30

What is “Use” of a Mark?Atlas Transport GmbH v OHIM [2010] 10 June 2010


Issue: revocation for lack of genuine use

16

31

What is “Use” of a Mark?Grain Millers, Inc. v OHIM [2010] 9 July 2010


GRAIN MILLERS

Issue: use in the course of trade

Esber SA v OHIM [2009] 30 November 2009

Court of First Instance (now General Court) Case T-353/07

COLORIS Issue: comparison of marks/genuine use

32

Designs and Trade MarksBeifa Group Co. Ltd v OHIM [2010] 12 May 2010


Earlier trade mark Contested Design

Issue: invalidity/earlier trade mark and contested design

17

33

Designs and Trade Marks How can trade marks protect designs?

Registered designs law

Goodwill and passing off?

Caution!

Evaluate potential trade mark registration for design that are not particularly distinctive as they may not be enforceable

Need to ensure that in a word + device combination that the device is distinctive

34

RecommendationsWhat can be learned?

Pre-filing clearance searches

What to file

What will be accepted

Challenging and defending before the OHIM

Post-registration, how important is use?

18

35

Contact DetailsJames Dunne

Associate

t: +44 (020) 7556 4352

e: [email protected]

1

Prescient Voices: Key Indicators for the Direction of Copyright Law in 2011

Colin SawdyAssociate

2

Introduction

Main areas affecting copyright in 2010:

Databases

Copyright in computer programs

Internet transmissions

Newspaper headlines

Digital Economy Act

2

3

Databases

Football Dataco Limited and others v Brittens Pools Limited and others [2010] EWHC 841 (Ch) Annual fixture lists for the English and Scottish

premier leagues protected?

The Claimants: organise professional football matches in England and Scotland and produce and publish the annual fixture lists

The Defendants: football pools company, media company, betting companies who used the data for their own commercial means without obtaining a licence

4

Databases Claimants’ arguments:

Unlicensed use of fixture lists was an infringement of their rights

Fixture lists were protected under:

(i) database copyright (sections 3 and 3A Copyright, Designs and Patents Act 1988)

(ii) the sui generis right (Database Regulation 1997 SI 1997/3032)

(iii) copyright as a literary work irrespective of whether it was a database

3

5

Databases The Court’s findings:

Fixture lists were protected by database copyright

Selection and arrangement of the contents of the database could be protected even where this took place before all the data was created

Database copyright required that the contents of the database must represent the author's own intellectual creation

The Claimants’ efforts in creating the database entailed "significant labour and skill"

6

Databases The Court’s findings:

No sui generis database protection

Investment provided by the Claimant was held to be in the creation of the data and not in the obtaining and verifying or presenting of the data

No protection under copyright as a literary work

4

7

Databases Outcome:

A licence is now required to reproduce the fixture lists for English and Scottish premier leagues.

Appeal: questions referred to the Court of Justice of the European Union to advise on database copyright

8

Copyright in Computer Programs

SAS Institute Inc. v World Programming Limited [2010] EWHC 1829 (Ch) Are a computer program’s functions,

programming languages and interfaces protected by copyright?

Claimant: developer of analytical software called SAS used for data processing and is written in the SAS language

Defendant: created competitor product World Programming System using SAS language and emulating functions present in SAS software

5

9

Copyright in Computer Programs Claimant’s arguments: Defendant copied SAS manuals and copied SAS

components in software Defendant breached licence re use of a particular SAS

software

Article 1(2) Software Directive (Council Directive 91/250/EEC) Copyright protection for expression in any form of a

computer program but does not extend to ideas and principles underlying any element of a computer program

Software Directive is to be interpreted in accordance with Article 9(2) of TRIPS and Article 2 of the WIPO Copyright Treaty “Expressions” are protected by copyright “Ideas, procedures, methods of operation and mathematical

concepts as such” are not protected by copyright

10

Copyright in Computer Programs Findings of the Court: No infringement of copyright in SAS software by

reproducing functions of SAS software, elements of the SAS Language and the SAS data file formats

No infringement of copyright in manual describing those functions

While defendant’s use of licensed software was outside terms, the licence could not prohibit a user to observe, study and test software in order to determine underlying ideas and principles

Defendant infringed copyright in SAS manuals as literary works by substantially reproducing the language

6

11

Copyright in Computer Programs Questions referred to the Court of Justice of the

European Union: Does Article 1(2) of the Software Directive provide

that copyright does not protect

1. programming languages from being copied?

2. interfaces from being copied where the object code is not decompiled?

3. functions of programs from being copied?

