Tuesday 31 March 2009

CTM fees

Although there are precedents, in the UK Patent Office for example, it is still pretty unusual for an intellectual property office to reduce its fees. Well, actually, it's unusual to find the price of anything coming down, although thanks to the mess the banks have created for us all we might get to see it happening more often.

I mentioned a couple of weeks ago that OHIM is cutting the fees for a Community trade mark: abolishing the pain-in-the-neck registration fee completely, so the total cost will come down, but raising the application fee to €900 online (€1050 on paper). The change will come into effect the day after publication of a new regulation in the Official Journal, sometime in May.

In the meantime, it looks as if it might be a particularly good time to file your applications. The OHIM site tells us:

"Under the transitional arrangements agreed, applications currently in the pipeline, for which OHIM has not issued the request for payment of the registration fee by the date on which the new fee schedule comes into effect, will not have to pay the current registration fee. For these customers, the application fee (e.g. €750 for an online application for up to three classes) will be the only amount paid."

I could want it to be a bit clearer. I think it is referring to those applications that are in the pipeline on the magic date in May with no request for payment having been issued. It could, I think, be read as meaning that if you've already filed before this statement was issued and haven't had a fee request, you'll get the knock-down rate, and after the magic date you'll pay the new rate, leaving doubt about what happens to applications filed between the publication of the statement and the new fees coming into effect. It surely can't mean that, can it?

So, anyone (like a client I could name, but of course won't. who I advised to hang fire on a trade mark application pending the reduction) thinking of filing for a CTM should go ahead and do so now while this time-limited special offer is running!

Saturday 28 March 2009

Scinopharm Taiwan Limited v Eli Lilly & Company

Scinopharm Taiwan Limited v Eli Lilly & Company [2009] EWHC 631 (Pat) is a decision of Kitchin J, judgment in which was given yesterday.  The case is a patent revocation one, the patent in question being an Eli Lilley patent for a process for making the compound gemcitabine, a chemotherapy drug used in the treatment of non-small cell cancers.

Gemcitabine is a nucleoside analogue.  Neucleosides can have two isomers, known as α and β anomer,  and in the case of gemcitabine it is the latter anomer that has the desired thereapeutic effect.  The patent claims a new way to make a neuclecide, with the advantage that it results in the creation of more of the valuable β anomer than the useless α anomer.

The importance of th patent was enhanced by the fact that the basic patent for the product  had expired and a SPC expired on 5 March this year: so Eli Lilley could not stop others making the drug, but they could stop them making it in the patented, efficient, manner - unless, of course, the patent was invalid for some reason, which is what Scinopharm tried to establish.

The attack was based on obviousness, and there was also a claim of insufficiency.  There is a useful review of the requirements for identifying the skilled addressee and understanding what would be common general knowledge, often difficult matters in patent cases.  The 41 pages of the judgment contain some complicated-looking chemistry, and the judge concluded that the invention was inventive over the prior art invoked by the applicants.  He also rejected the insufficiency claim.  There appears to be no new law in the jusgment, and perhaps its only purpose is going to be to add it to the scoresheet that I started a little while ago, reviewing how often the English courts would find a patent infringed and how often a claim for revocation would succeed, the purpose being to come to a very rough-and-ready view about how pro- or anti-patent the English courts are.  This one is as pro-patent as could be.

Monday 23 March 2009

The BBC Botnet scandal

I tracked down the article in The Tech Herald for which I provided some input the other week (via HARO).  Pleased to see that the other English lawyer the writer obtained comments from agreed with me!

Indian copyright registrations to be made easier

The Press trust of india reports that copyright registration will become easier there from April.  I never even realised India had a copyright registration system, so I have learned at least one new thing today: and I hope my Indian friends will excuse my ignorance.  Given that there a couple of books of Indian IP laws on my bookshelf (free from Indian law firms at INTA meetings), I should be better informed.

