Can a machine be an inventor?

The question of whether a machine can be an inventor for the purposes of patent law has become very acute with the breakthrough of artificial intelligence technology in the 21st century.

The Copyright, Designs and Patents Act 1988 (CDPA) only recognised humans as authors of copyright-protected works (see this post for a discussion about copyright in monkey selfies), and even section 9(3) dealt with computer-generated works by identifying a human as the author. Similarly for patents under the Patents Act 1977: under section 7, only a "person" may make an application for a patent (possibly jointly with other persons), which may be granted to the inventor or joint inventors or certain other persons, and (the tailpiece to s.7(2) stresses) "to no other person". As in the case of the monkey selfie, the word "person" seems to limit the grant of a patent to human beings. But the 1977 Act does not credit a human as the effective inventor in the way that the copyright law substitutes a human author for a computer.

DABUS-the-inventor

The EPO has recently declined applicants in two related cases, EP 18 275 163 and EP 18 275 174, because both named the machine (DABUS) as the inventor. The decisions were widely reported by media and legal platforms alike (see Practical Law here (subscription required) and BBC news here).

In a nutshell, a machine has an owner, who is an individual. A machine, therefore, cannot transfer rights to a successor in title. The failure to name a natural person as an inventor, as required by the EPC, meant that the applications had to be refused. The applicants have a right to appeal the decisions, so we will continue monitoring the developments of these cases.

Analysis of these EPOs decisions shows that they are based on outdated law, but this is not uncommon: indeed, it is inevitable, because the law cannot anticipate technological change. Similar legal systems are in force all around the globe. However, since AI inventions are becoming increasingly more common, it seems that the world would have to adapt to the new reality.

Unlimited patents for minimum investment
As mentioned above, CDPA contains provisions for copyrights given to computer-generated works, which seems to be as close as English law has got to recognising AI copyright. Once the machine copyright is widely recognised, it seems logical that the actual human and/or the company that owns the machine would naturally get the reward from the machine's inventions. In fact, we would only have a longer chain, but the principle would stay the same - the humans would be the ultimate beneficiaries of AI copyrights.

Allowing AI patents could open the floodgates for various AI machines producing inventions almost like a conveyor belt. After all, a machine needs no food or sleep. It only needs a couple of engineers to maintain it, which poses a risk AI could inadvertently aid employee redundancies (though this is a wholly different topic!).

This ultimately means that companies could receive maximum profits from their patents with minimum investments. All a company has to do is to employ an inventor (or a small group of such) to produce one AI machine, which, in turn, would potentially produce an infinite number of inventions in any given area of science or medicine.

For such inventions to be successfully patented, however, the criteria of patentability would have to be slightly amended, so as to re-define an inventive step for machine inventions (see my arguments below).

Patents? Who needs patents!

Understandably, the development of AI can question the whole idea of patenting. To be granted a patent, an invention must be:

• Something new;
• Something that can be put to practical use; and
• Something inventive.

The requirement of novelty and practicality would unlikely set any challenge for a reasonably powerful machine. It would have already learned all of the world’s inventions, analysed them and produced the one that is certainly new and that would definitely find a practical application.

An inventive step, however, is a tricky category to assess. Inventiveness as a criteria is assessed in light of obviousness, which for years worked well for human inventions. However, how would one assess obviousness of a machine invention? Where a machine can learn from everything ever invented in the world, it may be that everything would seem obvious!

One may argue that a machine would be placed in an unfair advantage against its human competitors. As mentioned above, for an inventor it would seem a more attractive option (and would make more commercial sense) to create an AI machine to produce something that is guaranteed to satisfy all patent requirements rather than waste time and effort to produce something that would (most likely) never sustain any competition with an artificial intellect.

If this was the way the humankind wanted to go, it may well mean that the whole patenting system could crumble and patent laws could become redundant. Would the world be sad if that happened? Patent attorneys would probably shed a tear or two.

So what shall we do?

In light of the above, the humanity would have three obvious ways: 1) to abandon patents all together; 2) to restrict patenting only to human inventions; 3) to allow patenting of AI inventions but reform the patent requirements and award patents to the owners of AI technology.

If the second option is chosen, there have to be very strict criteria and close supervision over human inventors to make sure there were no AI used in order to aid a real “human invention”. I find this a very costly and not very practical solution.

The first and the third options seem to be the most likely ones in light of the current developments in technology. Both of these have to be closely scrutinised to make sure they can sustain the test of time, before any one of them is chosen.

To sum up, I firmly believe that the legal recognition of AI inventors is only a matter of time and AI will no doubt be recognised as a part of our world's technological progress. Just like an industrial revolution saw factories emerge, AI is only a natural step forward for humankind, whether we like it or not.

We will no doubt keep you posted on the developments in this curious area of law.

Sharing the workload

Having entertained a few guest bloggers over the years, I have now invited another IP enthusiast, Marianna Ryan, to write for IPso Jure, on more than just a guest basis. Marianna is a solicitor with Howes Percival in Northampton, but I have known her since she was a student on the University of London's international programme LLB course in Moscow where I taught IP. As well as studying that module, she wrote a very interesting dissertation comparing the treatment of well-known trade marks in the UK and the Russian Federation.

