It must be Christmas

- though not in Russia, which makes it rather odd that the website of the Federal Antimonopoly Service should have assumed such a festive air. The Office of Fair Trading has no Christmas decorations on it at all.

Use of TM in one Member State might be enough - but not necessarily

The long-awaited decision in the Onel case,  Case C-149/11, was handed down today by the Court of Justice (note: not "the Court of Justice of the European Union", which is the collective name for the two-tier judicial organ of the Union, and even more not the "European Court of Justice") and contains no great surprises. The judges have slightly diluted the Advocate General's opinion, that's all: and the decision acknowledges that use of a Community trade mark (note: not a Union trade mark - does anyone know why?) in a single Member State will count as "use in the European Union", as required by the Community trade mark regulation.

Of course, it is not the job of the Court of Justice to decide anything remotely factual, so it is limited to telling us what might be, whereas we might like to know what actually is. Is the ruling a sound communitaire one? It certainly looks like it at first sight. But I think it fails any useful test of such soundness. Bear with me ...

If the only way to protect a trade mark were to register it in the Community system, it would be absurd to say that it had to be used in (say) more than a single Member State (even dafter to insist it were used in all of them, of course). But that isn't the way things work. You can get protection in a single Member State if that's what you want, or need - or in two, or three, and so on. Of course, at about that point a Community trade mark becomes better value, but the cost is not the important thing here. To my mind, a Community trade mark, to be worthy of the name, must be used (or the proprietor must intend to use it) throughout the European Union: and if the proprietor intends to use only in a few countries, it should get national trade marks in those countries. It's not like a trade mark used only in Scotland, for example: there, the owner can't get protection in the territory of interest to it without also getting the rest of the UK (pending a referendum on Scottish independence, of course).

Any other approach simply causes dreadful, anticompetitive and chilling cluttering, and in a rational system should be prevented at all costs. It also seems to me to offend the basic principles of federalism - which may be irrelevant, given that the EU is not a federation - but this approach does not take us any closer to being one, and anyway principles of federalism can still inform aspects of the development of the Union.

Comments?

Cable slips his tag again?*

Cable announces step change to turn ideas into growth, says a Patent Office press release of a speech by the Business Secretary on 17 December. It says that he "launched a range of measures that will improve services to business, strengthen enforcement, and help consumers get the most out of creative products and services". At least the writer of the release can execute a parallel construction.
It goes on to say that "[t]he plans, which will involve a step change in the way the Intellectual Property Office (IPO) delivers services, include:

• launching a superfast patent processing service to deliver patents in just 90 days and a faster trade marks examination service which will deliver a full examination report in five days, instead of 10;
• a campaign to educate smaller businesses about getting the best value from their creativity and innovation;
• action to help consumers and young people understand the importance of respect for IP and the harm counterfeiting or illegal downloading can do; and
• working with key partners, such as the City of London Police, to tackle IP crime such as counterfeiting and online piracy."

Oh, please. What on earth is a "step change"? Is it what a body of marching troops do when they switch feet? Is there a risk that the UK will end up out-of-step with everyone else if we do that? And why are we concerned about the Intellectual Property Office (the Patent Office's "trendy but pointless 'operating name'" per Jacob LJ in EI du Pont de Nemours & Co v United Kingdom Intellectual Property Office [2009] EWCA Civ 966) delivering services? I still feel uncomfortable with it doing more than handling grants of patents and registering designs and trade marks and the associated activities like oppositions. Policy work should surely be for the department itself, and promotion and advice is rightly the province of the legal profession (in the widest sense, including patent and trade mark agents). But it will:

... also expand the way it operates, moving beyond just granting rights and do more to support businesses in understanding the opportunities available to them at home and abroad. This will include piloting an IP advisory service for small and medium businesses with high-growth potential. The IPO will work more closely with organisations where businesses already go for advice such as trade associations, UKTI, chambers of commerce, banks and accountants.

The proposal that has attracted most attention is the one to allow super-fast patents (and, to a lesser extent, trade marks), at a price. The IPO apparently argues that patent applicants often need to secure their rights more quickly than the present system permits, and are willing and (in some cases, but probably not SMEs) able to pay for the privilege. Funny - I thought that rights were secured from the filing date ... And is it really right that we should be introducing a premium patent service when the problem of the cost of litigation is so great, and exacerbated by the unitary court proposals?
Moreover (I have started too many sentences with "and"), what is the point of making a UK national patent quick to get when so many patentees want Europeans? Not a rhetorical question - if anyone has an answer please post a comment.
* If you missed the reference, it's explained here. Nice one, Minister.

