Challenges to EPO decisions: a rational basis for irrationality

Sean Gilday

When he posted "The IPKat and his Blogging Friends -- a 2013 Round-up", here, last week, this Kat concluded with a call for new bloggers, or at least aspiring bloggers to stand up and make themselves known.  One such gallant soul to do just that is Sean Gilday, a trainee patent attorney at Page & Hargrave, Bristol, who has served time as an examiner at the UK Intellectual Property Office. The following is Sean's take on a decision of the Enlarged Board of Appeal at the European Patent Office that struck his attention:

An Appeal on the Ground of Irrationality

In response to Jeremy's recent call-to-arms for more blog contributors, I decided to chip in with a short article about a recent decision by the Enlarged Board of Appeal (BoA) at the EPO. I say "I" and not "this Kat", since I'm not a member of the blogging team (additionally, the anagramised versions of some of my attributes -- "I'm a CPA student" and "used to be a Civil Servant" become "stupid cat name" and "never debut via cat alias" respectively -- lead me to believe that something sidereal dictates that I shouldn't...). However, I will do my best!

The case is R 0019/1 and it concerns, inter alia, Art. 112a of the European Patent Convention (EPC), which contains the grounds upon which a party adversely affected by a decision of the Board may appeal against that decision. 

The decision in question was T 284/10, in which the Technical BoA dismissed an appeal by The Gates Corporation ('Gates') following the maintaining of a patent as granted. Gates was one of three opponents to the patent, the opposition of all parties having been rejected by the Opposition Division. After the Technical BoA dismissed the appeal against the rejection of the opposition in oral proceedings, Gates appealed and cited the grounds recited in Art. 112a EPC, namely that a fundamental violation of Art. 113 EPC had occurred --the right to be heard.

Following a communication in the summons to oral proceedings, in which Gates was informed that the petition may be found “clearly unallowable”, Gates wrote back in a letter of 3 September 2012, asking the Enlarged BoA to consider in its decision the grounds of irrationality, also known as 'Wednesbury Unreasonableness' as established in Associated Provincial Picture Houses v Wednesbury Corporation [1948]. This ground is an interesting feature of English case law, in which a decision by an authority may be subject to a judicial review on the ground that it was “so unreasonable that no reasonable authority could have decided that way”. An example of such a decision was given in Lord Justice Warrington in Short v Poole Corporation [1926] as ‘a red-haired teacher being dismissed because she had red hair’.

However, the Enlarged BoA was quick to nip this argument in the bud. In paragraph 2.4 of its Reasons of the Decision, the Board stated unequivocally that the grounds for appeal enumerated in Art. 112a constitute an exhaustive list: it was totally uninterested in incorporating anything analogous to the judicial review ground of irrationality (if nothing else, the sheer deluge of potential litigation to which such a move would expose the EPO would appear to prohibit this merely for reasons of pragmatism).

So this result was entirely expected. As the decision points out in its penultimate paragraph, this principle has been pretty thoroughly established in the case law of the BoA. Petitioners attempting to introduce additional grounds to those strictly recited in Art. 112a are likely to leave disappointed".

This Kat thanks Sean for his effort. With a bit of luck and some encouragement, he may pop up again, on this or other blogs, in the not-too-distant future. Merpel adds: if Sean can do it, perhaps you can too ...

Redhead artwork by adorablet on officialpsds

Student scholarships: thank you, INTA!

August in January, come what May. Always quick to growl at the International Trademark Association (INTA) when it rubs him up the wrong way, this  Kat feels that it is only proper to purr with pleasure when that august organisation does something which he considers commendable.  It is thus that the INTA receives its first katpat of the year for the following email from its Communications Coordinator Jean-Claude Darné:

"I saw this post on your blog: http://ipkitten.blogspot.com/2012/12/trade-mark-scholars-this-is-for-you.html [which ends with a bit of a rant ...] and thought your younger readers may be interested in a scholarship opportunity we’re offering INTA student members (bearing in mind that membership for students only costs $25 a year!).

Here’s the details:

Five scholarships will be awarded. Scholarship recipients will receive:

·         One FREE registration to the Annual Meeting – this includes ALL sessions, networking events and receptions.
·         Up to $500 stipend for travel expenses related to the meeting (the stipend will not be disbursed until the recipients have fulfilled all required activities listed.)
·         Complimentary hotel room for duration of meeting.
·         The opportunity to meet and network with trademark practitioners from around the world!
·         The opportunity to build your resume by being a speaker on a panel.