Marianna's first degree ("Specialist of Laws", equivalent to a bachelor's degree) was from Gubkin Russian State University of Oil and Gas. Having graduated from the London international programme (and also having moved to England) she obtained her LPC/LLM from the University of Law, Guildford, and completed her training contract with Hedges Law in Oxford.

She is also about to become a graduate student again, about which I will leave it to her to tell readers more in due course.

I am very pleased at the prospect of regular assistance with writing this blog, which astute readers may have noticed has been somewhat irregular in the recent past.

No copyright protection for design dictated by function - Advocate General

Having commuted into London by train for so much of my life, I have long been familiar with the Brompton folding bicycle - the advantages of which it's a little hard to appreciate when the crowded train carriage is full (OK, that's hyperbole) of them. What is the point of a machine for moving, when it is folded up and carried in a larger moving machine? When Brompton cycles became available for hire at my local railway station, but apparently with the intent that people would hire them to take to London rather than on arriving from London or elsewhere, I had one of those moments of clarity that comes to me when I realise I no longer understand how the world works (another instance of which is when I was reading Frank Zappa's obituary in the Financial Times).

A friend I made in the course of commuting - one of many, including a Chancery master and the future Information Commissioner - didn't clutter the train up with a Brompton cycle, although she might have done later, on a different line: but in 2010 and 2011 she was the female Brompton World Champion, which is quite an achievement. But I digress.

Be that as it may, they are a great product and a great success, although I'll stick to the mountain bike I bought from our neighbour a few years ago - a Brompton would not cope well with the track I use to get to the station. It's not surprising that such a successful design should have attracted the attention of copyists. While the folding mechanism was still protected by patents (the original one of which, EP0026800, was filed in 1979, so now long gone) these could be dealt with quite easily, but latterly Brompton (in which I include Mr SI) has had to rely on copyright and design law.

One such case is before the Tribunal de l’entreprise de Liège, which embarked on an expedition to Luxembourg with questions about whether a product with an industrial application whose shape is exclusively dictated by its function may attract copyright protection.  Advocate General Campos Sánchez-Bordona has today given an opinion in SI, Brompton Bicycle Ltd v Chedech/Get2Get (Case C-833/18) EU:C:2020:79: I'm baffled about the "SI" part of the case name, as the Opinion clearly describes the founder of Brompton, Andrew Ritchie, who owns much, perhaps all, of the intellectual property in the design, but in deference to the legal documents I will call him Mr SI until someone tells me to do otherwise.

There are two questions for the Court:

(1) Must EU law, in particular Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result? 

(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria: 

– The existence of other possible shapes which allow the same technical result to be achieved? 

– The effectiveness of the shape in achieving that result? 

– The intention of the alleged infringer to achieve that result? 

– The existence of an earlier, now expired, patent on the process for achieving the technical result sought?

The AG observes that:

The referring court only asks the Court of Justice for an interpretation of Directive 2001/29.

I beg to differ - the words "in particular" say the very opposite. But maybe that Directive - which, let's not forget, is concerned with copyright in the information society, according to its title to which the Court seems to have less and less regard - is the only one that matters.

As for the shape being necessary to achieve a technical effect, the referring court had made a finding of fact about this: the shape was necessary in that sense. It would not be a matter for the Court of Justice anyway, but it had to be taken as read. The Advocate General advises the Court that it should not be protected by copyright.

It is not long since the Court gave its opinion in Cofemel (Case C‑683/17), EU:C:2019:363, and the Advocate General had nothing to add to the review of the case-law there. To be original, a work must reflect the personality of its creator. Cofemel tells us that aesthetic considerations play no part in determining whether a work is original. That indicates pretty clearly the direction in which the Opinion is going: if a design is dictated by function, it doesn't reflect the personality of the designer, and therefore cannot be original so copyright will never subsist in it. A digression to draw lessons from trade mark law (exclusion of shapes which achieve a technical function), which seems a bit left-field, reinforces the Advocate General's view.

There's more to the Opinion, but that will have to suffice for now.

FRAND trial necessary to decide damages

In Koninklijke Philips NV v Asustek Computer Inorporation [sic] & Ors [2020] EWHC 29 (Ch) (17 January 2020), Marcus Smith J dismissed the defendant 's application in which it sought to get out of a trial (due later this year, listed for five days) to determine the terms of a FRAND licence. Asus had earlier been held to have infringed the Philips patent, which had been declared essential to a telecommunications standard. Asus had decided to consent to a permanent injunction and did not want a FRAND licence, so one can understand why they would rather like to save the trouble and expense of five days in court.

Asus proposed that the correct measure of damages would be the royalty rate in the FRAND licence (when that was settled) times the number of devices that infringed. Simple!

The judge did not see it that way, though. That could under-compensate Philips, which was probably why it appealed to Asus.

On the other hand, he didn't like Philips's argument either. They said that damages should take into account that the FRAND licence would be worldwide, covering all their relevant patents and all the companies in the Asus group. That, to the judge's mind, risked usurping the jurisdiction of other courts, and over-compensating Philips. Working out the damages was something that could only be done at the FRAND trial, so Asus's application failed.