Guidance is anxiously awaited!

12

Internet transmissions

Football Dataco Limited and others v Sportradar Gmbh and another [2010] EWHC 2911 (Ch) What law applies to the Internet: where a site is

hosted or where the site is viewed? The claimants: organise professional football

matches in England and Scotland and produce and publish annual fixture lists

The defendant: hosts live sports statistics on its servers in Germany and Austria

7

13

Internet transmissions Claimants’ arguments: Defendant copied data from “Football Live” database When British public viewed Defendant’s website,

Defendant was infringing Claimants’ UK copyright and database right

Football Live database was protected under: Database copyright (sections 3 and 3A Copyright,

Designs and Patents Act 1988) Database right (Regulation 13 Database Regulation 1997

SI 1997/3032) Copyright in a table or compilation, or as a literary work

(section 3 Copyright, Designs and Patents Act 1988) Copyright: unauthorised reproduction Database right: extracted and/or re-utilised whole or

substantial part of database without consent

14

Internet transmissions The Court’s findings: Infringement takes place where the site is hosted, not

where it is viewed

Re-utilisation = making available database contents

Referred to Directive on Satellite Broadcasting and Cable Re-transmission

‘Emission theory’: act of broadcast occurs where signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication

Act of making available to public by online transmission is committed only where transmission takes place

However, some consider making available right to take place both at the place of upload and download

8

15

Internet transmissions The Court’s findings: Public who view infringing material on Defendant’s site

would have primary liability for reproducing it on their computer screens

Defendant was authorising UK customers’ copyright infringement and was jointly liable for their copyright and database infringements

Outcome: Court had jurisdiction over claims

Infringers with servers outside UK not caught by making available right

Much debate is expected – future reference?

16

Newspaper headlines Newspaper Licensing Agency Ltd and others v

Meltwater Holding BV and others [2010] EWHC 3099 (Ch)

Newspaper article headlines protected by copyright?

The Claimants: major UK newspapers and the Newspaper Licensing Agency

The Defendants: online news monitoring service and an association representing interests of UK public relations providers

9

17

Newspaper headlines Claimants’ arguments: Unlicensed use was an infringement of their copyright Defendant was profiting from using news articles and some

headlines were protected copyright works End users of the defendant’s news service required a licence If end users did not require a licence, then the NLA sought to

charge defendant a higher fee to cover this use

Infopaq International A/S v Danske Dagblades Forening (Case C-5/08): Certain isolated sentences, or even certain parts of sentences in

the text in question, may be suitable for conveying originality and are therefore protected

Act of printing out an extract of 11 words during a data captureprocess does not fulfil the condition of being transient in nature and cannot be carried out without the consent of the relevant rightholders

18

Newspaper headlines A newspaper headline can be capable of copyright No defence of fair dealing for forwarding news articles

summaries with the headlines as they are aimed at targeted clients and not for public consumption

Media monitors will have to be careful how they use and report articles to ensure they do not infringe publisher's copyright

End users of online news monitoring services now require a copyright licence from publishers

10

19

Digital Economy Act Enhanced measures against persistent copyright infringers: Rights holder compiles lists of Internet Protocol addresses

of suspected infringers Rights holder sends each IP number to the relevant

Internet Service Provider together with a copyright infringement report

ISP examines report and if it meets required standard then sends a notification to subscriber in question

ISP keeps track of subscribers and if they reach threshold then go onto copyright infringement list

Rights holder then requests a copyright infringement list from the ISP

Rights holder then secures a court order to identify subscribers on the list and then commence copyright infringement action

20

Digital Economy Act What’s so controversial? £50,000 penalty for infringers, £250,000 for ISPs ISPs can impose “technical measures” on subscribers: Limit, suspend or terminate Internet access

Objections: Harsh penalties on subscribers and ISPs Blocking Internet access is infringement of civil liberties ISPs object to policing role Only applies to ISPs with over 400,000 customers so

could drive them to smaller ISPs to avoid detection Balance with interests of rights holders

11

21

Digital Economy Act Due to undergo judicial review

Brought by UK’s largest ISPs: BT and TalkTalk

1. Government failed to notify the European Commission as required by the Technical Standards Directive: granted

2. Provisions outlined in the Act not compatible with the E-Commerce Directive safe harbour provisions: granted

3. No compatibility with the Privacy and Electronic Communications Directive which states that the nature of the data handled by Internet Service Providers does not allow them to disclose this data and will contravene this directive if they do so: granted

