The team is joined by: GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopoulou, Mathilde Pavis, and Eibhlin Vardy; by InternKats Ieva Giedrimaite, Rose Hughes, and Cecilia Sbrolli; and by Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 23 January 2018

Never Too Late: if you missed the IPKat last week!

Edition 178 of Never Too Late is here to recap last week’s highlights here on the IPKat (week ending 14th January)

The longstanding dispute relating to various issues over the use of the MERCK trade mark is set to continue  The Court of Appeal of England and Wales has remitted Merck KGaA v Merck Sharp & Dohme Corp & Ors [2017] EWCA Civ 1834  case back to the High Court. The IPKat summarises the rationale applied by the Court of Appeal and outlines the bases for remitting the case.

Fashion law enthusiasts are invited to submit papers to the special fashion law issue of Journal of Intellectual Property Law & Practice (JIPLP) by Monday, 14 May 2018.

Kat Neil Wilkof contemplates on the powerful collaborative effort between two psychologists - Kahneman and Tversky - which changed the way that psychology was understood. Neil also reflects on his personal angle to this story of collective genius and relationship. This is one instance in which joint contribution was exactly that, at least for a while.

Annsley Merelle Ward delves into the analysis of the French Supreme Court’s landmark judgment on sufficiency of disclosure, second medical use and dosage regime claims in the battle between MSD and Teva and Actavis concerning Propecia (finasteride).
IPKat Asian Correspondent Tian Lu provides a summary of the very first annual report from an e-commence giant in the area of IP protection. Inter alia, online fake goods, the role of data technology and law enforcement, and the offline battle are discussed in this report.

GuestKat Mirko Brüß takes the IPKat back the CJEU for yet another pending decision on the right of communication to the public. How does the analysis of the ‘new public’ criterion change when the alleged infringer not merely links to the copyrighted image and  embeds it on his homepage, but also makes its copy on the server of  it own website, which is then  made  available to the public?

IPKat enjoys going down the memory lane!
The Swedish Supreme Court has determined that domain names (‘ThePirateBay.se’ and ‘PirateBay.se’ in given case) must be viewed as a form of property and thus could be seized by the state when used as “tools” to aid and abet copyright infringement. But what are the potential implications of such decision? Does the possibility of forfeiture of domain names substantially empower the rights holders? Or do the blocking orders still remain the most efficient measure within the rights holders’ arsenal?


In the aftermath of bidding farewell to the US participation, Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) continues its negotiations over international IP regulation. The challenges that the CPTPP faces include the rapid development of technology and appropriate business models, substantial changes in the geography of IP (three Asian countries are now among the world’s top five patent filing states) and a shift in the negotiating forces (the US and EU do not dominate the game anymore). It remains to be seen whether a multilateral format for international negotiations will be the best way to tackle those challenges. Guest Kat Franczeska Papadopoulou argues that one size does not necessarily fit all.

Image credits: Dat NT

Monday, 22 January 2018

EPO revokes CRISPR patent – a clear cut case of invalid priority?

On 17 January 2018, The EPO revoked one of the Broad Institute’s patents relating to a fundamental aspect of CRISPR technology. The opposition board upheld the EPO's preliminary opinion that the claims were invalid in view of an invalid priority claim. The EPO’s decision is not surprising, given the long-standing approach of the EPO to the primary issue in question, namely that the right to claim priority from an earlier application is afforded to the applicant of the earlier application, or his successor in title, and to no other party.

A decision to uphold the patent would have represented a fundamental change in how the EPO understands priority rights, and it is a sign of the importance of this technology that The Broad considers this a battle worth fighting.

Background

CRISPR-cas9 gene editing technology (CRISPR) provides a cheap, efficient and easy way to precisely modify genetic information. CRISPR has long been the subject of highly contentious patent battles in the US between the Broad Institute and the University of California (UC­), Berkeley. These battles continue to rage, and are likely to represent one of the last contentious cases of the pre-AIA first-to-invent system. A number of CRISPR patents have now been granted in Europe, opening up a new front in the CRISPR patent wars.