Tuesday 17 March 2009

An open source sort of day

To Holborn Bars this morning to present a course - at last! - for CLT: everything else so far this year has been cancelled through lack of bookings.  An attentive audience, and although I hadn't delivered th talk for far too long, it came fluently and kept them listening.  I particularly enjoyed talking about the open source movement, although OpenOffice let me down a bit - couldn't  get the slides to come up on the screen very easily.

Then to Olswang for a seminar organised largely (perhaps entirely) by Jeremy, to mark the launch of a new book on patent law to which he has contributed.  Although the standout session was Christopher Wadlow, on the requirement in US patent law (from the Supremes' decision in Chakrabarty) that an invention be something new "under the sun".  He speculated on the patentability of vampires, werewolves, zombies and the golem (or golems, if there can be more than one), considering which of them are solar-averse.  Brilliant: taught me more about the patent system than many other sessions I have attended, but at the same time the easiest CPD I have ever scored.

Substantively, the best part of the afternoon was Bob Gomulkiewicz's presentation on the Free and Open Source Software movement - fair and objective, and highly informative.  Plenty of new material for my next talk on the subject!

Monday 16 March 2009

WIPO sees record number of domain disputes, lobbies ICANN for trade mark interests

WIPO had a record number of cybersquatting cases last year (not surprising, really: the dispute procedures can be expected to generate a growing volume of work), and is reportedly trying to get ICANN to bear in mind the interests of trade mark owners when it introduces new domains in the future. As this report in the FT points out, there is about to be an explosion of domain names in comparison to which what we have seen before will seem small.

The worst excesses of internet land-grabs seem now to be consigned to history, but the sunrise periods provided for in the new domains coming on stream in recent years don't necessarily do everything that trade mark owners need. I think the old argument that domain names and trade marks are two different things has been completely overtaken by events, so it is crucial that the two systems run in as much harmony as possible. With the latest proposed enlargement of the domain name world, this is going to be hard to achieve.

Indian data protection law

Here's an interesting article on the introduction of data protection legislation in India, with some interesting differences in the terminology compared with the DPA 1998. The abstract (which should be free to quote) says:

The Information Technology Amendment Act, 2008 has set the ball rolling in addressing the lacuna of data protection laws in the country. The provisions are however not adequate to meet the needs of the corporate India. The Article tries to analyze the protection accorded to data and information residing in the computer systems in the country.

Sunday 15 March 2009

Weekend miscellany

This story amused me: how an artist in the US registerd the trade mark "Freedom of Expression", pretended to use his rights to stop others using the phrase, then (in a nice final ironic twist) was refused when he asked a newspaper for permission to reproduce an article about his antics. All a bit long ago, but only just blogged by Susan and Kurt.

Here is what one blogger, Scruffy Dan, describes as "the most absurd IP lawsuit I have ever heard of" - quite an accolade: there is a great deal of competition, but this one is right up with the others.

There are several items on the Web about the US administration keeping a new anticounterfeiting treaty secret for reasons of national security. Cory Doctorow says loads of people from "giant copyright companies" (what a concept) are privy to it. And so, it seems, is most of the rest of the world.

Patent and trade mark filings are down in the US, it seems: and, as Stanley fish might say, it's (probvably) a good thing too. WIPO also reported a drop in International trade mark filings - or was it a slowdown in the relentless and unsustainable growth?

Friday 13 March 2009

Friday catch-up (well, I started it on Friday)

The material just keeps flooding in, and I can't keep blogging fast enough, so here are a few items that have come to my attention in the last week or so and that seem to me to deserve a wide readership (not that publicising them here is likely to make a huge difference).

First, interesting to note from Tomasz Rychlicki's blog that Poland raises a levy on recording equipment and shares it out between the creators, the producers and the performers, but perhaps unsurprisingly it doesn't seem to be without controversy.

Second, The Register reports another instance of Trading Standards Officers in Cardiff payig visits to companies to check that the software they are using is properly licensed. Another good reason for going open-source, perhaps. This is the fourth in Cardiff, but the outcome is not yet known. I imagine that if they'd found offences being committed, FAST would have let the world know.