A Legal-Writing Carol

As a Christmas gift, let me direct you to this delightful piece, based on a well-known work by Charles Dickens (whose other Christmas stories left cold the Leeds alumni team on University Challenge last evening). "A Legal-Writing Carol" by Mark Cooney of Thomas M. Cooley Law School was published in the Michigan Bar Journal, Vol. 91, No. 12, December 2012. All lawyers certainly should read it, and many should learn from it too.

Apple as cult

Speaking of land grabs, I have been delving into the way Apple handles other people's intellectual property, my interest sparked by reading about how once your e-book has been infected (as it were) with the Apple virus your rights are severely compromised. My friend Ron Colman asks (on his Likelihood of Confusion(R) blog) whether Apple is a Cult or mental thing?: and I also find Chris Barton in the New Zealand Herald asking whether Apple is becoming an evil empire. Richard Dreyfuss has made this recording of an Apple licence agreement, with "comically evil voices" - could recitals of software licences become a popular new genre? Best of all is this wonderful piece by the great Umberto Eco, The Holy War, in which (being 1994) Mac is pitted against DOS ... and he considers whether Apple is Catholic and DOS Protestant, the one offering a single route to salvation, whereas DOS (nowadays, read Windows - although I don't think that works nearly as well, and perhaps the Protestant tradition is now in the hands of Linux and the open source movement) allows more latitude for interpretation, and requires difficult decisions. Lovely.

Collaboration agreements: who owns the IP?

Wilkinson v London Strategic Health Authority [2012] EWPCC 48 (14 November 2012) is a slightly tragic story of lost copyright, one that is repeated with (I guess) great frequency. It's all down to that modern disease, grabbing (or at least making a grab at) all the intellectual property that can be seen, whether it's needed or not.

The case turned on the construction of an agreement. The Health Authority contended that it gave them copyright in pre-existing works created by Dr Wilkinson, and not surprisingly she contended otherwise. HHJ Birss QC did not imply an assignment of copyright, but did imply a licence for the NHS to use the pre-existing materials, even in competition with Dr Wilkinson, which makes her (partial) victory in this case distinctly pyrric - and emphasises the crucial importance of getting the agreement right in the first place.

However, it is good to see that cases like this can get an airing these days, in the Patents County Court, the jurisdiction that should show the way forward for the European Union - which is resolutely going in a different direction. Read, and enjoy, this trenchant speech by Rt Hon Lord Justice Kitchin.

Biotech and chemical patent agents

My good friend Pete Fellows, of Fellows & Associates, IP recruiters extraordinaire, is looking for patent agents, and offering some nice inducements for anyone who refers a successful candidate. He writes:

We are asking for your help in recommending candidates to us and, as it’s Christmas, have decided to add an additional range of incentives including a TV, flying lessons, a spa day, a Galaxy Note 10.1, a PS3, a Wii U and Selfridges vouchers if you refer candidates who ultimately obtain any of the following positions.
 We are currently recruiting for the Biotechnology and Chemistry departments of a major private practice firm of Patent Attorneys based in London. They have enjoyed a significant uptake in work and are therefore intending to increase the size of both departments by between 2 and 3 attorneys each. They are interested in speaking to people across a wide range of experience from part qualified to newly qualified and also more experienced attorneys with 1-4 years post qualified experience.
 The firm deals with most of the largest pharmaceutical companies in the world and the vast majority of the top ten biotechnology companies. They are well known for dealing with high volumes of contentious work as well as delivering a more strategic, commercial advice led approach to their clients. They encourage all attorneys to be involved heavily in building relationships with clients and given the volume of work coming in, can offer a great deal of variety (and to some extent interest-led ‘cherry picking’, enabling you to get the portfolio you want). 

I reckon I don't move in the right circles, perhaps because I am not a patent agent - and at my age "1-4 years post qualified experience" sounds pretty newly-minted. But times change - and when I had 4 years PQE I thought I knew everything ...

Green invention of the week?

Le Blog du Droit Européen des Brevets posts l'invention de la semaine each week - and this one appeals to to that side of me that is offended by the use in London parks (and I imagine elsewhere) of ridiculous petrol-powered hand-held leaf-blowers. This invention will contribute much less to climate change, which probably itself has an effect on leaves falling ...