The patent

The patent in question EP 2771468 derives from a PCT application on 12 December 2013, claiming priority from 12 US provisional applications, the earliest of which was filed on 12 December 2012. The patent was granted on 11 February 2015 to three co-proprietors, The Broad Institute, MIT and Harvard College, with the following claim 1:

1. A non-naturally occurring or engineered composition comprising:
a Clustered Regularly Interspersed Short Palindromic Repeats (CRISPR)-CRISPR associated (Cas) (CRISPRCas) system chimeric RNA (chiRNA) polynucleotide sequence, wherein the polynucleotide sequence comprises
(a) a guide sequence of between 10 - 30 nucleotides in length, capable of hybridizing to a target sequence in a eukaryotic cell,
(b) a tracr mate sequence, an
(c) a tracrRNA sequence
wherein (a), (b) and (c) are arranged in a 5’ to 3’ orientation,
wherein when transcribed, the tracr mate sequence hybridizes to the tracrRNA sequence and the guide sequence directs sequence-specific binding of a CRISPR complex to the target sequence,
wherein the CRISPR complex comprises a Type II Cas9 protein complexed with (1) the guide sequence that is hybridized to the target sequence, and (2) the tracr mate sequence that is hybridized to the tracrRNA sequence, wherein the tracrRNA sequence is 50 or more nucleotides in length.
Opposition proceedings

During the post grant opposition period, nine notices of opposition were submitted, by parties including CRISPR Therapeutics AG and Novozymes. The opponents requested revocation of the patent in its entirety on a number of grounds, including that the patent was not entitled to claim priority from at least two of the priority documents, including the earliest of the provisional applications US 2012/61736527.

A note on priority: requirements in Europe vs US

Article 87 EPC provides the conditions under which an applicant for an EP patent can claim priority from an earlier application, and mirrors Article 4(1) of the Paris Convention. According to Art. 87(1) EPC, any person who has filed a patent in a state a party to the Paris Convention, or his successor in title, shall enjoy such a priority right to the same invention for a subsequent application. Claiming priority to the earlier application provides the subsequent application with the same effective filing date as the earlier application. This means that disclosures between the filing dates of the earlier and subsequent application cannot be cited against the novelty or inventiveness of the subsequent application.

 It is a long-established principle of EP case law that, for a valid priority claim under Art. 87 EPC, the applicant of the subsequent application claiming priority, who is not the person who filed the earlier application, must be that persons successor in title when the subsequent application is filed. In practice, this means that an assignment from the applicant of an earlier application to his successor after the filing date of the subsequent application, is not sufficient for a valid priority claim under the EPC (T 577/11.3).

So what if an earlier application has more than one applicant? According to current EP case law, in the situation where an earlier application has joint applicants, the right to claim priority from the application is considered to belong simultaneously and jointly to the two applicants (who thus constitute a single legal entity). In practice, this means that the earlier application can only serve as a basis for claiming priority for the filing of a subsequent application that designates all applicants of the earlier application (T 788/05).

It is also possible to assign the right to claim priority from an application separately to the assignment of the application itself. Such an assignment must also take place before the filing of the subsequent application and the requirements for demonstrating such an assignment are stringent, as recently confirmed by the EPO technical Board of Appeal (T 1201/14, IPKat post).

The US has less stringent priority requirements. In the US, in order to result in a valid priority claim, an earlier and subsequent applicant claiming priority must have at least one joint inventor in common (MPEP § 213.02). Consequently, when a US provisional application is filed in the name of the inventors, with assignment from the inventor to the owner after the filing date, there is no requirement in the US for the assignment to occur before the filing of a subsequent PCT application claiming priority from the provisional.

Overturning EPO case law on priority -
a mountain to climb?
An invalid priority claim for the CRISPR patent?