Jacquard fabric as a work of artistic craftsmanship

The courts have always been much better at telling us what isn't a work of artistic craftsmanship than telling us what is. But in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) (29 January 2020) HHJ Hacon (the case seems to have been running for two or three years) in the Intellectual Property Enterprise Court has come up with an answer.

The fabric in question is a jacquard fabric, which is important because the distinctive thing about jacquard fabrics is that the pattern is woven into the fabric rather than simply being printed or embroidered. This opens up the possibility of the loom operator providing the essential craftsmanship contribution to the work.

The judge reviewed the cases, from Hensher v Restawile (1976) to Vermaat v Boncrest (2001), not to mention Lucasfilm (2008), concluding that the Hensher court (the House of Lords, remember) would have found against the present claimant: the fabric was not a work of artistic craftsmanship - the craftsmanship element being lacking. However, there was no clear guidance in Hensher (their Lordships canvassed about nine different ways of defining a work of artistic craftsmanship before concluding that they furniture in suit was none of them) and a New Zealand case, Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216 (Tipping J) had been approved a couple of times by English courts (Vermaat and Lucasfilm) so it offered a better way forward: and importantly it provided a route to holding that the fabric was a work of artistic craftsmanship.

That, though, is no longer the end of the story.Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, notwithstanding its title which seems to constrain its ambitions, is rapidly becoming the keystone of copyright law. Article 2 requires Member States to give authors the right to prevent reproduction of their "works", not just those works that the UK legislature has chosen to protect. Whether a "closed-list" copyright system is permissible under the directive remains a contentious point. It seems that it makes no difference in the present case: the claimed work was indeed a work, and it was its author's own intellectual creation. But that isn't always going to be the case, so we have to wonder whether now that the UK has taken back control of its copyright law we can look forward to some clarification of how these provisions wil work in future without the influence of the Court of Justice.

Patent litigation: When withdrawing admissions will result in prejudice

In Lufthansa Technik AG v Astronics Advanced Electronic Systems and others [2020] EWHC 83 (Pat), the defendant assumed that it had been supplying goods in the UK (or at least that it was responsible for the supply). Its inhouse lawyer made certain admissions on that basis. Later, when it was realised that this was not the case, it tried to withdraw the admissions - a matter covered by paragraph 7.2 of Practice Direction 14. 

The authorities make clear that the facts of the case are all-important. Among the factors that para 7.2 says have to be considered are prejudice to the claimant and prejudice to the defendant. The present case turns on what "prejudice" means in this context. Nugee J, reviewing the CPRs' policy of eoncouraging admissions as a way to focus litigation (and reminising about the way things used to be done in the badd old days, when pleadings were all about obfuscation rather than clarification) held that prejudice was caused to a person if an admission was withdrawn in circumstances where they would be worse off if the admission was withdrawn than if the admission were not withdrawn: and on that basis he unsurprisingly refused to allow the defendants to withdraw the admissions (with one minor exception).

There seems to me to be no reason to restrict this principle to patent, or even to IP, litigation.

Sky v Skykick: not as exciting as I had hoped

I blogged here about the Advocate General's opinion in Sky v Skykick a while ago, and now the Court of Justice has given its opinion. After the Advocate General's remarks, I was rather disappointed by what the Court said. It seemed like an excellent opportunity to deal sensibly with problems of monopolisation (about which the Advocate General was rather critical) and the related issues of depletion and foreclosure, but the Court seems to have missed it.

The story so far is that Sky (the broadcaster, just to be clear) has been trying to exercise its trade mark rights against Skykick, a US business which is involved in facilitating cloud computing and storage (I'm being a bit axiomatic, I suppose: cloud computing must  include cloud storage.) Because, cutting a long story short, Sky's trade mark covers computer software, questions arise about whether that is acceptable. It clearly gives Sky a very broad monopoly. Skykick argued that Sky had acted in bad faith by registering for goods and services that it was unlikely ever to be providing. It also argued that the specification was unclear and that Sky's rights should therefore be cut back.

The Court of Justice has made three important rulings:

1. A lack of clarity and precision in a trade mark specification is not of itself (my additional words, which I think are important) grounds for validity. That should come as no surprise, given that the list of absolute grounds for refusal of registration in the Directive is exhaustive. It is not open to the national authorities or the courts to add more grounds. Nor does a lack of clarity or precision support an argument (such as that put forward by Skykick) that the trade mark is contrary to public policy: the Court makes clear that this is a critrion concerned with the trade mark itself, the sign, not with factors such as the goods or services for which it was registered.
2. Registering a trade mark with no intention to use it in relation to the goods or services covered by the registration may constitute bad faith. However bad faith is to be identified by using an objective test: there he to be "objective, relevant nd consistent indicia tending to show" that when it filed the application the applicant intended "undermining, in a mannerr inconsistent with honest practices, the interests of third parties, or ... obtaining, without even targetting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark." The mere fact that the applicant "had no economic actiivity corresponding to" the specified goods or services did not automatically mean taht the application was in bad faith: of course not, it could have ben filed on a perrfectly valid intent to use basis, with the applicant anticipating that it would expand its economic activities in due course. If a lack of intention to use the trade mark led to a finding of bad faith, the Court decided that the registration should be cancelled only for the goods and services for which the applicant had no intention of using the trade mark.
3. The requirement in UK trade mark law that an applicant declare on the application form that they intend to use the mark for the specified goods and services is OK by the Court: it is not precluded by the Directive. However, it cannot be a ground for invalidity in itself - it can only be evidence of bad faith.