The same source also carries a report about the Featured Artists Coalition, a diverse collection of more-or-less popular musicians including Billy Bragg, whose involvement causes me to think that this is something worthy of attention, especially as he co-produced the Mutter Slater Band's new CD. They are lobbying against criminalising downloading of music, and for educational activities: and if they are for the performer and against the "music industry", it can't be a bad thing.

The Christian Science Monitor has a story about patent reform in the US, citing some of teh worst excesses of the present system. It makes entertaining reading, at least, as do articles like this one from Wikipedia about sandwich patents. There are also many more thoughtful (less entertaining) pieces about the reforms to be read, including this one by Dan Leckrone, chairman and chief executive of IP boutique The TPL Group, who argues that the reforms would destroy the incentive to innovate and are merely concerned to make the patent system cheaper for big businesses.

Wednesday 11 March 2009

Why file a trade mark application just now?

As mentioned previously, trade mark application fees in the EC and the UK are set to fall this year - CTM fees by some 40 per cent, in May, and UK ones by a smaller amount in about October (following a consultation, which presumably will be based on the question "would you prefer to pay less?").

I have recently advised a client to rethink a filing programme taking in a number of jurisdictions including the European Community. If priority can be claimed from an earlier application elsewhere, there seems little point in filing a CTM application now and paying significantly more for it. Of course, other factors might well be involved, but other things being equal there are strong arguments for leaving the CTM until later in the priority period.

Tuesday 10 March 2009

Enclosing the Commons of the Mind

To the Royal Society for the encouragement of Arts, Manufactures and Commerce, to hear Prof James Boyle of Duke University, Creative Commons, the Financial Times and elsewhere, give an exciting and stimulating lecture entitled “The Public Domain: Enclosing the Commons of the Mind”. I hope my notes reflect what he said fairly accurately: but you should probably read the book anyway (free download, but not autographed like the copy I bought, using the money I saved by not buying dinner, or a even post-lecture drink). My comments are in italics and should obviously not be attributed to him.

For 50 years, he argued, we have expanded intellectual property in ways that are unwise. The public domain is as important to innovation as intellectual property itself.

The debate is not based on empirical evidence but on faith - faith that more IP protection will lead to more innovation. This has turned out badly for culture and badly for science.

Who, he asked, back in the early nineties, would have backed the unregulated, open, Internet over a Minitel or Ceefax-type system? Who would have rejected a new Encyclopedia Britannica in favour of a website on which anyone could post material about any subject they wanted? Who would have thought that the commercial software licensing model might be challenged by a clearly unsustainable and economically irrational alternative?

The mindset that would have turned us (and Prof Boyle admitted that he would have been in the majority) against the Internet, Wikipedia and open source licensing is not necessarily wrong, but it is the result of bias. We would have recognised the real dangers in these alternative approaches, but what he called 20:20 downside vision is conditioned by our experience of property. Transferring concepts that we apply to physical objects to intangible creations skews our understanding of the subject.

He described copyright as a massive restriction on freedom of speech, observing that before US copyright law changed in the seventies copyright in some 85 per cent of works was not renewed after the first period of 28 years.

The result was, of course, a large public domain, but surely the system discriminated between successful and unsuccessful works, and the public domain contained the rubbish that it was not worth paying to protect? Of course, gems would also fall into the public domain in this way, but is it right to deny their creators the eventual reward?

Orphan works now remain unused, including works such as films which pose tricky copyright clearance problems and which crumble to dust while the Library of Congress refuses to show them except to accredited researchers. (But reaction to the Gowers report suggested the British practitioners thought the orphan works problem an imaginary one which was dealt with in practice by making provision to pay a modest royalty: after all, if a work commands more than a modest royalty, it is not likely to be an orphan.) Perhaps more tellingly, old home movies of historical interest re not shown because of copyright concerns, restricting freedom of speech and presumably hindering scholarship, although that might persuade the Library of Congress to put on a screening. (On the other, I am reminded that "There's No Such Thing As Free Speech and It's a Good Thing Too".)