The Broad Institute and its co-proprietors have fallen foul of the trap opened up by the difference in the US and Europen requirements for a valid priority claim. In their grounds of opposition, the opponents all argued that the EP 2771468 priority claims to the US provisionals US and 2012/61736527 and US 2013/61748427 (P1 and P2 in the opposition proceedings) were invalid, on the grounds that one or more of the applicants of P1 and P2, or their successors in title, were not listed as applicants for the PCT application from which EP 2771468 was derived.

As matter of objective fact, it appears that the opponents observation is correct. The priority documents listed Luciano Marraffini of Rockefeller University as an applicant. Marraffini does not appear as an applicant on the PCT application forming the basis of EP 2771468, and no evidence was submitted to proceedings that Marraffini had assigned his rights to The Broad Institute before the filing date of the PCT application.

In response, the proprietors argued that the EPO case law is not in line with the principles of the right to claim priority under Article 87 EPC and the Paris Convention.

Luciano Marraffini
A key aspect of the proprietors' arguments in response to the objection was that the right to claim priority under Article 87 EPC should be interpreted according to national law. In their written reply to the notice of opposition, The Broad argued that each of P1 and P2 disclosed more than 1 invention (as is common in US provisional applications). Under US law, they observed that it is a requirement for all the inventors that contributed to the subject matter of the invention(s) disclosed anywhere in a provisional application (whether the description, drawings or claims) are named as applicants. They further observed that to be named as an inventor on a patent application, one has to be the inventor or have derived the right from the inventor, and that under US law an inventor can only assign rights to inventions, and the right to claim priority from such inventions, to which she/he has contributed.

Therefore, it was argued, only the inventor-applicants with the right to claim priority from the subject matter of P1 and P2 to which the subsequent PCT application was directed, were listed on the PCT application. Marraffini, the Broad argued, did not have the right to the invention to which the PCT application was directed and therefore was not listed as an applicant for the PCT application.

To complicate matters further, whilst opposition proceedings were progressing before the EPO, The Broad Institute and the Rockefeller University were locked in a patent dispute over whether Luciano Marraffini should be included as an inventor on the patent. This issue was settled following arbitration on January 15th 2018 (i.e. two days before proceedings) and it was agreed that Luciano Marraffini of the Rockefeller would not be named on the patent. A press release to this fact was submitted during oral proceedings itself (although this was rejected by the Opposition Division for having been filed late).

To support their position, the Broad submitted declarations from such eminent figures as Lord Hoffman.

The Decision

In oral proceedings, the EPO upheld its preliminary opinion that the priority claim was invalid, and that disclosures between the filing date of the US provisionals and the filing date of the PCT application were citeable against the claims. In their preliminary opinion, the EPO emphasized that “in both the EPC and the Paris Convention systems the decisive fact for a valid claim of priority is the status of the applicant, rather than the substantial entitlement to the subject matter of the first application” (EPO's own emphasis).

Those of us not lucky enough to attend the public proceedings await publication of the decision. However, it seems the priority issue was dealt with even more swiftly than expected, given that the scheduled four days of argument were completed in a day and a half.

Appeal

It is testament to the value of the CRISPR technology, that The Broad has already filed a notice of appeal against the decision. A hint as to the grounds under which they will appeal may be found in the Broad’s press release. They appear to accept that the EPO’s decision was in line with the EPO’s own “formal requirements”, but argue that these requirements are inconsistent with the principles of priority provided by the Paris Convention and Article 84 EPC. The Broad Institute proclaims themselves confident that “the EPO will, on appeal, harmonize the EPO procedures to be consistent with international treaties and compatible with the fundamental principles of the Paris Convention”.

This Kat admires The Broad’s optimism!

Sunday, 21 January 2018

Image rights and the unauthorized use of one's own portrait on cigarette packs


Plescia's image and
the warning that
"Smoking causes strokes and disability"
Can someone's own image be used without permission?

This question may have different answers, depending on both the context in which the relevant image is used and the legal system considered. With particular regard to the latter, in countries that envisage 'image rights' (or publicity rights), the availability of protection may be even irrespective of the context in which one's own image is being used.

Italian law

This is for instance the case of Italy which, similarly to other continental European jurisdictions, has a long-standing history of protecting image rights. 