It must be absolutely right that a lack of intention to use the trade mark on all the goods and services for which it is registered cannot amount to an absolute ground for refusal. The list of absolute grounds is a closed one, and the judges canot add to it. Neither can whoever wrote the declaration into form TM3. But both of those matters must logically raise questions about good faith: not only raise, but usually answer them too. It might be harder in the EU trade mark system to show that there was no intent to use, so an over-wide specification should not be immediately open to criticism, but surely it needs to be possible to call the validity of an outrageously wide trade mark into question early in its life (and again I refer the reader to the EU trade mark ROYAL MARINE COMMANDO and device, registered for a wide range of goods including IIRC bird tables - the  link i s to one of two very similar trade marks, and there are another two later related ones as well).

In the UK system, though, signing the declaration should open the door to a bad faith challenge as soon as the ink is dry. It is no longer a matter of being able to argue that bird tables feature in Her Majesty's Forces' long-term plans: the declaration should be taken as indicating that they definitely have that intention. Now that the UK has taken back control of its trade mark law, perhaps it will exercise that new freedom so as to make some real progress with clearing the junk off the trade marks register.

Abuse of dominant position by SEP owner not a matter for summary treatment

Standards Essential Patents and FRAND licences are in fashion, it seems - and so perhaps they should be. In Optis and Unwired Planet v Apple [2014] EWHC 3538 (Pat) (17 December 2019 ) the Patents Court (Nugee J) considered Apple's application to strike out, and rejected it .

The claimants had brought the action to compel Apple to take a FRAND licence from Optis. Apple answered that with an allegation that Optis had abused its dominant position, contrary to Article 102 TFEU.

Ownership of a Standards Essential Patent puts the patentee in a dominant position as a licensor of that patent, that much is clear, but whether that is the same as a dominant position in the relevant market depends on an analysis of substitute technologies. Life is rarely simple where competition rules are involved .

There has been a lot of judicial consideration of FRAND licensing and Article 102 recently. The Court of Justice looked at the matter in Huawei v ZTE  (Case C170/13) ECLI:EU:C:2015:477, [2016] RPC 4, and the English courts in Unwired Planet Unwired Planet International Ltd v Huawei Technologies Co Ltd) (Birss J) [2017] EWHC 2988 (Pat) and a lengthy decision of the Court of Appeal given by Lord Kitchin at [2018] EWCA 2344 (not yet on Bailii, and if not yet will it ever be?); and Conversant Wireless Licensing SARL v Huawei Technologies Co Ltd  (Henry Carr J) [2018] EWHC 808 (Pat), and [2019] EWCA Civ 38 (judgment given by Floyd LJ). Unwired Planet v Huawei is currently awaiting a ruling from the Supremes.

The EU case law sets out two requirements for an SEP owner to avoid committing an abuse: they must alert alleged infringers and, if the alleged infringer is willing to conclude a FRAND licence, the patentee must offer one, in writing.

According to the Patents Court, UK case law tells ut that these two requirements are not both mandatory. (When is a requirement not mandatory? Isn't it an inherent part of the definition?) The first one is, but the second is more of a safe harbour, not itself determinative of an abuse. Making the offer means you aren't behaving abusively, but not making it doesn't mean you are abusing a dominant position. Beware the logical fallacy of the undisthtuted muddle, as Lord Diplock warned us in Catnic.

Apple contended that negotiatious had been going on for a long time, indicating presumably that the allegedly requered offer had . nor really been made . But to strike the claim out summarily was not on: the court was not in a position to say that the claimants had no reasonable prospect of avoiding a finding of abuse (excuse the plethora of negatives).

The court also explained that English practice is to establish whether there has been an infringement, them to assess whether ang terms put forward qualified as FRAND. Until the court reached that stage, it would not be granting injunctions.

Alcoholic sweets: why a bear shape isn't a good idea

The Guardian carries this story today about a start-up business in Spain which has run into problems with a big trade mark owner. As with so many stories about intellectual property, we could call one party David and the other Goliath - in this instance the sweet-maker Haribo (a word which seems to be on the verge of entering the language as a generic term).

The idea of making the jelly-like sweets alcoholic is novel, though I would be a little surprised if it did not feature somewhere in the state of the art. The problem, though, is not with the nature of the product: the problem lies with its shape.

The sweets market is not one of which I have much familiarity (what I do know about Haribo products is that the contain gelatine, so cannot form part of my vegetarian diet - although the only time I have to refuse them is at feed stations in long-distance races). I am however familiar with the concept of Gummy Bears (Gummibär, in their native German), although I wouldn't without the prompting of The Guardian's article necessarily have associated them with Haribo. I would however have known enough to realise that bear-shaped sweets were likely to attract someone's unwelcome attention.