Dealing with speculative invoicing

Here's a useful resource for those trying to deal with the menace of speculative invoicing: the Speculative Invoicing Handbook, second edition, produced by consumer group, Being Threatened. If it's got to a second edition without my becoming aware of it, I must be out of touch. It tells you how to deal with a situation in which you have received a letter from a law firm - oh, you know the guy, can't remember his name (well, I can, but I'm not going to write it here) - threatening you with all sorts of consequences for infringing copyright in something you have never heard of ... a pornographic film, for example. It could be useful for dealing with those photo agencies, too ...

The patent system almost nobody wants comes a step nearer

The three instruments which together make up the scheme for a unified patent for the European Union are slowly making their way through the legislative process, which seems to get more convoluted as time goes by, and today the Council looks set to take another step towards putting in place what many regard as little more than a further burden on small and medium-sized businesses (see for example this paper by Dr Jochen Pagenberg, probably the most vociferous critic of the scheme).

My own opinion, for what little it is worth, is that the unified patent idea, which looks good on paper, stinks. It is good for Big IP and its lawyers, bad for everyone else, which is a theme you can see running through most developments in the IP worlds at this stage of their development. I recall back in the mid-1980s, when my job at the CBI had the grand title "Head of Commercial Law", no-one really seemed to want the Community Patent Convention: the EPC delivered all the benefits they could ask for, even the big multinationals, but the project clearly has momentum that, eventually, is irresistible.

But I will leave the criticism, for now, to Dr Pagenberg, and make this posting factual. Mostly, anyway. On 19 November COREPER agreed a package, comprising a draft regulation creating the unitary patent which is proceeding on the basis of Enhanced Co-operation a (Euro speak for co-operation between not all the Member States, in this case 25 because Italy and Spain are not taking part), the language regulation, and a 26 member international agreement which will set up a single specialised patent jurisdiction.

The main regulation will create a one stop shop at the European Patent Office in Munich, which will grant patents effective in the 25 member states which are taking part. After a twelve-year transition period, the sort of thing that only the European Union could dream up, there will be a 23 language regime both before and after the patent is granted. Applications may then be filed in any language but processed in English, French or German, and after grant the claims will be translated into 23 languages. Contrary to first appearances, this, it is claimed, will cut translation costs by 80 per cent.

As for the unitary patent court, all the governments at the November council meeting agreed that the seat should be Paris, with satellite courts in London and Munich. The London Court will deal with chemical and pharmaceutical patents and the Munich court with mechanical engineering. That much appears to be fairly non-contentious, the product of a typical Euro horse-trading exercise, but there is a great deal of excitement over changes made to the text in July 2012 on the initiative of the United Kingdom. Articles 6, 7 and 8 of the proposed agreement were deleted, and equivalent provisions added to the parallel international agreement (articles 14 septies to 14 nonies: I think you know you are in trouble when an instrument's numbering gets to bis, let alone septies and nonies, rather like the Z sections in some UK legislation like the Registered Designs Act). Article 6 dealt with the right to prevent third parties from making direct use of an invention, Article 7 with knowingly supplying means relating to an essential element of the invention, and Article 8 to limits on the effect of the single patent. In other words, these three articles described the effect of the granted patent, and deleting them removes from the regulation the essence of what patents are all about. Removing them meant that the Court of Justice could not review infringement matters. The powers of the Court of Justice have been removed and then given to the EU Patent Court, whose authority is therefore boosted. A new article 5bis will throw the matter back to national authorities.

Members of the European Parliament were dismayed at these deletions, saying that it went against the previous agreement that had been reached between the Council and the Parliament and moreover were illegal. Bernard Rapkay MEP, German Social and Democrat member, and the rapporteur for the Legal Affairs Committee (which inevitably in this age of text-speak seems to have become known as JURI), says the removal of these provisions has gutted the enforcement provisions of the regulation and left nothing for the Court of Justice to do (which presumably was exactly what the UK government wanted to achieve). And Mr Rapkay says that the November text appears compatible with EU law and respects the Court of Justice's power to ensure consistent application of the legislation. It also upholds the parliament's right to be involved if the patent rules change. He described the compromise as "sub-optimal", but thought that the Legal Affairs Committee would be able to accept it (see the EP press release here). Nevertheless, the compromise has been criticised by the Greens and European Free Alliance for its lack of legal certainty, with Eva Lichtenberg  MEP (Austria) saying that it ''poses a risk of endless legal proceedings. It is not what we need."