The relevant provision in the Italian Civil Code, ie Article 10, states that if one's own image is displayed or published outside the cases in which the display or publication is allowed by law, or in situations which are prejudicial to the honour or reputation of the person, a court may - upon application by the interested person - order that such use is brought to an end, as well that damages are awarded.

In a similar tone, Article 96 of the Italian Copyright Act states that - subject to some limitations pursuant to Article 97 thereof - the portrait of a person cannot be put on display, reproduced or used commercially without their consent. 

The image rights story that a number of Italian newspapers [eg here and here] have reported is therefore quite interesting.

Maurizio Plescia
Becoming a health warning ... without knowing it

A man from Ischia (one of the islands in the Naples Gulf), Maurizio Plescia, was quite shocked when he found out that his image was reproduced on the cigarette packs marketed by different multinationals, as part of what the EU Tobacco Products Directive calls ‘combined health warning’, ie health warnings consisting of a combination of a text warning and a corresponding photograph or illustration illustrating the risks of smoking.

The image of Plescia represented him while hospitalized in Colombia. He had gone there to visit his former partner and - further to certain breathing issues - had taken a medication to which he happened to be allergic. Together with the initial symptoms of pneumonia, such allergic reaction resulted in his hospitalization.  

Apparently while he was lying in his hospital bed, someone took a photograph of him. Subsequently such photograph was included in the picture library administered by the EU Commission pursuant to Schedule 2 of the Tobacco Products Directive, which contains images to be used for the marketing of tobacco products [if you wish to know more about the rationale of health warnings, see here].

Apparently Plescia was not the only one to come forward as the person allegedly depicted in the image of the man in bed, and this has complicated the matter further for him. However, he eventually managed to obtain an expert certification that there are no doubts that the person represented in the image is really him. He first contacted the companies marketing the relevant cigarette packs, but these said that they have no control over or responsibility for the use of the images selected for use on packaging of cigarettes, and that the EU Commission would be rather the one to address.

What's in one's own image?
Other cases

There is abundant case law concerning the unauthorized use of one's own image, and this blog has reported on decisions which have found an infringement of image rights even lacking use of one's own actual image. 

Protection has been granted also in instances relating to the unauthorized use of one's own image in situations in which one was filmed during a public event. For instance, the Italian Supreme Court has held that a TV programme could not use one's own image, captured during a football match, after that event's current character has ended (in this specific case, 6 years after the match).

Some readers might have also read news reports [hereherehere] that a judge in Rome has recently ordered - at the risk of a financial penalty - the mother of an teenager to refrain from publishing pictures of her son on social media. Although the text of the decision is not particularly detailed in the legal reasoning part, it seems that also the protection of one's own image has played a role in the conclusion reached.

A comment

Newspapers do not report whether Plescia’s case has come to an end, but it seems quite incredible – if true - that one could be photographed without their authorization and the resulting image could be included in the Directive's picture library and subsequently used for combined health warnings without obtaining all necessary permissions.

In this sense, Plescia’s case is a useful reminder that, when it comes to using third-party images, wannabe users should not be just concerned about copyright issues (including the non-assignable moral rights of the author of the photograph), but also the rights of the person(s) portrayed in the photograph. The latter may present potentially a risk also in those countries that do not explicitly recognize the existence of self-standing image rights. In this sense, the quite recent Rihanna case in the UK is a telling example [here and here].

Sunday Surprises

Here are a few events and opportunities not to miss out on!

A two-in-one event in Milan! On 23 January 2018, by joint effort of the Università di Milano and the Italian Competition Authority, there will be an IP & antitrust event comprising a seminar on “Abuses in patent filing and regulatory procedure in the pharmaceutical sector and a book presentation of the work, edited by Giovanni Pitruzzella and Gabriella Muscolo of the Italian Competition Authority, titled “Competition and Intellectual Property Law in the Pharmaceutical Sector. An International Perspective”. Speakers will include judges, lawyers, professors, Authority officials and industry representatives. Further information and registration here.