It's easy to present this as a David and Goliath situation, with a humourless, monopolisitic behemoth (and no, I'm not getting my bears and cats mixed up here) bullying young people who are only trying to get their own business up and running. The presence of alcohol in their sweets makes them a rather different proposition from Haribo's, of course, although a similarity and likelihood-of-confusion analysis might conclude that they are too close for comfort. (Student readers: Discuss.) But why on earth shape them like bears, when the animal kingdom offers so many other possibilities? Haribo's claim proceeds from the assumption (so it seems from the comments in the article) that it is no accident: perhaps there was no deliberate attempt to sell boozy bears by reference to Gummy Bears, but it is hard to believe that the newcomers could have been ignorant of what was already in the market (and should have done some market research to make sure) so the allusion to the Haribo product cannot have been entirely inadvertant. It has certainly succeeded in getting publicity that they would not otherwise have enjoyed.

Does an agreement to settle a dispute between a patentee and a generic drug maker breach competition law? AG's opinion

An agreement settling a patent dispute may constitute a restriction of competition by object or by effect and that entering into such an agreement may be an abuse of a dominant position, according to Advocate General Kokott's 276-paragraph, 223-footnote opinion of 22 January in Generics (UK) Ltd e.a. v Competition and Markets Authority (Case C-307/18) ECLI:EU:C:2020:28.

The reference to the Court of Justice came from the Competition Appeal Tribunal, which was hearing an appeal against the Competition and Markets Authority's finding that GlaxoSmithKline, Alpharma Limited and Generics (UK) Limited had breached EU and UK competition law by entering into a series of agreements that had the effect of delaying generic entry of the drug paroxetine. The generic manufacturers concerned undertook, inter alia, not to enter the market with their products for an agreed period: the CMA found the agreements to be akin to market exclusion agreements, prohibited under Chapter 1 of the Competition Act 1998 and by Article 101 TFEU, and an abuse of GSK's dominant position prohibited by Chapter 2. The CAT referred ten questions for a preliminary ruling.


The fact that the validity of the patents, and whether the generic products infringe them, remained uncertain did not mean that the patent holder and generic manufacturers were not potential competitors, according to the Advocate General. The correct question to ask is whether there are real, concrete possibilities to enter the market despite the patents, and this (the Advocate General went on) is a matter for the competition authority to decide taking into account all the relevant factors. She also considered that conduct that can constitute an abuse of a dominant position can only be justified by consumer benefits when it can be shown that those benefits offset an agreement's adverse effects on competition on the relevant market. Where the agreements provide limited benefits, while eliminating competition by removing all sources of potential competition, this condition is unlikely to be satisfied.

UK will not implement Digital Single Market Copyright Directive

In a written answer today to a question from Jo Stevens MP (Cardiff North), Rt Hon Chris Skidmore MP, Minister of State for Universities and Science, has told us what is hardly a surprise:

The deadline for implementing the EU Copyright Directive [that's 2019/790] is 7 June 2021. The United Kingdom will leave the European Union on 31 January 2020 and the Implementation Period will end on 31 December 2020. The Government has committed not to extend the Implementation Period. Therefore, the United Kingdom will not be required to implement the Directive, and the Government has no plans to do so. Any future changes to the UK copyright framework will be considered as part of the usual domestic policy process.

That's the domestic policy process that in 1988 put in place new legislation that had been needed since at least the Whitford Report ten years earlier. Meanwhile the carefully-considered changes to copyright law (whether you like them or not) that the Directive contains seem destined to pass us by. No "link tax", no change to the law on content-sharing, none of the other good things copyright owners were going to get from the Directive - Google and other platforms must be very happy.

Full and frank disclosure needed for order for service out

I haven't exactly been waiting for a case on service out , but suddenly two have come along together in the manner of no 253 London buses (substitute your own favourite route number if you wish ). In Easy Group v Easy Fly [2020 ] EWHC 40 (Ch) Nugee J set aside such an order in a passing off, trade mark infringement and unlawful means conspiracy (and, you might add, kitchen sink) claim.

Unlike my previous subject, Wheat v Google (in which judgment was given the following day), there were serious issues to be tried - that wasn't the problem. The issues included where the defendant's website was targeted, whether using a trade mark in a press release made a link between the mark and the services, and whether flying an aeroplane with the trade mark on the side was an infringement.

The problem was that the claimant had failed to tell the judge everything when making the application. Its case was based on the premise that the defendant, a domestic Colombian airline,
was offering its sences in the UK and the EU. It wasn't. The court declined to treat the claim form as valid. The claimants can start again, but will only be able to claim damages for the six years before
the new claim .

Refusal to allow service out upheld

A Chancery Division judge has dismissed an appeal against a Master's refusal to give leave to serve Google outside the jurisdiction . The point arose in an action for copyright infringement, Wheat v Google LLC [2020] EWHC 27 (Ch) (15 January 2020).

The substantive claim involved hotlinking, or inline linking. The hotlinks appear in Google search results, and the claimant argued that Google enabled users to access content on his website via other hotlinking (or, more descriptively and I think more commonly, aggregating) sites - thus depriving the claimant's site of visitors and of advertising potential. Mr Wheat's website, at www.theirearth.com, was devoted to ecological and sustainability issues and contained original articles and photographs created by him. (It went offline in 2018.) He became understandably miffed when aggregator sites availed themselves of his content to attract visitors to their advertising-laden sites.