Scholarship recipients are required to:

·         Speak on a panel on Sunday, May 5 titled, “What Do Students Expect from Their IP Adjunct Professors?”
·         Moderated by one adjunct professor, the five scholarship recipients will discuss what they expect from their professors.
·         Required preparation will include attending 2-3 telephone conferences prior to the panel and attending one mock panel on the afternoon of Saturday, May 4.
·         Attend Career Development Day on Monday, May 6.
·         Assist INTA staff during the Annual Meeting. 
·         This may include proctoring courses, helping Annual Meeting speakers with PowerPoint presentations; or facilitating Speed Networking sessions. 

Interested students can connect with us via Facebook or Twitter and I’ll connect them to INTA staff member managing the scholarship program. We’re accepting applications until January 25^th".

Time is of the essence, since 25 January 2013 is not a hundred years away. Do please get in touch with JC -- or, if this is not for you but you know of someone who might be interested -- do spread the word!

Monday miscellany

Retail has moved on a bit
in recent years ...

IP and Retail.  The IPKat has heard from the organisers, CLT, that its Intellectual Property and Retailers conference in Holborn, London, on 13 February has been pulling in the registrants -- which is most gratifying for this Kat since he is chairing the day and greatly enjoys the buzz that is generated by a roomful of happy conferencers.  There are some excellent speakers (they're all excellent, actually), whose dedication, erudition and enthusiasm is at your disposal. If you've not yet registered but are still thinking of doing so, here's the link.

Preparing for the EQE? Patentanwalt and European Patent Attorney Rainer Loritz has written to the IPKat to let him know that, a few months ago, he completed his special edition of the "Guidelines for Examination in the European Patent Office" of June 2012. This edition shows the insertions and deletions as they relate to the old edition of 2010 (there is a separate version for each EPO official language). With the exception of the French version, it was actually published in November -- though happily the French version is now online. Adds Rainer, "I think this edition with visible 'deltas' might be especially useful for EQE preparation".  You can check it yourself here.


How happy is this Kat to see that two professional bodies in the United Kingdom -- the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys -- are willing to give up their members' time and commit themselves to bringing the new UK Minister for Intellectual Property up to speed. According to last Friday's press release:

Can you say"bifurcation" without moving your lips ...?

“Lord Younger has taken on the IP portfolio at a crucial stage in the detailed negotiations about the European Unitary Patent and associated Patents Court,” says Chris Mercer, president of the Chartered Institute of Patent Attorneys. “He will need to get to grips with a huge volume of background in very short order if he is to stand a chance of making the European IP system work better for British industry [he ain't going to do it, predicts Merpel]. We at CIPA have made the same offer as we made to the new minister’s predecessor [and he didn't do it either ...]:  we stand ready to offer information and guidance, based on our close involvement with the country’s most innovative companies.”

According to Catherine Wolfe, President of the Institute of Trade Mark Attorneys, the Intellectual Property Office (IPO) plans to undertake many new activities, announced last month (17 December 2012) by Secretary of State Vince Cable. "This is a very exciting time especially in relation to public education and outreach", Catherine Wolfe says. “ITMA will continue to invest time and energy in offering the UK’s IP minister the benefit of our knowledge and experience in the trade mark and design sector, which is increasingly recognised as an important area of the economy.”

Since 2007, when the post was created, the UK has appointed no fewer than six good souls as Minister for Intellectual Property.  This compares favourably with Chelsea Football Club which, under the inspirational control of Russian billionaire Roman Abramovitch, has had no fewer than nine managers.  The main difference between them is that, with its constant changes at the top, Chelsea has won eight trophies, while the rotating heads at the top of the UK's IP tree have won nothing but brickbats.

Around the weblogs. IP Draughts has been enjoying the re-runs, on the BBC Parliament TV channel, of the House of Commons Public Accounts Committee taking evidence on 12 November 2012 from representatives of Starbucks, Google and Amazon who were being asked whether those illustrious companies were paying enough tax in the UK --  or were they entering into tax avoidance schemes, sometimes involving royalty payments for use of intellectual property, to transfer revenue to a jurisdiction where tax rates were lower than in the UK. You can enjoy Mark Anderson's take on this legitimate but frustrating pastime here. Also highly worthy of note is Barry Sookman's materials pertinent to his talk at the Law Society of Upper Canada’s 17th 'Annual Intellectual Property Law: The Year in Review' programme. You don't just have to be Canadian to appreciate this: Barry's talk also spanned copyright developments the US, UK and Ireland, Australia, and Europe. You can take a peep here.