Abuses in patent filing make for an angry Kat
On 16 and 17 April 2018, the University of Exeter will host the conference “Intellectual property in transitions: (Re)-imagining intellectual property. The conference is aimed at discussing how the dramatic multi-faceted changes of our times have or will have an impact on IP law. The conference committee has opened the call for contribution for paper and panel submissions (see the call here) and a prize of £200 will be awarded to the Best Presentation given by a Postgraduate Researcher. More information on the event here.

Yann Meniere and Pia Björk, respectively the Chief Economist and the Programme Manager at the EPO, will talk, on 26 January 2018, about "IP Management and IP Strategy in Small and Medium Sized Companies – Perspectives from the EPO" on a free webinar. The talk will revolve around some case studies undertaken by the EPO, on patent leveraging with an eye to support the development of SMEs. More information on the case studies here and link to the webinar registration form here.

For those out there in search of the doctoral challenge, a very interesting proposal comes from the ULB (Université Libre de Bruxelles). The Belgian University offers a full-time research grant for a 3-year period to write a thesis on “Interactions between Intellectual Property Law (IP) and Artificial Intelligence (AI)”. Deadline for applications is 16 April 2018. For more information on the various  requirements and specifics, see the call here.

To end on a jolly note, a few week ago, GuestKat Mathilde published the interesting post 
Erasing Kevin Spacey: performers' rights to the rescue?. Tweet after Tweet, the post was noticed and Mathilde was asked to rewrite the post for the Independent, which you will find here.

Around the IP Blogs!

IPKat keeps you up to date with more news and views from around the IP blogosphere!

Case law

Trademarks

Quick off the mark, the MARQUES trademark blog reviews last week’s opinion of the Advocate General on validity of the EUTM “Neuschwanstein”. The Advocate General upheld the General Court’s decision that the State of Bavaria’s EUTM “Neuschwanstein”, a German fairy tale castle and popular tourist attraction, is not descriptive of the goods and services covered by the mark and not therefore not invalid.

MARQUES also posts on the recent CJEU opinion, Red Paralela and others v Orangina Schweppes, concerning the effect of the exhaustion of rights rule of Article 7(1) Trademark Directive on the right of a trademark owner to oppose the importation of goods affixed with the trademark, when the trademark was placed on the goods by an assignee of the trademark in another EEA member state. The CJEU held that the importation of goods bearing the trademark could not be opposed, because the owner had promoted the trademark as a single global trademark. 

Exhausted his rights?
Patents

The Blog of European Patent Law reviews the recent decisions issued by the EPO technical board of appeal (BoA). Highlights include T796/12, in which the BoA considers the admissibility of an appeal filed by a company that was in fact dissolved before the appeal was filed due to bankruptcy, and T1127/14, in which reimbursement of the appeal fee is considered in view of a violation of the right to be heard following modification of the description by the Opposition Division without submission to the Patentee. Also look out for The Blog of European Patent Law's invention of the week!

In the US, IPwatchdog provides an overview of the current US case law concerning the obviousness and anticipation for claims directed to an isolated component of a prior art mixture. Examples of such claims include pharmaceutical products comprising a single enantiomer isolated from a known racemic mixture. The takeaway messages include that for “an isolated component to potentially be vulnerable to an anticipation attack, the anticipatory reference needs to specifically identify and characterize the component, and must teach how to isolate the component”.

Patentylo reports on a reminder from the US Federal Circuit that an inventor who signs an employment agreement providing that an inventor “will assign” rights to inventions, doesn’t mean that she does, in fact, assign them. The issue in this appeal case was whether a co-inventor of a patent transferred her co-ownership interests in the patent under the terms of an employment agreement.

Designs

The MARQUES designs blog analyses the recent Acacia designs cases, in which the CJEU considered the scope of the so-called repair clause (Article 110(1)) of the Community Design Regulation (CDR). The repair clause excludes Community Design protection for designs constituting a component part of a complex product for the purpose of the repair of that complex product. In a decision termed “revolutionary” by MARQUES’s Fabio Angelini, the CJEU ruled that the scope of the repair clause is not limited to component parts of a complex product necessary to the appearance of the protected design, but applies to any component parts of the complex product.