4. Impact of the provisions in the Act will have a disproportionate effect on consumers: pending

Scheduled for February 2011

1

Views from the interface -Recent EU and UK competition law developments relating to intellectual property

Becket McGrathPartner, EU & Competition

2

Outline Introduction

Overview of EU and UK competition law

The IP/competition law interface

Patent developments

Trade mark developments

Developments in copyright

Conclusions

2

3

EU and UK competition law - I Chapter I of the Competition Act 1998 and Article 101

TFEU (ex 81 EC Treaty) prohibit:

agreements and concerted practices

between ‘undertakings’

which have the object or effect of preventing, restricting or distorting competition

unless they produce overriding economic benefits (in which case, they are ‘exempt’)

Exemptions: block exemptions or individual self-assessment

Infringing agreements are void and unenforceable, plus risk of public enforcement and fines or private actions, depending on conduct

4

EU and UK competition law - II

Chapter II of the Competition Act 1998 and Article 102 TFEU (ex 82 EC Treaty) prohibit: the abuse of a dominant market position

Dominance means the “ability to behave to an appreciable extent independently of competitors and customers”

Single firm dominance unlikely below 40% market share, presumed over 50%

Abuses may be exclusionary or exploitative. Analysis increasingly ‘effects based’, with scope for efficiency defences

Risk of public enforcement and fines or private actions, depending on conduct

3

5

Competition and IP Law Competition law vs IP Law

or

Competition law plus IP law?

“Intellectual property laws share the same objectives of promoting innovation and enhancing consumer welfare.”

European Commission Horizontal Agreement Guidelines – January 2010 (para 269)

Patent developments

4

7

What is a patent? The right to prevent others from using the patented

invention (including all applications of the invention)

For the lifetime of the patent (20 years in the EU)

Provided that the invention is patentable

In return for registration and public description of the invention

8

Patent exploitation A patent owner seeking to maximise the revenues associated

with a patent may: sell more patented products license the patent to more people sue as many infringers as it can find incorporate the patent into a standard (with or without

prior disclosure) erect a ‘patent cluster/thicket’ around the patent to

confuse challengers extend the life of the patent, eg by evergreening take measures to protect its market position after expiry of

the patent, eg ‘pay to delay’ settlements, ‘defensive patent strategies’

Q - In what circumstances might any of these tactics infringe competition law?

5

9

Case 1 - Rambus

Rambus JEDEC

PC OEMsJEDEC compliant DRAM chips

DRAM manufacturers

royalty claim

Specification for DRAM interface

Participation in standard setting process

10

Rambus – case procedure 18 December 2002 – Complaint to European Commission by

Infineon and Hynix against Rambus

27 July 2005 – Commission adopts Statement of Objections alleging infringement of Article 102 TFEU:

Rambus dominant in the market for DRAM interface technology at the point when it started asserting its patents (as the onlycompany asserting patents on that technology)

Royalties abusive because Rambus would not have been able to charge them absent its intentional deceptive conduct in not disclosing its own patents and applications, which deliberately frustrated the legitimate expectations of other participants in standard setting process

Clearly went against JEDEC policy, which was aimed at preventing one member from secretly capturing the standard

8 June 2008 - Rambus offers commitments

9 December 2009 - Commitments lowering royalty rates formally adopted and case closed

6

11

Case 2 - Qualcomm

Qualcomm

ITU

Mobile phoneOEMs

W-CDMA compliant chipsets

Rival chipset manufacturers

Participation in 3Gstandard setting process

Royalty claim

Specifications for 3G standard(incorporating CDMA and W-CDMA)

12

Qualcomm – case procedure 2005 – Complaints against Qualcomm to European

Commission from Ericsson, Nokia, Texas Instruments, Broadcom, NEC and Panasonic

1 October 2007 – Commission opens formal investigation under Art 102 TFEU to assess: whether Qualcomm is dominant whether licensing terms and royalties are fair,

reasonable and non-discriminatory whether exclusivity rebates exclusionary(?)