On an application to serve a foreign defendant outside the jurisdiction, the claimant must satisfy three
requirements (Seaconsar Far East Ltd. Bank Markazi Jomhouri Islami Iran [1994 ] 1 AC 438, 453-457, endorsed by the Privy Council in Altimo Holdings and Investment Ltd v Kyrgyz Mobile Tel [2011] UKPC 7, [2012] 1 WLR 1884. There must be a serious issue to be the on the merits; there must be a good arguable case that the claim falls within one or more classes of case where permission may be given to serve out ; and the claimant must satisfy the court that in all the circumstances the forum in which proceedings have been commenced is appropriate. The main issue, the judge (HHJ Keyser) decided, was whether there was a serious issue to be tried on the merits: substantive copyright law therefore had to be considered .

According to the case law , the claimant would have to show that Google had communicated his copynight works either to a new public or by a different technical means from that authorised by the claimant. The second possibility could be immediately knocked on the head: Case C-466/12, Svensson, EU:C:2014:76 makes clear that the whole of the Internet is a single technical means. But Svensson also tells us that because the publie to which the communication was made was within the class of potential visitors to the claimant's website , the first possibility was excluded too . The claimant argued that his initial consent to communication was subject to an implicit restriction was not supported by evidence. The Master had been correct in his interpretation and application of the case law. Google's acts of caching and indexing amounted to communication neither to a new public nor by a new technical means, and were not unauthorised communications to the public within the meaning of s.20.

Such is the result of the way the technical process works, and of the present state of the law. Surely copyright law should deal with the economic reality of the situation, though, and prevent parasites (oh, I hadn't intended that pun but it works rather well) from taking a free ride on someone else's original work. Perhaps Mr Wheat's mistake was to make his website freely accessible - but the whole ethos of what he was doing clearly required him to do so. The Internet is perhaps becoming no place for anyone who is not out to make as much money as possible, regardless of whose efforts that is based on. Or so it seems to me.

Intellectual property update webinar

I'm presenting an online webinar (I suppose the word "online" is redundant there but I'll leave it in, having taken the trouble to write it in the first place) next week for MBL. Details are here. I'll be covering as much as I can of what has happened in the IP field since mid-September - so, roughly quarter 4 of 2019 - in the space of 2 hours. "Tour d'horizon" might be a better term for it. Still time to join in if you are interested!

Duke and Duchess of Sussex apply for trade mark protection

Stepping back from what is colloquially referred to as the Firm (though IIRC it was Her Majesty herself who first used the expression) evidently involves turning to trade mark law for protection. It was always available to them, but surely the Royal family doesn't need anything so mundane? Perhaps the Sussexes' application to register SUSSEX ROYAL (application number 3408516, and also 3408521 which has a reference to their Foundation tacked on) as UK trade marks, reported inter alia by The Guardian here, is indicative of their departure from the core of the Royals (although other reports today suggest that they aren't going to find it very easy to get away).

They were apparently prompted to apply when someone else filed an application. I don't think it's necessarily right to refer to it as "squatting" because it's hard to imagine the owner trying to extract payment from the Royal couple. "Troll" seems like a better term. That application failed, however, because of s.4(1): the words would be

(d) ... likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation,

... unless it appears to the regstrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.

I have dealt in the past with a very few trade mark applications that required Royal consent (in practice, the consent of the Lord Chamberlain, the most senior officer of the Royal Household, the route to whom is via the Queen's solicitors, Farrars, who will again IIRC impose a modest charge). Surprisingly, even if an organisation is incorporated by Royal charter or has the word "Royal" in its name with the monarch's approval it still needs further consent to satisfy the registrar. Given that the registrar is a servant of the Crown, should not he or she be trusted to oversee the whole process?

Be that as it may, the new application raises an intriguing question. Will the registrar be satisfied that the requisite consent has been given? The application was originally filed by two of the couple's "people", and later assigned to the Foundation, so the applicants have never been the Royals themselves. Nevertheless, it might be reasonable to infer that their Foundation acts with their consent. But does that suffice, or does s.4(1) (and s.3(5), which makes this an absolute ground for refusal) give Her Majesty a veto? The conjunction used is "or" not "and", so perhaps Prince Harry did not need to ask his grandmother: but equally, his grandmother could have given consent and he would not have been able to veto it. But the tricky element of the trade mark is the word ROYAL, which isn't specific to the Sussexes - so consent from on high would be necessary.

The register shows that it took a long time (some six months) for the application to get as far as being published. However that seems to have been time taken up with assigning the application and dealing with the specification, not worrying about consent, which isn't mentioned.

There's also another interesting question, though perhaps unlikely to arise: if the application were to cover potatoes, which it doesn't, would it conflict with the Protected Designation of Origin JERSEY ROYAL? There is probably no reason why similar potatoes should not be grown in Sussex.

Now there is news (see The Guardian today, 11 January) of another troll application, this time for an EU trade mark - against which the same objection based on the word ROYAL would not run. If it isn't a bad faith application one wonders what would be, but bad faith is a difficult area of trade mark law (though it should be somewhat clearer after the Court of Justice opines in Sky v SkyKick, about which see my recent posting dated 16 October). But the Foundation is going to have to oppose it to get anywhere.