The open approach, however, does not work for science - for the very community that created the web. The product of the (frequently publicly-funded) work of scientists is available only behind the high firewalls of academic publishers, depriving scientific work of the benefit of the Internet’s version of peer review – hyperlinks. (Scientists invented hyperlinks, he observed, and called them “footnotes”.)

As for extending the term of copyright protection, Prof Boyle pointed out that dead people do not respond to incentives to create – and that this had been proved on previous occasions when copyright had been extended. There might be arguments in favour, and certainly he was not against protecting cultural products, but the one-size-fits-all solution resulting from Hollywood’s lobbying is too blunt an instrument. He quoted figures that showed (a couple of years ago) that the average student’s iPod (the average student presumably eschews other types of music player) held 400 songs of which 18 were paid-for downloads – a ratio that Prof Boyle suggested might disclose a sustainable business model. He also referred to the fact that IBM now earns twice as much from consultancy and related work arising from the patents it has freely licensed to the open-source community than it does from the patents that it retains and exploits in more conventional fashion. Openness clearly works for some technologies.

Having reinforced all my reactions to IP absolutism, Prof Boyle ended by predicting an expansion of “ludicrous” IP claims, leaving me with a new concept of “toxic” IP rights to take away with me and think about.)

Monday 9 March 2009

Abolish patents and copyright! Why not trade marks too?

Two American academics, Michele Boldrin and David K Levine, call in a new book for the abolition of the patent and copyright systems - acknowleding that is is likely to a bit too radical for most people's tastes, and offering an incremental programme of reform too. They contend that there is enough protection for inventors and creators without patent and copyright law, which merely hinder innovation and progress. Anathema to many IP lawyers - but an important view, and one that resonates with my feeling that intellectual property law is spinning out of control.

I hope they might turn their attention to trade marks soon ...

Trade mark fees coming down

OHIM has made so much money, because the Community Trade mark has been so popular, that it is reducing fees by some 40 per cent in May. From October, the UK Trade Marks Registry will be doing sikewise, though not by so much - about 15 per cent, according to today's FT.

Of course, this is seen as a Good Thing, with small businesses better able to afford to protect their trade marks. But I don't think it will be an unalloyed Good Thing: large businesses will be able to file more applications, and many of them will be unmeritorious. The blight of bad trade marks will get worse, and although opposition fees will come down the need to institute opposition proceedings will grow. Who will benefit? Most people would say the lawyers.

I don't necessarily subscribe to that view. There are lawyers who enjoy disputes, of course, whose raison d'être is litigation. I consider myself a preventive lawyer, which I think is better for my health and my clients' wealth, but while I can see that my clients might now file more trade mark applications (and therefore do a little preventive work) the overall effect will be to make trade mark law more, not less, contentious.

Data protection: will the law be enforced?

Here's an interesting coincidence of pieces about the Data Protection Act. First, as most readers will know, there's the database maintained by a consultancy called (imaginatively) the Consulting Association listing construction industry workers who their subscribers - building companies - might think it better not to employ. Here is a link to the story in The Times legal section. "At last", I thought when I heard the news story on the radio, "the Data Protection Act is being enforced". And enforced in a way that people will see it and understand why it's being done. Maybe this will be a defining moment in its life.

It also appears that the Metropolitan Police are being criticised for maintaining a database. I think it would be hard to criticise them if it contained information about criminals and wrong-doers, but the point is that it contains information about people who have not been convicted of anything, just attended demonstrations and that sort of thing. Well, they have to comply with the DPA as well, although there are exceptions that they can use. This, however, seems to be more of a Human Rights Act story.

At the same time, Andrew Sharpe, partner at London law firm Charles Russell, has told a seminar that "there is effectively no enforcement" of the Data Protection Act. (Are you reading this, Chris?) In fact his thesis is one that I have also presented to training courses on the Data Protection Actover the years:

"In other fields, companies go to lawyers to make sure they are complying with the law," he said. "Nobody comes to me to make sure they're complying with the Data Protection Act, because there's no downside for them if they screw up.

"If somebody loses your data, or leaks it, or gives it to someone you didn't want to have it, don't come to me - don't expect the law to do anything... there is effectively no enforcement."