Letter from AmeriKat: USPTO and SCOTUS warm things up Stateside

Miles away from cold London,
the AmeriKat enjoys a gentle
walk in the Maldvian sand 

This past week the AmeriKat has been battling an incredibly strong urge to get on a flight back to the States. Usually at this time of year when the mercury starts to drop, everyone is righteously sticking to their New Years' Resolutions and there is more economic doom and gloom on the airwaves and in print, the AmeriKat cannot think of anywhere she'd rather not be.  This year the feeling seems to be especially acute. So after a friend's birthday this weekend she found herself reserving flights to New York and then to the Maldives.   Although she has yet to purchase said flights, the very promise of some American optimism and convenience, together with some warm Maldivian sand under her paws is enough, for now, to warm her chilly London apartment.

With FRANDs like these, who needs
anemones? Brett Morrison (c) 2009

The USPTO is also warming things up Stateside.  In the past week, the USPTO has published a policy paper on remedies for standards-essential patents subject to voluntary/F/RAND commitments, as well as dates for roundtables to discuss software patents.

The policy statement published on Tuesday sets out the US Department of Justice (DoJ's) Antitrust Division and the USPTO's perspectives on whether injunctive relief in judicial proceedings or exclusion orders in ITC cases are properly issued when a patent holder seeking such a remedy asserts standards-essential patents that are subject to RAND or FRAND licensing commitments.  After explaining the benefits of standards settings, the paper states that in some circumstances the remedy for an injunction or exclusion order may be inconsistent with the public interest, particularly where an exclusion order based on a F/RAND-encumbered patent appears to be incompatible with the terms of a patent holder's existing F/RAND licensing commitments to a standards developing organization (SDO).  For example, it may be concluded that a holder of such a patent had attempted to use an exclusion order to pressure a user of a standard to accept more onerous licensing terms than the patent holder would be otherwise entitled to receive under a F/RAND commitment with the view to "reclaim some of its enhanced market power" over users who relied on the assumption that those patents subject to the standard would be available on the same reasonable licensing terms.  An order in these circumstances may harm competition and consumers "by degrading one of the tools SDOs employ to mitigate the threat of such opportunistic actions by the holders of F/RAND-encumbered patents that are essential to their standards."  The paper nevertheless recognizes that an exclusion order may still be appropriate where a potential licencee is unable to or refuses to take a F/RAND licence and "is acting outside the scope of the patent holder's commitment to licence on F/RAND terms."  The paper concludes with two key points:  that it may be appropriate for the US ITC to delay the effective date of an exclusion order for a limited period of time to provide parties the opportunity to conclude a F/RAND licence and that decisions involving F/RAND encumbered standards-essential patents should be made with a view to promoting appropriate compensation for patent holders and strong incentives for innovators to participate in standards-setting activities. [ "Sounds imminently reasonable", yawns the AmeriKat.....]

Palms inhabiting a courtyard at Stanford University
(c) Stanford University

On 12 and 27 February 2013, the USPTO's General Counsel's office will be holding roundtables on the "Enhancement of Quality of Software-Related Patents" in New York City and Stanford, California.  Following, although probably not as a result of, David Kappos's speech on software patents last November, General Counsel, Bernard J. Knight, Jr, will be hosting the roundtables.  Mr Knight's legal background seems primarily focused on tax law, so she will be intrigued as to how the roundtable sessions will go in such a politically charged and often complex area like software patents.  The Federal Register Notice dated 27 December 2012 by Kappos explains that the USPTO seeks to form a partnership with the software community in order to enhance the quality of software-related patents, known as the Software Partnership, first by way of these roundtable sessions.   The statement reads:

"To commence the Software Partnership and to provide increased opportunities for all to participate, the USPTO is sponsoring two roundtable events with identical agendas, one in Silicon Valley, and the other in New York City. Each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought. 