News and opinion

Brazilian patent prosecution can be a bit of a waiting game (discussed by IPKat back in 2015, and IPTango last year). IP watchdog now reports that, to deal with the backlog, the Brazilian Government is considering the emergency measure of automatically granting (without examination) more than 200,000 patent applications.


Instituto Nacional da Propriedade Industrial (INPI), Brazil

IPDebate’s Ashley Cohen considers the effect of the WIPO’s Beijing Treaty on Audiovisual Performances. The Beijing Treaty extends the minimum standards of moral rights provided under the Berne Convention to audiovisual performers. Cohen also considers the difference in the protection of moral rights in US, France and UK. 

Finally, feeling in the need for an overview of the current state of copyright law? The 1709 Blog’s CopyKat, provides!


Friday, 19 January 2018

Teaching IP to kids with Ed Shearling, Kitty Perry and friends

Ducks can come up with great logos in a matter of minutes
Many people have puzzled over how to educate the public about intellectual property.  This task is even harder when trying to educate children.  The UK IPO believes it has found a solution...

Children like cartoons, so they made a cartoon about IP told through the story of Nancy (a French bulldog) and her gang of meerkats.  There are lots of videos and other resources in the series but the episode which caught the attention of the BBC concerns logos...

Ed Shearling - guess the animal...
Nancy is helping her mate Ed Shearling to set up his band.  In an excellent example of client management she starts her meeting by questioning his choice of ducks as backing singers.

With the tough questions over, Nancy delves into the IP issues with the help of a mysterious geezer in a suit.  It then becomes an episode of Mastermind with Ed being introduced to the concept of "logos" and immediately subjected to a tough quiz.  Amazingly, Ed cracks the first clue ("who do you think is behind this logo shaped like an apple?") in record timing - cue major meerkat excitement.

Justin Beaver
Ed Shearling is very inspired by Justin Beaver and doesn't think it would be so bad for people to get them confused.  But Nancy's suited and booted manager cautions against this approach

For those who remember the Moshi Monsters dispute over Lady Goo Goo (who appeared together with Dustbin Beaver), it is particularly surprising that the UK IPO has adopted these names for its cartoon.  Others have criticized whether the £20,000 spent on the videos was money well spent.

One final thought - the BBC's  coverage of the new resources focused on the trade mark videos but the average person reading the article (headline: Kitty Perry and the copyright lessons for seven-year-olds) would assume that copyright is the only form of intellectual property. Admittedly trade marks do get a mention but it is buried in the text).  Perhaps IPO resources would be better focused on educating the media before worrying about kids getting to grips with IP.

Huge thanks to Amit Alagh (Wolters Kluwer) and James Sweeting (Superdry) for flagging this story on the BBC website!

You can watch the band logo video here and all of the Nancy & the Meerkats resources are available on the UK IPO here.

Prosecution history - as relevant as any inventor evidence?

Readers interested in patent law will be familiar with last summer's decision of the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48 This has raised a number of issues, including whether the Supreme Court decision opens the door to greater use of the file history in the UK.  Taly Dvorkis of A&O enters into the debate, examining the differences in US and UK law, and queries whether it is linked to inventor evidence:

The inventor Kat taking centre stage
"At the November UCL debate "Equivalents: K = Na. Is the genie out of the bottle?" (reported on IPKat here and here), U.S. Court of Appeals for the Federal Circuit Judge Kathleen O'Malley expressed the view that had the Actavis v Lilly case come before a US court, the result may have been different, in light of the established doctrine of prosecution history estoppel, whereby concessions made by the patentee during prosecution limit the scope of equivalence that can be sought.