EPO: Correcting payment of wrong appeal fee

I am not a patent prosecutor - my involvement in the patent world usually starts only once the things have been granted - but if you do prosecute applications for European patents, here's a decision which ought to be important. If you pay the wrong appeal fee, Rule 139 allows you to correct an unintentional underpayment, notwithstanding that it looks as if should only be concerned with errors in documents (as made clear in case G001/12): and better still it has retroactive effect, so your appeal shouldn't be out of time.

This was case J 0008/19 (29 November 2019, published 9 January 2020), in which an appeal against refusal of a division application was filed a few minutes before the grant appeared in the Bulletin. The Legal Board of Appeal found that the law was clear and an application ceased to be pending on the day on which the mention of the grant was published - the date, not the precise time, was what mattered, which could produce some harsh reaults. It meant that even though the appeal was entertained it didn't succeed because the effect of rule that pendancy ends on the day of publication - in effect at 00:00 hours on that day, regardless of the time of actual publication - was clearly that the divisional had been filed too late.

Shanks v Unilever: Supremes identify outstanding benefit

The provisions of the Patents Act 1977 on compensation of employees for certain inventions (principally s.40) have no doubt been a disappointment to their proponents. The Trade Union Congress was influential in getting them included in the Act, and my friend Lord Lloyd of Kilgerran took a leading role in piloting them through Parliament, but they hardly ever deliver for the employee-inventor (Kelly and Chiu v GE Healthcare [2009] EWHC 181 (Pat) being the single swallow that could not make a summer). The problem is that the invention has to be of outstanding benefit to the employer, and the bigger the employer the harder it is to make that sort of impression on its business.

Shanks v Unilever [2017] EWCA Civ 2 was perhaps the paradigm case of an employee's invention not being of outstanding benefit to his employer because the company was too big to pay. £24 million is  not a lot to Unilever. Although the Court of Appeal recognised that the Hearing Officer who made the initial determination had to take many factors into account, it also recognised that the size of the employer eclipsed the others. "Too big to pay" is not the general rule, but it comes close. Or did, until today.

That case has now given us Shanks v Unilever Plc & Ors [2019] UKSC 45 (23 October 2019) in which Lord Kitchin (with whom the other Supremes, unsurprisingly given his background in IP law, agreed) warned that tribunals “should be very cautious before accepting a submission that a patent has not been of outstanding benefit to an employer simply because it has had no significant impact on its overall profitability or the value of all of its sales”.

A benefit, to be outstanding, has to stand out (the sort of statement of the obvious that judicial decisions are required from time to time to make). The consequence of this is perhaps rather less obvious: to stand out, the thing being considered has to be compared against something else. And what is the something else against which it has to be compared - the multinational ice-cream-to-deodorants behemoth, or Unilever UK Central Resources Ltd which actually employed him? The answer turns out to be a pragmatic one - although Professor Shanks OBE FRS FREng (as the judgment calls him) worked for a small cog in the Unilever machine, it was right to consider the benefit to Unilever rather than strictly to his employer. The Act contains what are designed to work as anti-avoidance provisions, so the employer cannot licence the patent at a peppercorn royalty so as to avoid liability for compensation, and this approach seems consistent with this.

The decision also confirms that the outstandingness (my word) of the benefit must be assessed before tax, and that the employee should be compensated for what his Lordship rather nicely called the affect of time on the value of money. The application had been made in 2006, and only came before a hearing officer in 2012 since when it has taken a further seven years to get to this stage, which was not something for which the court thought blame should be laid at the Professor's door.

So Prof Shanks's invention was of outstanding benefit to his employer, and he was entitled to a fair share of that benefit. The lower instances had done the heavy lifting on the calculations, which I guess are not for the Supremes to interfere with except to say that Arnold J had been wrong to reduce the Hearing Officer's 5 per cent to 3 on the interesting basis that Unilever were able to drive a harder bargain than others in licensing transactions on account of their very deep pockets which meant that they would be able to protect their patents vigorously. The percentage was applied to the £24 million that the Hearing Officer had identified as the benefit, and the Professor receives a nice £2 million in recognition of the significance of his invention.

Case 371/18, Sky v Skykick: Advocate General on trade marks as a tool of monoplisation

The breadth of trade mark specfications, in part driven by the use of general, highly abstract, expressions, is a massive problem - not for trade mark owners, who often like to extend their monopolies, nor for registries which need fee income, but for new entrants who face problems with depletion of the stock of available trade marks and consequent foreclosure of the market. The issue was discussed critically in the otherwise rather smug and self-satisfied (and badly-translated, or perhaps written in the first place in bad English) Study on the overall functioning of the European Trade Mark System carried out by the Max Planck Institute for the Commission in 2013.

SkyKick is in the software business, and in particular migrating SMEs to cloud-based computing: its founders had worked at Microsoft on Office 365. When Microsoft lanuched a service under the name SKYDRIVE they ran into trouble with Sky, and unsurprisingly the same happened with SkyKick (despite clearance searches carried out by my old friends, Seattle's largest law firm, Perkins Coie, although I don't think any of my actual old friends are still there). Sky eventually sued SkyKick for trade mark infringement in the English High Court, and SkyKick counterclaimed for invalidity. The judge, Arnold J, who delivered a characteristic 358 page judgment ([2018] EWHC 155 (Ch)), sought guidance from the Court of Justice on two issues raised in the counterclaim.