For these initial roundtable events, this notice sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language. The second topic requests that the public identify additional topics for future discussion by the Software Partnership. The third topic relates to a forthcoming Request for Comments on Preparation of Patent Applications and offers an opportunity for oral presentations on the Request for Comments at the Silicon Valley and New York City roundtable events. Written comments are requested in response to the first two discussion topics. Written comments on the third discussion topic must be submitted as directed in the forthcoming Request for Comments on Preparation of Patent Applications."

Readers can address their written comments to  SoftwareRoundtable2013@uspto.gov.  The comments will be available for public inspection via the USPTO website.  For further guidance and background on the three topics, please see the Federal Register Notice here.

For busy IBM inventors in Brazil,
Fernando de Noronha off the coast of Brazil,
may be the ideal paradise to unwind.  Just
be sure to invite the AmeriKat.   

IBM tops the patent charts, again:  For the 20th year running, IBM has topped the patent charts with 6,478 patents in 2012 - a record for the company.  Approximately 30% of IBM's patents were produced by inventors outside of the US in R&D centers in Canada, Japan, Germany, the UK and Israel.  IBM's chief patent counsel, Manny Schecter, stated that the contribution of non-US-based inventions is expected to increase with the increasing productivity of new centers in Brazil and Kenya.  Samsung, Canon and Sony followed IBM in the table.  Following some easy Google searching, the AmeriKat was pleased to find that Schecter is an active Tweeter - to tweet Manny a congratulations on IBM's Meryl Streep-style streak, click here.

Nike of Samothrace at the Louvre.  Samothrace
is Greek island with ancient ruins of Palaepoli
including the Sanctuary of the Great Gods 
The AmeriKat (c) 2007

Nike Wins "Air Force 1s" Supreme Court Battle:  Last week, the US Supreme Court issued its decision in favor of Nike in its trade mark dispute against Already LLC.   Nike brought proceedings against Already in respect of two of its athletic shoes which it said infringed and diluted the Air Force 1 trade mark.  Already counterclaimed contending that the trade mark was invalid.  After Nike filed its complaint Nike issued a "Covenant Not to Sue" which, in its preamble  stated that "Already's actions . . . no longer infringe or dilute the NIKE Mark at a level sufficient to warrant the substantial time and expense of continued litigation".  After issuing the covenant, Nike moved to dismiss its claims and Already's invalidity counterclaim.  Already opposed dismissal of its counterclaim arguing that Nike had not established that its voluntary cessation had mooted its case.  In support of the argument  Already produced statements from potential investors claiming that they would not invest in Already until the Nike trade mark was invalidated.  The District Court dismissed the counterclaims concluding there was no justiciable controversy   The Second Circuit Court of Appeals affirmed explaining that the covenant was broadly drafted and as such, the court could not conceive of a shoe that would infringe Nike's trade mark yet would not fall within the covenant.   Already appealed to the Supreme Court who held that Nike's covenant not to pursue an infringement claim against Already was broad enough to moot the counterclaim.  Writing the unanimous opinion of the Court, Chief Justice Roberts stated:

"The covenant is unconditional and irrevocable. It prohibits Nike from filing suit or making any claim or demand; protects both Already and Already’s distributors and customers; and covers not just current or previous designs, but also colorable imitations. Once Nike demonstrated that the covenant encompasses all of Already’s allegedly unlawful conduct, it became incumbent on Already to indicate that it engages in or has sufficiently concrete plans to engage in activities that would arguably infringe Nike’s trademark yet not be covered by the covenant. But Already failed to do so in the courts below or in this Court. The case is thus moot because the challenged conduct cannot reasonably be expected to recur."

In response to Already's policy objection that in dismissing the claim Nike is allowed to bully small innovators, the Court stated this argument did not support Already's case on standing. Instead, the Court held :

"Granting covenants not to sue may be a risky long-term strategy for a trademark holder. And while accepting Already’s theory may benefit the small competitor in this case, it also lowers the gates for larger companies with more resources, who may challenge the intellectual property portfolios of more humble rivals simply because they are competitors in the same market. This would further encourage parties to employ litigation as a weapon against their competitors rather than as a last resort for settling disputes.... Already’s only legally cognizable injury—the fact that Nike took steps to enforce its trademark—is now gone and, given the breadth of the covenant, cannot reasonably be expected to recur. There being no other basis on which to find a live controversy, the case is clearly moot."  

A clear lesson from the Supreme Court on when not to fight for the sake of fighting, but also a reassuring stance for intellectual property owners who will be comforted by the fact that a decision to end their infringement actions may not expose them to continuing challenges to the validity of their rights (in exchange for a very broad covenant, of course!)