Council is now expected to accept a compromise on the 10th December and Parliament may go on to vote on it in the same week. Then the regulations could be adopted on 21 December and the international agreement signed on 18th February, with the whole package becoming effective when the international agreement is ratified.

While the compromise seeks to deal with the Article 6 to 8 problem, some doubt its effectiveness. The removal of those provisions clearly did not comply with Article 118 TFEU because the deleted articles defined the very substance of the rights conferred by the EU patent. The proposal therefore did not conform to the legal basis set out in the Treaty. The EP declared the removal of those provisions unacceptable and postponed a plenary vote: but placing the same provisions in the international agreement will not work either, according to some critics including the Max Planck Institute. The method of the compromise has also come in for a good deal of criticism. But the bandwagon seems to roll on.

Nominet DRS: Experts' decision final

Toth v Emirates & Anor [2012] EWHC 517 (Ch) (07 March 2012) is pretty old hat by now, especially as the first instance decision of HHJ Birss QC in the Patents County Court (this High Court case being an appeal) was last year. The High Court (Mann J) held that it was not possible to litigate matters reserved to an Expert (with appeal to a Panel of Experts) under the Dispute Resolution Service Policy operated by Nominet and accepted by all registrants as a condition of registering their domain names. However, I haven't blogged about it yet and it's important enough to merit a belated entry here.

Although the DRS clearly anticipates that domain name disputes might go to court (and for example provides that Nominet will stay enforcement if litigation commences) that doesn't mean that the court can review the Experts' decisions. The door was deliberately left open in the DRS for a trade mark infringement or passing off action to be brought, but not for a declaration such as that sought by Mr Toth - and which could, were that view correct, have the effect of staying enforcement of the Expert's award indefinitely.

Copyright for Creativity call on Commission to encourage access

Copyright for Creativity, a diverse group representing libraries, digital civil liberties, free software, and an open, user-friendly internet have sent a letter (how quaint!) to the College of Commissioners, who are considering possible changes to EU copyright law. C4C, as they are inevitably known in the age of text-speak, are urging the commissioners to discourage excessively restrictive copyright licensing policies, and instead to encourage access to knowledge.

Groups representing authors, publishers and collective societies, meanwhile, are pressing the commissioners to go for stronger copyright protection. No change there, then. Evidence-based policy-making is no doubt in progress, assisted by those who have plenty of evidence to support what they want.

Evidence-based policy-making depends on the quality of the evidence

IP-watch.org gives a trailer for an interesting-sounding survey which is available only to their subscribers, of which I am not one:

Preliminary findings of a survey aimed at mapping the current prevailing ideas on intellectual property confirmed recognised trends that academics and intergovernmental IP professionals look more favourably on weaker IP protection, and traditional North-South differences toward IP rights are becoming less clear cut. It also found that policymakers tend to rely heavily on statistics from industry to help them with their decisions, whether reliable or not.

With evidence-based policy-making being so fashionable since the Hargreaves Review, this seems very timely: survey evidence of preconceptions and prejudices, combined with a reliance on what those with the biggest axes to grind say is best. This is how we got our present law on industrial designs - it has been going on that long.

The ineffectiveness of competition law

One theme which can be observed running through intellectual property law over the past two or three  decades is the cutting back of protection to deal with problems that might otherwise - might better - be dealt with by competition laws. So, when the Competition Act 1980 (of blessed memory) failed to remedy the harm caused by the Ford Motor Company's policy of not granting licences to use its registered designs for body panels, design protection for body panels was effectively abolished in the 1988 Act. And although IBM was found (by a Commission decision in 1984) to have abused a dominant position by keeping information about interfaces offered by its computer systems from its competitors, rather than rely on that finding to deal with competition problems in the emerging computer sector, in the software directive the EC excluded interfaces from copyright protection altogether.

Competition law is is a set of rules that seeks to give legal expression to economic concepts. It therefore takes a huge amount of time to weigh the evidence necessary to decide whether an economic wrong is being committed - or, indeed, whether one has been committed. Because the time it takes to deploy the heavy artillery of competition law is the main justification, it seems, for cutting back intellectual property protection to ensure that the competition problems don't arise in the first place. Today we have a classic example reported in European Voice here: a record financial penalty imposed on a cartel that fixed the price (and other matters too) of cathode ray tubes for televisions and computer monitors. Great news for consumers of those goods - were it not for the fact that cathode ray tubes have not been used in those devices for some years.