The first concerned the requisite clarity and precision in the specification of goods. Sky's registration employed broad expressions such as "computer software". This the judge observed conferred a very wide monopoly on the owner, but it did not necessarily follow that it lacked clarity and precision: and it was not clear whether a lack of clarity and precision would be grounds for a declaration of invalidity, whether wholly or partly.

The second issue was whether a lack of intention to use a trade mark on some of the goods for which it was registered amounted to bad faith: and would bad faith invalidate the trade mark, either in its entirety or for the excess goods or services?

Five questions were put to the Court, and on 16 October Advocate General Tanchev gave his opinion.

First, he said that the list of absolute grounds for refusal is exhaustive. A lack of clarity and precision cannot in itself be an additional absolute ground. However, there could be an argument that an unclear or imprecise specification is contrary to public policy or public order, which is an absolute ground for refusal and also grounds for a declaration of invalidity. The register has to be clear and uncluttered: over-broad and general specifications dissuade competitors from entering the market. The trade mark owner can make itself appear bigger in the market than it really is - a variant of the angora cat problem in patent law. Unclear or imprecise terms in the specification can therefore be declared invalid - but not the whole registration, provided of course that some elements of the specification are sufficiently clear and precise. That said, the term "computer software" does not meet the standard. It confers on the proprietor "a monopoly of immense breadth', and is contrary to the public interest. The term is too general, and the goods or services covered too variable. Laddie J reached much the same conclusion, back in 1995 in Mercury Communications v Mercury Interactive [1995] FSR 850.

If the Court follows the Advocate General this could make a lot of registrations vulnerable, and it would not be limited to computer software.

The next two questions concern bad faith. The Advocate General suggests that, "in certain circumstances", registering a trade mark with no intention to use it in connection with goods or services within the specification, could amount to bad faith, which would be an absolute ground for refusal. This could be the case, the AG said, where there is no commercial logic behind the inclusion of goods or services, or where it is filed simply to stop a third party.

In answer to the fifth question, the AG said that s.32(3) of the Trade Marks Act 1994 (which requires a declaration as part of the application process) is compatible with the Directive, but that a false declaration in itself does not amount to bad faith. That looks like a very nuanced distinction.

The AG seems to be grasping an opportunity to to shift the balance of trade mark practice in favour of new entrants to markets, who suffer the problems of depletion and foreclosure that arise from cluttering of the register. In the introduction to his opinion, he comments critically on the state of the
law. Trade mark owners will have to rethink their filing strategies or risk invalidity, and the commercial logic of their registrations will require careful thought. Have the Royal Marines Commando really got a commercial interest in bird tables (class 20)?

Contempt and failure to comply with court order

Price and others v Flitcraft Ltd and others [2019] EWHC 2476 (Pat) is a straightforward (though rare - at least until recently, because just a few months ago we had Juul Labs, Inc & Anor v Quickjuul Ltd & Ors [2019] EWHC 1281 (Ch) (21 May 2019)) case of a defendant failing to do what the court ordered to repair infringements of patent and copyright, and being held in contempt as a result. There seems to be no new or startling legal principles involved but its subject-matter demands attention.

Recorder Douglas Campbell QC found that the defendants had breached the injunction in several ways. They had distributed a brochure that showed the infringing product, which amounted to an offer to dispose of the product and was therefore a breach of the injunction even without any goods being supplied. It also contained matter that infringed the copyright, which was another breach. The defendants had also failed to give an affidavit of compliance with a destruction order, so there was another breach of the injunction.

It all added up to a deliberate decision to take a casual approach to complying with the injunctions, apparently unconcerned about how quickly they complied with the order, or indeed whether they complied at all. Although they argued that some acts were inadvertent, these flowed from the deliberate decision to take a casual approach. The corporate defendants' controlling mind, the fourth defendant, was in contempt and would be sentenced later.

No implied duty of confidence in standards-setting body

A European Patents Office board of appeal has decided, on the face of it surprisingly, that there is no implied obligation of confidence on members of a standards-setting committee. Because there was no implied duty, the claimed invention was anticipated by documents available to the committee and therefore (within the broad definition in the Convention) available to the public. The invention therefore lacked novelty so could not be protected by a patent.

The consequences clearly follow the board's finding that there was no implied duty (and no express duty either, of course - one lesson from the decision must be that more use needs to be made of appropriate confidentiality or non-disclosure agreements). But why was there no implied duty?

The answer is that the process of devising standards is a collaborative one, involving extensive consultation among interested parties. At least, that's what the board said, and it sounds convincing. 'The evidence points to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission', it stated. Whether a document or other carrier of information be confidential or no is relative, to some extent, and 'a certain "privacy'" does not amount to confidentiality.

So the lesson is that if you are involved in standards-setting, you need to make use of appropriate agreements and undertakings. They might make the standards-setting harder work, but they will preserve the possibility of gaining patent protection. ALthough you could always file the application earlier.

T 2239/15T MPEG INPUT DOCUMENTS/Fraunhofer – Dolby