Is Disclosure a Justification for Maintaining the Patent System?

The question is simple: to what extent is disclosure a justification for the patent system? The query itself may seem a bit odd. Patent professionals may grouse about this or that aspect of the patent system and many may feel that the system can be improved. But that is in the nature of things. There is no sub-celestial legal arrangement providing for the creation, protection and disposition of rights that cannot be improved. But this process of trial and error to create a better patent system is one thing; asking whether the patent system can be justified and, if so, how, is quite a different matter.

Viewed from the Academy, however, seeking justification(s) for the patent system is much more central. This is so, even though the ultimate outcome of the inquiry is itself opaque: does the existence of the patent system depend upon whether a consensual basis (or bases) for its justification can be found? Moreover, it had always been this Kat's impression that there was widespread agreement that the patent system is a grand bargain to encourage the disclosure of inventions in exchange for a limited period of exclusivity for the invention.

It now seems that this Kat is mistaken. As stated by Professor Mark Lemley of Stanford University, in his article "The Myth of the Sole Inventor", Michigan Law Review, vol. 110, no. 5, March 2012, disclosure theory has been relegated to merely a "subsidiary justification" for the patent system. Even on that basis, disclosure theory is deficient:

"[d]isclosure theory cannot, however, support the modern patent system. Simply put, inventors don't learn their science from patents." 

Lemley's observation is part of a much-more elaborate attack on the notion that patent law is about how to provide proper incentives so so to enable the "lone genius" to solve a seemingly insuperable problem. Invention, argues Lemley, is "a social, not an individal, phenomenon" and none of the current theoretical justifications for patent law, including "disclosure theory", adequately explains how patent law is really carried out.

As for disclosure theory, it is not denied that inventors need a flow of information to invent. Rather, for a number of reasons, "inventors don't learn their science from patents:"

1. At least with respect to U.S. law, the Federal Circuit too often allows vague disclosures and patent attorneys have every incentive to draft such types of disclosures.

2. Publication of an application takes place only after 18 months and grant takes multiple years. The upshot, it is argued, is that the patent system reveals the state of the art from, at the best, two or three years in the past.

3. There are at best dimensioning returns from seeking to read the relevant corpus of patents. There are simply too many patents to consider; classification of patents is uncertain; the technological language used is too often obfuscatory in nature; and, at least in the U.S., the threat of being found a willful infringer means that inventors are counselled not to read patents, lest such patents be later found to be infringed.

4. Whatever benefits may be derived from the disclosure of patents and the information, such advantages are outweighed by the various deleterious costs of conferring a 20-year monopoly on the inventor. Stated otherwise, if disclosure is the reason that we are prepared to do harm to principles of competition and economic efficiency, it is better perhaps to jettison the patent system.

Lemley's arguments against "disclosure theory" then consider a basic fault line in the protection of inventions--whether to patent or seek trade secret protection. In a word, the position is that what drives patents (and the ensuing disclosure of the invention) is not patent law but rather trade secret protection. Here, the argument goes, patents are much more likely to be filed only if the invention is not self-disclosing. If it is, then a patent (and the accompanying disclosure of the invention) will be preferred. If the invention is not self-disclosing, however, then secrecy is more likely to be the route taken. The conclusion:

"[w]hile patent protection may induce some disclosures at the margin, trade secret law appears to do as much more more than patent law to encourage the disclosure of non-self-disclosing inventions."

In a nutshell, according to Lemley, patent disclosures are of only limited interest and use to inventors and patent protection is sought only if the invention cannot reasonably be kept secret. Seen in this way, the disclosure theory is conceptually dissonant from the way that patents are practised.

In considering this conclusion, however, this Kat had the gnawing feeling that, while the arguments are well-stated, there is too little reliance on empirical research. With respect to the preference of inventors to file for patents only if the invention is self-disclosing, the article cites three research studies. In the main, however, there is little empirical evidence to support the arguments. In particular, this Kat still awaits empirical results that show that the advantages of disclosure are outweighed by the costs to competition and economic efficiency. Until then, this Kat is not ready, just yet, to stop telling students about the importance of the grand patent bargain of disclosure in exchange for exclusivity for a fixed period.