24 November 2009 – Commission closes investigation following withdrawal of all complaints (NB complainants already successful before Japanese and South Korean authorities)

June 2010 – Reports of new complaint against Qualcomm by Icera…

7

13

Case 3 – AstraZeneca – case procedure (1) 12 May 1999 – Generics (UK) and Scandinavian

Pharmaceuticals Generics complain to Commission against AstraZeneca’s steps to introduce generic versions of Losec(omeprazole)

15 June 2005 – Commission fines AstraZeneca €60 million for infringement of Art 102 TFEU based on: AstraZeneca dominant on market for proton pump

inhibitors Made misleading representations before certain patent

offices and national courts regarding the start date of its first EEA marketing authorisation, thereby obtaining supplementary protection certificates extending its patent protection by five years

Deregistered marketing authorisations for Losec capsules and withdrew from the market - replaced with Losectablets

14

AstraZeneca – case procedure (2)

1 July 2010 – General Court in Luxembourg upholds Commission infringement decision, while reducing fine to €52.5

16 September 2010 – AstraZeneca appeals to Court of Justice seeking setting aside of GC judgment and annulment of decision

8

15

Case 4 – Reckitt Benckiser – case procedure

2005 – RB withdraws and de-lists Gaviscon Original Liquid from NHS prescription channel (newer Gaviscon Advance Liquid, which would be returned by doctor’s search against ‘Gaviscon’, remained protected by patents)

March 2008 – BBC Newsnight reports “secret plan” by RB to block generic competitors to Gaviscon (included disclosure of internal memos referring to “clever idea to protect Gaviscon liquid from the generics threat”

23 February 2010 – OFT issues statement of objection alleging infringement of Chapter II prohibition and Art 102 TFEU: RB dominant on the market for the NHS supply of alginate

and antacid heartburn medicine abuse arose from withdrawal and de-listing after expiry of

patent but before assignment of generic name, preventing doctors prescribing under generic name

15 October 2010 – RB admits infringement, in return for reduction in fine from £12 million to £10.2 million

16

Case 5 – EU pharmaceuticals sector inquiry

15 January 2008 – Sector inquiry launched

28 November 2008 – Preliminary Report

8 July 2009 – Final Report

raised concerns over a range of strategies deployed by originators to delay generic entry

particular concerns over settlement agreements –22% of all settlements examined, worth €200m, viewed as “potentially problematic”

5 July 2010 monitoring report

17 January 2011- second monitoring exercise launched

9

17

Related enforcement cases

2 July 2009 – European Commission initiates proceedings against Servier and various generics companies relating to agreements to delay entry of generic perindopril

7 January 2010 – European Commission confirms formal investigation of Lundbeck, on concerns that it may have acted to delay entry of generic citalopram

30 November 2010 – European Commission conducts dawn raids at AstraZeneca and Nycomed, on concerns that companies may have acted together to delay generic entry of Nexium

All cases appear to be under Art 101 and 102 and all remain ongoing

Trade mark developments

10

19

What is a trade mark? A mark or symbol that guarantees the origin of a

product and that embodies the goodwill associated with that product

Registered owner holds the exclusive right to prevent unauthorised parties from using identical or similar signs in the course of trade for identical or similar goods/services to the class(es) of registration

Includes the exclusive right to place goods bearing that mark onto the market in the EEA or to authorise others to do so (exhausted after first marketing)

Key competition question: Is the trade mark owner using its rights to prevent or restrict cross-border sales within the EU?

20

Oracle v. M-Tech Data

Oracle

M-TechBroker

Customers

Authorised dealers

USAUSA UK

Sun diskdrives

11

21

Oracle v. M-Tech Data – key facts Oracle (then Sun) sued M-Tech for trade mark infringement

through putting Sun disk drives onto the UK market without its consent and sought summary judgment

M-Tech defences: Disk drives in question might already have been marketed

in the EEA, in which case rights were exhausted Enforcement of trade mark rights by Sun was contrary to

Arts 34 and 36 TFEU (ex Arts 28 and 30 EC Treaty) because, combined with the inability for secondary traders to determine the origin of Sun products, it prevents the attainment of a single market in Sun hardware that hasbeen first marketed with its consent in the EEA

Agreements between Sun and its authorised distributors preventing them from buying Sun hardware from independent distributors contrary to Article 101 TFEU, which is reinforced by Sun’s enforcement of its trade mark rights

22

Oracle v. M-Tech Data - judgments High Court - 25 November 2009 – Kitchin J Summary judgment granted, based on “the inevitable conclusion

that M-Tech has no defence to the claim” Court of Appeal – 24 August 2010 Order for summary judgment set aside, on the grounds that

defences were “properly arguable” According to Arden LJ:

there was a “real prospect” that Articles 5 and 7 of the Trade Mark Directive had to be interpreted by reference to Arts 34 and36 TFEU and thus that the Directive was not the last word on the question of the rights owner’s ability to block grey imports

there was an “arguable point” on the connection between the allegedly anticompetitive agreements and the trade mark infringement proceedings

“the practices alleged arguably have more to do with restricting imports with the object of preventing price competition within the EEA … than with the proper exercise of the right to control the first marketing of Oracle equipment within the EEA”

Case therefore remitted back to High Court for trial, with note that there was “a strong case for a reference” to the Court of Justice by the trial judge

12

Copyright developments

24

What is a copyright? The exclusive right of the creator of a work to copy it (or

issue copies to the public, adapt it, store it electronically, lend it, perform it or broadcast it, depending on the type of work and/or right)

No requirement to register

Duration = lifetime of creator plus 70 years (with some variations, eg 50 for music recordings)

Key competition question: Is the copyright owner using its rights to prevent or restrict cross-border sales within the EU?