He suggests - and it must be a reasonable assumption - that the private sector is probably losing just as many laptops and data sticks as government departments. Perhaps, though, these stories do hang together: data protection enforcement in the future is going to be far more effective than it has been in the past, and the law less easily dismissed as irrelevant.

Thursday 5 March 2009

Distance selling regulations and the right to cancel

The right of consumers to cancel a distance selling contract, for no reason, is at the same time both an important piece of protection for consumers and a major disincentive for any business to sell goods or services on-line (or by other distance means). It also seems to be widely ignored, along with the requirements in the distance selling regulations to disclose important information about the business. So, having dealt with disclosure requirements in one posting, I now offer a summary of the cancellation right. This is not legal advice - just information about what the law says - so consult a lwyer if you need advice about how to comply.

The right to cancel is the key consumer protection element of the regulations. The right arises at any time during cancellation period, so the important matter is to know when the cancellation period runs. This is a complicated matter. Notification of cancellation must be given to supplier in writing. If the consumer cancels, the contract is treated as if it had never been entered into by the consumer.

The cancellation period in begins with the day on which contract is concluded, and ends at different times depending on whether the contract is for goods or services and when written confirmation and the requisite additional information was given.

In the case of goods:
  • Where written notice and additional information given before or at time of delivery, 7 working days from day after delivery
  • Where given after delivery but within three months after day after delivery, 7 working days after day information given
  • Where not given within that three months, three months and seven working days after day on which delivered

In the case of services:

  • Where written notice and additional information given before or at time of delivery, 7 working days from day after delivery
  • Where given after delivery but within three months after day after delivery, 7 working days after day information given
  • If supplier has customer’s consent to begin performance before 7 days expires:
  • If information provided before performance starts, period ends when performance starts
  • If provided during performance of contract, ends 7 days after information provided or when performance completed
  • If information not provided within 3 months, period is 3 months 7 days from day after conclusion of contract

The right to cancel does not arise at all in the following cases:

  • Provision of services begun with consumer’s consent
  • Goods or services price of which fluctuates out of control of supplier
  • Goods inherently non-returnable (e.g. personalised) or likely to deteriorate
  • Recordings or software unsealed by consumer
  • Newspapers, periodicals, magazines
  • Gaming and lottery services
The full price including delivery charges must be refunded within 30 days after cancellation. If advance notice given, the trader may deduct cost of recovering goods from consumer. The supplier must bear cost of return of substitute goods (where contract permits substitution).

The consumer has a duty to return the goods if she has taken possession of them. She must take reasonable care of them in the meantime. Delay in returning the goods does not justify delaying giving a refund.

The duty to take care continues if goods not returned when requested. If no request is made to return them within 21 days of cancellation, the duty of care ceases at the end of the 21 day period.

Supplier must perform the contract within 30 days from when the order was sent (unless otherwise agreed). If it is impossible to do so, the trader must inform the consumer and repay money – but they can agree a revised date for delivery.

If the contract is not performed within 30 days (and there is no agreement for it to take longer) it is treated as if consumer never made it – but the consumer still has remedies for non-performance.

If more than 30 days is needed to complete the contract, the contract terms must state that this is the case.

Online businesses: tell us who you are!

I am convinced that the most-broken piece of law known to humanity is the Business Names Act 1985. Probably not surprisingly: I remember when I taught business law to Legal Practice Course students (all graduates, and mostly law graduates) how very difficult it was to convey the concept of separate legal personality for a company. The common use of the word "company" to mean something more general than a company incorporated under the Companies Act (or otherwise) doesn't help. The result is that most of the businesses operating on-line don't identify themselves properly - a matter to which I have alluded in a few earlier posts on this site.

I don't want to spend my time advising clients on these basics: these are matters that they should be able to get right without consulting a lawyer, and from the lawyer's point of of view this is the sort of advice that shouldn't even be charged for. Anyway, writing a bill will probably take up more time than giving the advice. I'd rather be able to say to a client, take a look at my blog. Or at some other advisory website: start with the link above, to Companies House where the requirements of the Business Names Act are described (including the requirement that the identity of the proprietor of the business, or all the partners, is shown on websites). BERR offers advice. So does Businesslink. So do many other sources, so there is really no excuse for anyone getting it wrong. but still websites abound which have no identification other than the domain name, and people trade under business names without revealing who they are, and I doubt that trading standards departments do much about it.