Friday fantasies

Katnews 1. Darren Smyth, a former guest Kat and a bit of an enthusiast for patents, design rights and interesting shirts, is rejoining the IPKat team -- this time as a full-timer.  Despite impressions to the contrary which readers may receive from the photo on the right, Darren doesn't just stop in the middle: he goes all the way down to the ground.   When not blogging for the IPKat or for his own, decidedly personal, blog the IP Alchemist, Darren partnerises at EIP, an IP practice in Holborn, London, which is fortuitously located quite close to the Old Nick. Welcome back, Darren

Katnews 2. Stefano Barazza, the eponymous head (and presumably also tail) of Studio Barazza Legale, has joined the IPKat team as our third guest blogger for the six months to 30 June.  An omnivorous enthusiast, his interests span vast chunks of IP law, which he practises from the haven of his office in Udine, North East Italy.  Stefano has of late been a regular contributor to the Journal of Intellectual Property Law & Practice (JIPLP) but, to show how versatile he is, he has just written a piece for the Journal of European Competition Law  Practice ("Commission v Microsoft: How to Set Reasonable Rates for Access to Interoperability Information and Evaluate their Innovative Character?", abstract here).

What should be done about unpaid OHIM costs orders?   The fate of orders which the Office for Harmonisation in the Internal Market (OHIM) makes in proceedings relating to Community trade marks is that, it seems, not quite everyone complies with them.  This phenomenon has attracted the attention of Katfriend Désirée Fields (McDermott Will & Emery UK, London), whose pensée on the subject can be read on the MARQUES Class 46 website here.  There's a discussion on this topic on the MARQUES Linked In Group page too. So, if you are someone who is owed too small a sum to be cost-effectively enforced, or if you're perhaps someone who doesn't pay when ordered to do so, let's hear from you  [that's neat, says Merpel: this blog doesn't often feature words ending in 'ée', but there are two in this note].

"Something for the weekend, sir?" is a phrase which readers of this Kat's vintage will rarely hear without a tinge of nostalgia for those bygone days when, oh never mind ...  But the proprietors of the Guardian and Observer newspapers (for those whose weekend bedroom habits involve the spreading out of newspapers) insist that the weekend belongs to them, literally.  "We own the weekend", states this jocular tale of trade mark proprietorship.  Says the IPKat, what fun!  But Merpel wants to know: wight this literary text and accompanying video clip be admitted in evidence of the newspapers' reputation and goodwill in the word "weekend", whether as a 'limping brand' trailing behind the dominant brands Guardian and Observer? A katpat goes to the wonderful Margaret Llewelyn for this lead ...

Go with the Flos? AIPPI debates copyright in industrially exploited designs

The IPKat is indebted to the industrious pen of Annabelle Maddison (Bristows) for this report on last night's meeting of the UK cell of the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) on the theme of "Section 52: Should it stay or should it go?"  The Section 52 in question belongs to the Copyright Designs and Patents Act 1988 (CDPA) and it limits the term of copyright protection for industrially exploited artistic designs to just 25 years.  While this provision is due to be repealed by the current Enterprise and Regulatory Reform Bill, there are those who feel that it is harmless or even beneficial and that we can grow to love it if we only understand its true meaning and significance.   This is what Annabelle (who has earned herself a katpat for her efforts) writes:

"If you want it cheap – Buy British!

The words which head this report are not quite what I was expecting to be presented with in support of the repealing of section 52 of the Copyright Designs and Patents Act 1988 -- but I shall come back to this point ... 

Yesterday night, the Rt Hon. Professor Sir Robin Jacob chaired a debate (organised by the AIPPI) between Prof. Lionel Bently (Herchel Smith Professor of Intellectual Property at the University of Cambridge) and Dr Reinhard Oertli (Meyerlustenberger Lachenal, Switzerland) on the repealing of section 52 – should it stay, or should it go?

The Flos ruling shed much
light on EU design policy

You could be forgiven for missing the British government’s decision to repeal section 52 of the CDPA. It has somewhat been under the radar [one might suggest that, given the manner in which it is being done and the lack of consultation, the intention was that you should indeed miss it] but repealed section 52 will be -- by the Enterprise and Regulatory Reform Bill -- and, when that happens, there will be no further limitation of copyright protection for industrially exploited designs to 25 years. Why? Because following the decision of the Court of Justice of the European Union in Case C-169/08 Flos v Semeraro, the government considers section 52 to be in conflict with the Copyright Term Directive, which harmonised the term of copyright protection in the EU to life of the author plus 70 years.