Also issues around collective rights administration, eg concerning territorial exclusivity and tariff setting

13

25

FAPL and Others v. QC Leisure/Murphy v. MPS (1)

UK Greece

26


Three High Court cases resulting in combined hearing of references to Court of Justice of the EU under Art 267 (ex Art 234)

References raise complex issues concerning interplay between:

Television Without Frontiers Directive

Directive on Satellite Broadcasting

Conditional Access Directive

Copyright Directive

ss 297 & 298 CDPA 1988

Art 34 and 39 TFEU

Art 101 TFEU

14

27


Key issues

Is a set top box or access card lawfully put on the market in one Member State, with the broadcaster’s consent, but used in another (contrary to the terms of its sale) an ‘illicit device’ or is such term reserved for ‘pirate’ devices and cards?

Does Art 34 TFEU prevent enforcement of national laws that prohibit the import of such STBs?

Do contractual restrictions on sale and use of STBsoutside the intended country infringe Art 101 TFEU by object?

Hearing took place on 5 October 2010

Opinion of Kokott AG due out 4 February 2011

28

Conclusions Despite claims of shared goals, the interface between IP and

competition law will remain a contentious area The predominantly national nature of IPRs, compared with

the pan-European focus of EU competition rules, will ensure continued regulatory attention

The devil will be in the detail (eg what rights are involved, what is their scope?)

Don’t forget politics (cf attempts to develop a single European patent)

The attitude of the alleged infringer can have an impact (eg Has it deliberately broken the rules of a standard setting organisation? Is it implementing a ‘secret plan’?)

There is a lively trans-Atlantic trade in ideas, litigation and enforcement trends in this area

If you can throw up enough dust, a ‘Euro defence’ can work (at least to prevent summary judgment)

1

Potent Portents: A Summary of Developments in the USA IP Scene During 2010

Peter C. Schechter, Esq.Partner, EAPD New York

22

Or, Alternatively ….

GREAT (IP)

EXPECTATIONS

2

3

Five U.S. IP Cases That Matter

1. Bilski v. Kappos

2. AMP v. USPTO

3. i4i v. Microsoft

4. Tiffany v. eBay

5. Vernor v. Autodesk

3

4

Bilski v. Kappos

“Business Methods” Are Still Eligible Subject Matter for U.S. Patent Protection

4

3

5

Bilski’s InventionA method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

6

“Machine or Transformation” TestCAFC had announced restrictive "machine or transformation" test as the sole test for determining patent-eligible subject matter

A process or method is eligible subject matter for patenting if, and only if:

(1) it is are tied to a particular machine or apparatus,

or

(2) it transforms a particular article into a different state or thing.

4

7

Major Problem for Many Industries

Financial services

Computer software

Medical diagnostics

Medical research tools

……

8

REJECTED by U.S. Supreme Court

Supreme Court directed continued use of existing precedent that "abstract idea" (e.g., an algorithm) is not patentable

No Single Test Is To Be Applied

U.S. patent laws need to stay dynamic to encompass inventions in new and unforeseen technologies

Supreme Court chided CAFC for adopting "limitations and conditions which the legislature has not expressed" in patent statutes enacted by Congress

5

9

Tip

Business method patents remain an important category of intellectual property in the U.S. – add them to your portfolio in at least the fields of data processing, financial services, medical diagnostic and treatment, gene and biochemical research tools

10

Twin Cautions

(1) Although Supreme Court declined to impose specific limitations or tests, it practically invited lower courts to develop other "limiting criteria" (e.g., other tests for patent eligibility) for processes and methods

(2) 4 of 9 Justices wrote a separate opinion saying that business methods were never intended to be patent-eligible subject matter

6

11

AMP v. USPTO

HEADLINE NEWS:

“Isolated” DNA is not patentable-eligible subject matter

!!!!!11

12

No Immediate Reason To Jump

Only a federal district court (i.e., trial court) decision

7

13

Example of Invalidated Patent Claims1. An isolated DNA coding for a BRCA1

polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2. (U.S. Patent 5,747,282)