However, this is not legal advice - merely information about what the law says. It's a complicated area where several different statutes intersect. If you are in any doubt about how the law applies to you, consult a lawyer!

Apart from the Business Names Act, and the Companies Act, there are other relevant pieces of legislation for e-commerce businesses, and I hope a brief outline of what these require might help someone, somewhere, sometime:

Electronic Commerce (EC Directive) Regulations 2002 ( SI 2002 No 2013)

The regulations use the notion of an “Information Society Service” to define their application. This catches every commercial website, not only those where goods are being sold or payment is being taken for services. The regulations are therefore of very wide application. They do not however apply to gambling or lotteries, or to certain activities of legal profession (including notarial services).

The “country of origin principle” applies to information society service providers: they are regulated by the laws of their home country and do not have to worry about the laws of other EC Member States. However, local laws still apply to terms of consumer contracts to protect the interests of consumers.

Minimum information

Service providers must:
  • Give their name (including any trading names) somewhere easily accessible on site
  • Provide email address (not just a “contact us” button)
  • Give a geographic address (including registered office if a company)
  • Give the company registration number (and place of registration - CA2006)
  • State VAT registration number
Consumer Protection (Distance Selling) Regulations 2000 (SI 2000 No 2334)

These regulations apply in a wide range of situations where sales are made remotely, including mail and phone as well as on the Internet. They give rights for consumers, and impose obligation on traders to give information to their customers which therefore have an impact on what needs to go into terms and conditions for on-line transactions.

The regulations apply to contracts for sale of goods or provision of services between consumer and supplier under an organised distance sales or service provision scheme run by the suppler where supplier communicates with customer without ever coming face to face with them.

Exemptions cover:
  • Land agreements (except short rental);
  • Financial services;
  • Vending machines etc;
  • Pay-phones; and
  • Auctions.
There are also partial exemptions for:
  • Goods intended for everyday consumption delivered by roundsmen
  • Accommodation, transport, catering, leisure services
The regulations require the trader to:
  • Give consumers certain information prior to contract;
  • Give consumers confirmation in writing of prior information and also some other information (especially cancellation rights);
  • Repay sums paid by consumers within a certain time; and
  • Perform contract within a certain time.
The first information requirement, which arises before the contract is made, is for what is called “prior information”. This comprises:
  • Identity of supplier (and address where payment is required in advance)
  • Description of main characteristics of goods or services
  • Price of the goods or services inc all taxes
  • Delivery costs where appropriate
  • Arrangements for payment
  • Arrangements for delivery or performance
  • Existence of cooling-off period
  • Cost of premium rate phone call (if any)
  • Duration of validity of price or special offer
  • Minimum duration of contract, if supply continuous or recurrent
  • Whether supplier might substitute goods in event of non-availability
  • Supplier will meet costs of consumer returning any unwanted substitute goods
Prior information must be given in a clear and comprehensible manner appropriate to means of distance communication used by consumer (so email or a notice on the website would appear to be good). In case of dispute, supplier must prove that information was provided in accordance with Regulations.

The information must also be confirmed to the consumer. Confirmation may be by email and must include a statement of right to cancel, and how to do this, who pays to return goods, address for complaints, etc.

The right to cancel is another matter, which I think ought to go into another posting.

Wednesday 4 March 2009

Use of manufacturer's trade mark in dealer's domain name

Here's an interesting take on an old, old issue, and it involves a trade mark owner with a track record in similar situations. Volvo Trademark Holding AB took exception to the use of the domain name volvospares.com by a business of that name (though it appears to be a trading name of an individual, and the website is lacking details of ownership and all the other good stuff that the law requires you to put on it). The WIPO panel (as usual, a sole panellist, which always strikes me as a curious use of the word "panel") decided that the registrant was entitled to have the domain name, and rejected Volvo's complaint. Good stuff.

