Tuesday, 29 November 2011

Class headings do not cover all

Advocate General Bot has given his opinion in the IP Translator case, Case 307/10, Chartered Institute of Patent Attorneys indicating that he doesn't think that an application that repeats the class heading from the Nice Classification does cover all the goods or services in the class. If that sounds arcane, consider the application in suit - which was designed, and filed, with a view to getting an authoritative statement of the law in this area: CIPA filed for the UK trade mark IP TRANSLATOR in Class 41, the class for translation services, for "education; providing of training; entertainment; sporting and cultural activities" - the class heading for that Class, to which translation services are proper, but which does not include them.

The AG says that the goods or services have to be stated with sufficient precision and clarity as to enable the competent authorities and "economic operators" (are they related to stakeholders, perhaps?) accurately to determine the scope of the trade mark. Exactly. The appropriate level of generality will vary from case to case - that sounds like a bit of a cop-out, but at the level at which the Court of Justice operates statements like that are surely unavoidable. The class headings might, says the AG, suffice for this purpose, so they could be used - but subject to that comment about precision and clarity (and it seems to be lacking in class 41).

Then he comes to the nub of the problem, Communication 4/03 of the President of OHIM, which established the "class headings cover all" principle. This does not satisfy the requirement for precision and clarity, whether for Community trade marks or national ones - and this leads to cluttering, because there are too many over-broad registrations. Moreover, there is the interesting paradox (all tied up with the difficult question of how this mess can be fixed) that specifications will have to be amended by being limited (maybe the addition of the time-honoured formula, "all being translation services", if that's still permissible, to the IP TRANSLATOR specification) but the limitation will have the effect of adding goods or services that weren't included in the first place. Only the European Union could create chaos like this.

The fact that Nice is periodically amended, and new goods and services slotted into the existing classes, which often retain unchanged class headings, is another demonstration of the absurdity of allowing registrations on this basis. Precision and clarity are absolutely essential, not the lazy, thoughtless approach encouraged by OHIM's ruling, and moreover we need something that links registrations more closely to the actual use made of the trade mark, otherwise the registers - national and regional - will become more cluttered, the range of available trade marks will become more depleted, and businesses will find markets foreclosed to them just because they cannot use the trade marks they want (or need) to be able to use. Let's hope the Court of Justice recognises these problems and imposes some commonsense on the trade mark system.

Computer simulations patentable

In Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (05 October 2011)  the Patents Court (HHJ Birss QC) held that computer simulations of designs are not just mental acts (and therefore unpatentable). The IPO had wrongly applied patent law when it assessed four applications for patents for computer simulations of designs for the working of drill bits for the oil industry. The IPO had wrongly asked whether the inventions were capable of being performed mentally: the right question was whether they were in fact merely performed mentally. This had caused the IPO to fail to recognise that the claims were make only in relation to the simulations themselves and were therefore not subject to the exclusion for mental acts. The examiner had applied the exclusion on too broad a basis.
“The claimed invention cannot be performed by purely mental means and that is the end of the matter. Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion.”
The judge said that the inventions were not subject to any of the other exceptions to patentability. They merged mathematical calculations with computer software and were sufficiently technical to be patentable. The invention was more than just a computer program: it was a method of designing a drill bit, and it did not fall solely within the excluded territory.
The problem with the application had been that it was very broad. It did not not tether the claims to simulations on a computer, or to actually manufacturing improved drill bits, but this was deliberate as the draftsman wanted to catch such matters as consultants designing drill bits as well as bits which had been manufactured. However, the skilled reader of the patent would understand that the simulations would be carried out using a computer, so the complicated wording might have been unnecessary.
As for the mental act exclusion, this is very narrow and covers only calculations which are actually performed mentally. It does not catch calculations carried out using a computer.

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