14

Example of Invalidated Patent Claims2. A method for diagnosing a predisposition

for breast cancer in a human subject which comprises comparing the germline sequence of the BRCA2 gene or the sequence of its mRNA in a tissue sample from said subject with the germline sequence of the wild-type BRCA2 gene or the sequence of its mRNA, wherein an alteration in the germline sequence of the BRCA2 gene or the sequence of its mRNA of the subject indicates a predisposition to said cancer. (U.S. Patent 6,033,857)

8

15

Example of Invalidated Patent Claims20. A method for screening potential cancer

therapeutics which comprises: growing a transformed eukaryotic host cell containing an altered BRCA1 gene causing cancer in the presence of a compound suspected of being a cancer therapeutic, growing said transformed eukaryotic host cell in the absence of said compound, determining the rate of growth of said host cell in the presence of said compound and the rate of growth of said host cell in the absence of said compound and comparing the growth rate of said host cells, wherein a slower rate of growth of said host cell in the presence of said compound is indicative of a cancer therapeutic. (U.S. Patent 5,747,282)

16

Why Invalid?

Composition of matter claims:

District Judge concluded that “isolated” DNA is a “product of nature,” and based invalidity ruling on its interpretation of old case law that “product of nature” is not patent-eligible subject matter

Method claims:

District Judge concluded that claims did not satisfy CAFC’s “machine or transformation”test

9

17

My Not-So-Bold Prediction

Trial court decision will be REVERSED

U.S. Supreme Court ruled 30 years ago in famous Diamond v. Chakrabarty case that even a living organism, i.e., a genetically modified bacterium, that is not found anywhere in nature, constitutes a patentable "composition of matter“

The “machine or transformation” test is not the only test for “method” claims

18

Tip

Business as usual in the business of genetic engineering

Likelihood of decision being upheld on appeal, and thus wiping out financial model of genetic engineering industry, is exceedingly low

(BUT if the Vegas odds-makers and conventional wisdom are wrong ….)

10

19

I4i v. Microsoft

POTENTIAL BLOCKBUSTER

19

20

What Is Going On Here?

U.S. Supreme Court will consider whether it should be relatively easier to invalidate U.S. patents in court when prior art relied upon by challenger was not considered by USPTO during prosecution of original patent application

11

21

WHY, and WHY NOW?

No good answers

22

Case’s Uneventful Background

Patentee i4i sued Microsoft for infringement

Microsoft said patent was invalid as anticipated (under 35 USC § 102(b)) by prior art i4i product called S4

Undisputed that i4i did not submit S4 product to USPTO during prosecution patent application

Jury ruled for i4i

12

23

Microsoft RebuffedMicrosoft argued:

USPTO never considered S4 software –

THUS standard of proof for invalidity should be lowered from the well-established “clear and convincing evidence” test to more easily demonstrated “preponderance of the evidence”test

HO HUM! Same argument made by losers and rejected by courts for

nearly 30 years!

24

Should Patent Owners Be Worried?

U.S. Supreme Court does not typically accept discretionary appeals of routine cases (like this one) to AFFIRM, so:

YES

13

25

Potential Consequences

1.Dramatically reduce value of all U.S. patents

2.Generally easier to invalidate U.S. patents through litigation

3.Cripple the USPTO

26

Tip

IF the Supreme Court accepts Microsoft’s position, conduct prior art searches and then submit every conceivable prior art reference to USPTO during patent prosecution

Help cripple the USPTO!

14

27

Tiffany v. eBay

Trademark Infringement Safe Harbor

for the

“Online Marketplace Operator”

28

Online Marketplace Operators Challenged

eBay: Internet-based, online marketplace facilitating sale and purchase millions of products

eBay’s website includes listings for popularly branded products, including “Tiffany” jewelry

Undisputed that some listed branded products are genuine, and “significant portion” are counterfeit

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Tiffany sued eBay

Claimed eBay’s facilitating and advertising the sale of counterfeit “Tiffany” goods constituted both direct and contributory trademark infringement, trademark dilution, and false advertising

Federal district court in New York ruled in favor of eBay

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“General Knowledge” Not Enough To Prove Contributory Infringement

“Online marketplace operators” like eBay become liable for contributory trademark infringement only when they continue to provide services to specific seller whom they know, or have reason to know, are selling counterfeit merchandise

General knowledge that the online service is being used for trademark infringement by some users is not enough

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“Best Practices” Preclude Liability

eBay’s satisfactory implementation and operation of anti-counterfeiting measures, including notice-and-take-down procedure, doomed Tiffany’s attempt to “demonstrate that eBay was supplying its service to individuals who it know or had reason to know were selling counterfeit Tiffany goods.”