"Just who are you calling
ill-conceived?" 

Prof. Bently presented his argument that repeal of section 52 is “ill-considered, undesirable and ill-conceived”. Acknowledging that section 52 is far from perfect (relying on statutory instrument to define terms and containing difficult to justify exceptions, for example) nevertheless, it achieves its objective: harmonisation of the protection for designs. Removing this limitation quite obviously causes issues for manufacturers (and consumers) of replica products, but Prof. Bently raised two further concerns. First, those making use of images of design articles could now find themselves under increasing threat of infringement proceedings (there being no fair dealing defence). Dismissed by some in the audience, this was raised as a very real problem by one attendee with first hand-experience of such threats. Secondly, the use in new works of motifs from the existing corpus, the so-called “follow-on design”. The protection of “any original part” offered by copyright law will arguably make this impossible (conversely, existing design law allows such use, so long as it creates a different overall impression on the informed user).

Even if Flos is right (which Prof. Bently argued strongly it was not), by Article 17 of the Design Directive, Member States retain the right to regulate the breadth of protection afforded to designs by virtue of national copyright laws. Even Dr Oertli did not argue that the repeal of section 52 was required by Flos. Instead, his argument was based on Article 2 of the Berne Convention and, specifically, on the inclusion of “works of applied art” as literary and artistic works.

Out-of-the-box
ideas bear thinking about

The conclusion from the evening? Section 52 does not necessarily need to be repealed on the basis of Flos, but that does not mean that this is not a good opportunity for consultation as to the best way to ensure that the relationship between copyright and design law remains fit for purpose. Opinion from the floor was fairly unanimous in this regard. Is there an argument for a perpetual copyright with a change in the test for infringement after a certain number of years? [Credit for this out-of-the-box thinking goes to Sir Robin]. As for buying British...I shall be taking on board the advice of Dr Oertli and, rather than spending her hard-earned cash on well-made Italian replicas of iconic design pieces, will instead be embracing the original designs of emerging British designers – eager to pay off their student loans!"

Two Ministers: separated at birth -- and still the wrong way round?

Bishop Welby

Lord Younger

Not normally one to judge by appearances, or indeed even to notice them unless they're being registered as trade marks or meeting him for a pint of Badger at the Old Nick, this Kat was struck this morning when he spotted this picture on the left.  Was Viscount Younger, the United Kingdom's new Minister for Intellectual Property, also going to be installed next month as Archbishop of Canterbury?  If you peruse the two photographs, you too may appreciate the close resemblance of these near-contemporaries (Lord Younger was born in 1955, Justin Welby in 1956)

Alas, says this Kat, this is where the similarity between the two men ends.

The Archbishop-elect and symbolic head of the world's 75 million or so Anglicans, Justin Welby is currently Bishop of Durham -- but he has 11 years of business experience under his belt with Elf Aquitaine and Enterprise Oil plc.   The Parliament.UK biography of the new Minister for Intellectual Property does not however contain any reference to a track record in business, industry or commerce.

Merpel adds: it's a strange world.  Once upon a time, business experience and familiarity with the ways of the industrial world might be seen as assets in the armoury of a Minister responsible for what is, after all, an area of business and industry -- and the ability to produce hot air and pontificate were not unreasonably viewed as part of the skills set of any senior member of the clergy.  Now it seems to be quite the other way round ...

For the avoidance of doubt, both the IPKat and Merpel wish both men the best of luck in their respective posts, though they suspect they know which one will be in post the longer.

Wednesday whimsies

And now Las Vegas' Caesar's
Palace is opening a Regional
Office in Munich ...

Earlier this week the attention of some curious Kats was drawn to this document which appears to prove that the fees received by the European Patent Office have resulted in a 'profit' for that office of more than 55 million euros -- which that good office is donating to its employees. The EPO's Administrative Council has decided that each full-time employee is to receive a tax-free and deduction-free sum of 4,000 euros, which is as good a way of 'losing' 27,656,000 euro as this Kat can think of. Another 27,656,000 euro is being donated to the Reserve Fund for Pensions for former employees.  Merpel, who is always fascinated by other people's money, thinks that 55 million euro is a good deal more than she can easily spend in an afternoon; she wonders, though, wherever did all that money come from, and to whom did it belong before it fell into the pockets of the EPO?  (A katpat goes to patentanwalt Rainer Boeckelen for this lead).