Why should the manufacturer wish to control the domain name - other than in the name of IP absolutism? It fits, of course, with the whole absolutist philosophy of car manufacturers when it comes to intellectual property: most of them can't bear the thought that anyone might participate in the motor industry except under their control. (In fact, Volvo used to run a TV advertisement with, as I recall, a stuntman extolling the virtues of Volvo cars, and admitting to being a control freak - I know the message the ad was trying to convey, but I was amused by the message it also succeeded in conveying, especially having acted for a number of their ex-dealers including Heritage (Leicester) Ltd.) So car makers - vehicle assemblers, as parts makers like to call them - have tried to monopolise the parts and (through their dealers and authorised repairers) service markets and we have the House of Lords judgment in BL v Armstrong, the MMC report on Ford's registered designs, the Ford registered designs case in the House of Lords, the Court of Justice of the EC's decision in Volvo v Veng and Renault v Maxicar, the block exemption and many other pieces of evidence to demonstrate this.

Having said all that, I can sympathise with the manufacturers. They go to great lengths, and expense, to create a product that consumers like and which continues to become more efficient, safer, and unfortunately less interesting, as time goes on. Along with the product, which is the only item that most consumers bother to repair and have serviced, the car makers create a substantial market for spares and servicing and of course independent traders will try to get a share of the action.

In Volvo v Heritage, it was established that a former dealer must go to considerable lengths to ensure that customers are not under the misapprehension that the ex-dealer is still a dealer. By analogy, the right to use the manufacturer's trade mark to identify the purpose or characteristics of goods or services under section 11 of the Trade Marks Act 1994 - which has to be in accordance with honest practices in industrial and commercial matters - must not be exercised in such a way as to suggest that there exists a relationship between dealer and manufacturer which does not exist.

Volvo argued that Volvospares was, effectively, doing precisely that. Under the UDRP, the respondent must be shown to be using a sign confusingly similar to the trade mark, to have no legitimate interest in it and to have registered or used it in bad faith. In the present case, the panellist took the view that Volvospares had a legitimate interest, as they supplied spare parts for Volvo cars. The presence of a disclaimer on the web site, though not conclusive, clearly helped.

Volvo argued, as one might expect, that unless the respondent dealt exclusively in original Volvo parts, it could not be said to have a legitimate interest: but here it seems their argument foundered on the basis that they themselves did not deal exclusively in original Volvo parts - that they assembled cars using components from a large number of suppliers. Hah!

It only remained for the panelist to deal with the "bad faith" argument, which took a couple of seconds, and the car maker's case was well and truly demolished: and however much I sympathise with the car-makers' position (even disregarding my particular views about this manufacturer) I have to say, a good thing too.

Subject access - or not

There's something highly ironic about the news that Eric Hobsbawm CH isn't being allowed to see his MI5 file. Actually, the story says that MI5 merely state that they have no personal data that he is entitled to see under the Data Protection Act, but it seems pretty unlikely that his Marxist credentials would not have brought him to the attention of the security service. The assumption is that access is being denied for national security reasons. (Can we see the Ministerial certificate, then?)

The best bit is, of course, that our Labour government has to explain why the historian should be thought a fit person to be made a Companion of Honour, which is so exclusive that it must rate as one of the highest honours available in this country (though entirely in the gift of the monarch, I believe), while simultaneously being a dangerous leftwinger for the purposes of the subject access right under the Data Protection Act. And I dare say that whichever minister has to present the explanation was an avid disciple in his or her student days ....

Software patents in the High Court - again ...

Lewison J's judgment dated yesterday in AT&T Knowledge Ventures LP, Re [2009] EWHC 343 (Pat) is on BAILII today, although the IPKat had it earlier. It's not an earth-shattering case: neither appeal succeeded, and the judge had plenty of guidance from the Court of Appeal in Aerotel v. Telco; Macrossan's Application [2007] RPC 7 ("Aerotel") and in Symbian Ltd v Comptroller-General of Patents [2009] RPC 1. But he did have to consider the practicalities of applying the four-step test of Aerotel and noted that it was not possible to put patentability and novelty in separate, atertight compartments: "...asking what the inventor has added to human knowledge necessarily means that the questioner has some notion of the state of the art."