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“Call Your Legislator”

Policy Issues Raised -

Trademark/brand owners should not be forced to monitor eBay’s website “24 hours a day and 365 days a year”

Court of Appeals suggested Tiffany should lobby U.S. Congress for legislation re-allocating burden of policing trademarks as between brand owners and online marketplace operators like eBay

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Tip

Online marketplace operators must:

(1) establish anti-counterfeiting measures, including effective and prompt notice-and-take-down procedures

(2) responsibly operate them

3434

Vernor v. Autodesk

YOU MAY NEVER “OWN” COMPUTER SOFTWARE AGAIN

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Did Vernor Buy or License?

Autodesk sold flagship 2D and 3D computer-aided design product, AutoCAD, pursuant to terms of shrink wrap license that:

(1) forbid resale

(2) reserved to Autodesk ownership of, and title to, the copy

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Did Vernor Buy or License?

AutoCAD was sold:

in sealed boxes

for a fixed price

with no-recurring fees or expirations for use

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What Vernor Did

Vernor offered used copies of AutoCAD on eBay

eBay removed his auction pursuant to Autodesk’s DMCA take-down notice

Vernor filed declaratory judgment action

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Vernor Is Licensee, Not OwnerCourt of Appeals held that Vernor’s resale of authentic, used Autodesk AutoCAD CDs constitutes copyright infringement because he is a licensee, and not a purchaser, of the copyrighted software programs

Contrary to popular understanding of most consumers who buy popular computer software programs; they rarely read “shrink wrap” or “click through” licenses

Because the CDs had never been “sold,”Autodesk’s rights were not exhausted by the Copyright Act’s “first sale doctrine”

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Major Victory

This decision was closely watched and is considered to be a major victory for the software industry and for other industries (such as music and film) where the content protected by copyright can be licensed separately from the physical medium in which it is transferred to users

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Tip

Documentation accompanying physical transfer of copy of software must make clear that software user is licensee, not an owner of purchased copy, by:

(1)stating that the user is granted a license;

(2)significantly restricting the user’s ability to transfer the software; and

(3)imposing notable use restrictions

21

THANK YOU!

Peter C. Schechter

[email protected]

+1-212-912-293441

1

Patentable Subject-Matter: Clear Skies Over Munich and Fog Over Washington

Lord Leonard Hoffmann

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What is an invention?

Section 6 of the Statute of Monopolies 1623:

“[A patent may be granted for] the sole Working or Making of any Manner of new Manufacture within this Realm”

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What is a Manner of new Manufacture ?

“Vendible product” ?

“Transformation of materials” ?

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Dixon CJ and Kitto and Windeyer JJ in the NRDC case (1959) 102 CLR 252:

“The truth is that any attempt to state the ambit of s. 6 of the Statute of Monopolies by precisely defining "manufacture" is bound to fail. The purpose of s. 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.”

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Two Principles of Non-Patentability

1. The practical application principle.

2. The human behaviour principle.

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The Practical Application Principle

You cannot patent:

A discoveryA principleAn algorithmInformationA scientific theoryAn aesthetic creation

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One Side of the Coin

“It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view would be the case, even though once you have made the discovery, the way in which it can be usefully employed is obvious enough.”

(Whitford J in Genentech [1989] RPC 147)

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The Other Side of the Coin

You cannot patent information, or a formula or method of producing the information, even though it is obvious how the information will be useful when you have got it.

Schlumberger Canada v Commissioner of Patents (1981) 56 CPR (2nd) 204 (FCA).

Claim to a computer programme which, by the use of a mathematical formula applied to geological information, predicted where underground deposits of oil and gas might be found. Useful information but no claim to a method of using the information.

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The Human Behaviour Principle

You cannot patent a manner of human behaviour such as methods of:

Flying an aeroplaneDoing businessPlaying sportsAvoiding taxTreating a patient

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An Example: Rolls-Royce Ltd’s Application [1963] RPC 253

A method of taking off in a jet aeroplane without making too much noise.

Lloyd-Jacob J: “I read the specification in suit as a disclosure of a general flight plan directing the initial operational movements of an aircraft between take-off and the commencement of free flying conditions, and this in my judgment is as much outside the operation of any of the useful arts as would be a trainer’s direction to a jockey in his control of a racehorse.”