Some patent-y readers have often expressed an interest in knowing when the special edition of the PCT Applicant’s Guide, prepared for students sitting the EQE [European Qualifying Examination] exams, will be available. WIPO's Rosina Bisi (katpat!) has kindly written to let us know that WIPO is in the process of compiling a new version, which will contain the entire contents of the Guide as of 31 December 2012, and that the plan is to post it on the WIPO website during the week of 21 January. Rosina promises to tell the Kats when its live and available for download.


Just out and not yet in the IPKat's paws is a new book, International Copyright Law and Access to Education in Developing Countries, by Susan Isiko Štrba. According to the publisher's blurb,

"In International Copyright Law and Access to Education in Developing Countries: Exploring Multilateral Legal and Quasi-Legal Solutions, Susan Isiko Štrba offers an understanding of the legal relationship between copyright regulation and access to education in developing countries, and explores both institutional and normative ways to facilitate access to printed educational and research materials.

The author explores the question of whether limitations or exceptions (flexibilities) in international intellectual property law can be utilised to balance the private interest of intellectual property right holders and the public interest of IP users and highlights the role of national institutions in crafting case-by-case educational exceptions in ways that may make WTO retaliation more onerous. Institutional reform and normative re-ordering within the intellectual property system and affiliated institutions are evaluated within an overall framework of new approaches for providing access solutions".

Full details of this title, which is published by Brill and retails at £112, can be found here.

We don't envy the Americans their IP system -- or do we?

The results of the IPKat's sidebar poll, which closed earlier today, demonstrate clearly that the level of envy which the rest of the world is reputed, most frequently by David ("Dave") Kappos, to feel towards the United State' intellectual property system is by no means as high as has been claimed.

This exercise was generated by two things. The first was a genuine sense of irritation at the message itself and the feeling that, whether the sentiment truly belonged to David or was regularly dropped into his set-piece speeches by zealous aides and assistants, it was very seriously wrong and would be more likely cause damage, in persuading Americans that this was so, than to achieve anything concrete by persuading non-US folk of the virtues of US IP laws.  The second was a desire to test out the power of the social media to put a proposition to proof and see what evidence existed.

The final figures are as follows:

Do you envy the US its patent system? (300 responses)

Yes, it's brilliant 19 (6%)
Maybe, if the America Invents Act works out 28 (9%)
No way! 253 (84%)

Do you envy the US its trade mark system? (170 responses)

Sure, it's great for owners, competitors and consumers 23 (13%)
I might if I could only understand the Lanham Act 41 (24%)
Never! It's convoluted, complex and contradictory 106 (62%)

Do you envy the US its copyright system? (162 responses)

You bet! Google could not have been created anywhere else 18 (11%)
I might if there was some consensus as to what it actually is 56 (34%)
Not in this life or for many years beyond it! 88 (54%)

Eagle-eyed readers will note that, in each case, the aggregated percentages reach just 99, not 100; this is the result of the Google poll app rounding figures up or down to the nearest whole number.  They will also spot that the number of responses to the patent question substantially exceeds the responses to the trade mark and copyright questions.  Merpel thinks she can explain this: some voters may have clicked on each of their preferred answers and then pressed the Vote button just once, assuming that it would work for all three.

Says the IPKat, now that we've established that we don't envy the United States its patent system, let's now see if in reality there are bits of it which we do envy, if only we are honest.  A brand new set of three questions has just been posted in the side bar for your consideration. Please do tell us what you think!

The first relates to the US Intellectual Property Enforcement Coordinator (IPEC), an office which has the ear of the White House and which enables the various public services involved in customs, criminal enforcement, export control, overseas aid to outsourcing IP owners -- and more besides -- to work more effectively together and understand each other's issues.

The second relates to the International Trade Commission (ITC), a Federal agency which has a remit that includes dealing with alleged importation of infringing products, anti-dumping and other international trade issues that are of concern to IP owneers -- and which has powerful remedial powers.

The third relates to the user interface and online services of the US Patent and Trademark Office (USPTO), one of the world's leading offices in terms of processing applications and grants for registered rights and which has long had a formative influence on the storage, search, translation, access, examination and grant practices of many other offices.

As before, the three questions occupy the top berth in the IPKat's sidebar poll. Next week, with luck, we'll have some fascinating figures.