He also noted that the question of when a contribution is technical (within the meaning of the Aerotel tests) is not clear. Indeed, it's the crux of the whole matter of software patents. How can you tell whethere the contribution an invention is making is a technical contribution if you don't know what "tehnical" means in this context?

It seems to me that one important difference between teh modern approach and what went before is that we now seem to be worried about what the technical effect is, rather than trying to locate where it is to be found. My simplistic approach to software patentability (as expressed in many lectures and training courses, where time did not permit of a more sophisticated analysis even if I had been able to offer one) is that while a program is not patentable, a computer controlled by a program so as to do something new and inventive will be. It's a matter of identifying the technical effect and seeing whether it is in the program or the computer when it runs the program; and it therefore comes down to how the applicant presents it in the patent application.

The courts have been saying recently that it's not just a matter of presentation, but they seem to have proceeded to analyse the problems they are faced with very much in presentational terms, so I am none the wiser (nor necessarily better informed). But now it seems that we need to know a lot more than we used to about the nature of the effect, and whether it really is a technical one. But the new approach still requires (as Lewison J said) the courts to disregard any technical effect that is found solely in the excluded matter - the computer program.

This remains, to my mind, a fascinating area where law and technology come into contact - forceful contact - with each other. One day, we might have it educed to a single set of agreed principlees and I might be able to understand it.

If the expert misses it, what hope for the addressee?

Reading the judgment, published this morning on Bailii, of Arnold J in Novartis AG v Dexcel-Pharma Ltd [2009] EWHC 336 (Pat) which contains a lot of highly technical stuff about pharmaceuticals. Even when reduced to the two questions the court had to answer (this being purely an infringement case, issues about validity having been disposed of earlier, by Pumfrey J in Novartis AG v Ivax Pharmaceuticals UK Ltd [2006] EWHC 2506 (Pat) ) it takes some comprehending:

"First, does Deximune comprise a hydrophilic phase and a lipophilic phase? Secondly, is it a microemulsion pre-concentrate? The first issue is essentially one of construction, while the second issue depends partly on construction and partly on the technical facts."

I think it would be best if I avoided trying to comment on the science. Three expert witnesses had their say on that, and in the time available since I found the judgment I haven't been able to familiarise myself with the subject matter to say anything useful. I am sure one could learn a great deal of science by reading patent judgments, but - without wishing to say dismissively that life is too short - I fear that life isn't long enough. On the facts, then, the judge agreed that Novartis were right, that Deximune was within claim 1 and also formed a microemulsion within the meaning of (tellingly) claim 48. (So I don't propose to read the patent, either.)

So, it's a case that turns very much on the evidence, and there's no novel law involved as far as I can see. But here's one interesting insight from the judgment (or so it seems to me). What the court is concerned about in interpreting patent claims is what the addressee would make of them. The defendants' case turned on a point that was dealt with in their expert's second report. The fact that he had not advanced it in his first report suggested, logically, to the judge that it would not have occurred to the addressee.

Monday 2 March 2009

More rubbish about "theft" of data

Six out of every 10 employees stole company data when they left their job last year, said a study of US workers, the BBC reports.  Once one would have expected better of the BBC, but its standards are now bad - but the standards of most of the rest of the media are appalling, so we must consider the BBC's use of English in context.
A quick look at the Theft Act 1968 (much amended, but still the important statute) tells us:
1. Basic definition of theft
(1) A person is guilty of theft if he dishonestly appropriates property belonging to another with the intention of permanently depriving the other of it; and ‘theft’ and ‘steal’ shall be construed accordingly. (Italics added.)
Journalists don't seem to take account of the second part of the definition, and it certainly makes for a better story if you can write about "data theft" or "copyright theft", but it's another manifestation of the disturbing trend towards absolutism.

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