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An Australian example: Grant v Commissioner of Patents [2006] FACFC 120

Claim 1:

“an asset protection method for protecting an asset owned by an owner, the method comprising the steps of:

establishing a trust having a trustee,

the owner making a gift of a sum of money to the trust,

the trustee making a loan of said sum of money from the trust to the owner, and

the trustee securing the loan by taking a charge for said sum of money over the asset.”

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Policy

Lloyd-Jacob J in the Rolls-Royce case:

“The responsibility of a pilot of an aircraft in flight carrying scores of passengers is already sufficiently onerous without adding to his burden the task of avoiding infringement of a statutory monopoly in the operation of his standard engine controls.”

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Two Separate Principles

The practical application principle and the human behaviour principle are not aspects of the same principle and it causes confusion to muddle them up.

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The European Patent ConventionArticle 52: (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

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European Patent Office Board of AppealEstimating sales activity/DUNS LICENSING

ASSOCIATES

8. The enumeration of typical non-inventions in Article 52(2) EPC covers subjects whose common feature is a substantial lack of technical character. The formulation of the law ultimately derives from the classical notion of invention adopted, which distinguishes between practical scientific applications and intellectual achievements in general.

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Conflict between the Court of Appeal and the EPO

Illustration: Re Gale’s Application [1991] RPC 191

A CD Rom carrying a programme with an improved method for extracting square roots

English approach: no patentable subject-matter

EPO approach: CD Rom is patentable subject-matter but not novel.

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Mutual Abuse

“[The approach of the EPO] is simply not intellectually honest”: Jacob LJ in Aerotel v Telco Holdings 27 October 2006.

“[The approach of the English Court of Appeal] is notconsistent with a good-faith interpretation of the European Patent Convention”: EPO Board of Appeal in Estimating sales activity/DUNS LICENSING ASSOCIATES 15 November 2006.

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Opinion of Enlarged Board of Appeal G 03/08 (12 May 2010)

“Suppose a patent application claims a cup carrying a certain picture (e.g. a company logo)...According to the ‘contribution approach’, cups are known, so that the ‘contribution to the art’ is only in a field excluded from patentability and the application may be refused under this provision, i.e. the application is considered to relate to...an aesthetic creation, a presentation of information or possibly even a method of doing business ‘as such’...

According to the [EPO] approach, for the purposes of Article 52(2) EPC the claimed subject-matter has to be considered without regard to the prior art. According to this view a claim to a cup is not excluded from patentability by article 52(2). Whether or not the claim also includes the feature that the cup as a certain picture on it is irrelevant. This approach has been characterised...as the “any hardware” or “any technical means” approach.”

[Such a claim will however] always fail to be patentable for lack of an inventive step under articles 52(1) and 56 EPC. Merely the EPC article applied is different. While the Enlarged Board is aware that this rejection for lack of an inventive step rather than exclusion under Article 52(2) is distasteful to many people, it is an approach which has been consistently developed since 1997...”

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The United States law on Patentability

United States Patent Act, § 101:

Inventions patentable

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

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State Street Bank & Trust Co v. Signature Financial Group, Inc. 149 F.3rd 1368 (Fed.Cir. 1998)

Claim 1:

A data processing system for managing a financial services configuration of a portfolio established as a partnership, each partner being one of a plurality of funds, comprising:(a) computer processor means;(b) storage means for storing data on a storage medium;(c) first means for initializing the storage medium;(d) second means for processing data regarding assets in the portfolio and each of the fundsfrom a previous day and data regarding increases or decreases in each of the funds' assets and for allocating the percentage share that each fund holds in the portfolio;(e) third means for processing data regarding daily incremental income, expenses, and net realized gain or loss for the portfolio and for allocating such data among each fund;(f) fourth means for processing data regarding daily net unrealized gain or loss for the portfolio and for allocating such data among each fund; and(g) fifth means for processing data regarding aggregate year-end income, expenses, and capital gain or loss for the portfolio and each of the funds.

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Rich, Circuit Judge:

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"—a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

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Rich, Circuit Judge.

As an alternative ground for invalidating patent under, the court relied on thejudicially-created, so-called "business method" exception to statutory subject matter. We take this opportunity to lay this ill-conceived exception to rest. Since its inception, the "business method" exception has merely represented the application of some general, but no longer applicable legal Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.

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In re Bilski, 545 F. 3rd 943 (Fed. Cir. 2008)Claim 1:

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactio

new ip inter action - locke lord · 2011. 2. 2. · kertel vs. google and cartophone court of...

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