Prosecution history estoppel has not been applied in English proceedings, and it remains to be seen whether that will change in light of Actavis v Lilly. The judgment does not completely discount the relevance of the prosecution file but finds it is appropriate to take "a skeptical, but not absolutist, attitude" towards it.  The judgment reiterates the oft-repeated words of Lord Hoffman in Kirin-Amgen [2005] RPC 9: “The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide.”


Do those jurisdictions that take into account the contents of the prosecution file (such as the US) do so because there it is assumed that the skilled person would also have examined the file? That is unlikely. Rather, I think the difference between the UK and the US approaches is more fundamental - it is the difference in how all inventor evidence is treated.


Patent litigation in the UK has no need for the patentee. It is becoming increasingly difficult to obtain disclosure of inventor documents. What the inventor thought was invented, the work done to get there, and how the inventor understood the state of the art are not relevant - rather, the scope of patent protection is whatever the skilled person would have understood it to be. There is no need for evidence from the patentee (who may not be a skilled person but may have extraordinary skill in the art).


In the US, the patent scope is similarly determined by reference to the skilled person; however, the patentee plays a greater role in the litigation. Much of the discovery revolves around the patentee, including disclosure of the inventor’s documents and the taking of inventor depositions. Often the first witness to testify at trial - whether before a judge or jury - is the patentee, telling his invention story. The inventor's views and corresponding documents may be used to try and define claim scope, obviousness, novelty, and the state of the art.


It is not surprising, in this framework, that evidence showing a patentee’s back-and-forth with the patent office could have significance in narrowing the scope of protection. Meanwhile in the UK regime where evidence from inventors is not relied upon, there has been no need to rely upon the file history or apply estoppel. The underlying rationale is not only that “life is too short” - rather, as with all evidence pertaining to the patentee, it isn’t needed. Or is it?

Even before Actavis v Lilly, a skilled person had to take into account the patentee’s intent when applying the third Improver question, which asks: “Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention?” The patentee’s intentions remain at the root of the third question as reformulated by Actavis v Lilly: “Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?”
To assess equivalence, a patentee’s intentions need to be known. As mentioned at the UCL debate, those intentions may be gauged from the language of the specification, such as when the patentee specifically disavows a potential equivalent. But the intentions can also be learned from the file history, as the judgment acknowledges.

Actavis v Lilly demonstrates there may be room to consider the file history, and by extension, evidence from the patentee. It remains to be seen whether the court will apply prosecution history estoppel to limit equivalence, but if it does - what’s next? Would other inventor evidence be taken into account? That seems unlikely, given the general trend to limit disclosure."

These obervations on inventor evidence resonate with this Guestkat's experience in the UK. What do readers think?

Thursday, 18 January 2018

Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’

The 'Manhattan' print
While trade mark professionals are keenly awaiting the outcome of the Louboutin reference [the case has been re-opened, and a new Opinion of Advocate General Szpunar, on which see here, is due on 6 February], the appeal branch of the specialist Swedish IP court has made a reference to the Court of Justice of the European Union regarding what is to be intended as ‘shape, or another characteristic, which gives substantial value to the goods’. 

The reference concerns Article 7(1)(e)(iii) of the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 [now Regulation 2017/1001].

Background

The reference has been made in the context of infringement and invalidity proceedings regarding EU trade mark (EUTM) ‘Manhattan’.

Svenskt Tenn is an interior design company, and has acquired a good reputation for its products. The company also notoriously collaborated with famed Austrian architect Josef Frank. The collaboration resulted in Mr Frank producing 2,000 furniture sketches and 160 textile prints, which are still marketed and sold by Svenskt Tenn. Among the textile prints, there is a pattern known asManhattan’.

Svenskt Tenn claims that the pattern that Mr Frank designed is an artistic work within the meaning of the Swedish Copyright Act, in which the company holds the copyright. Since 2012 the company has also owned the EUTM “Manhattan” (No 010540268), this being a figurative mark characterized by the colours blue, white, green, and red. The trade mark is, inter alia, registered in classes 21 and 16 of the Nice classification for: tissues and textiles (class 21); and table cloths, napkins posters, and graphic presses (class 16).

Textillis is a UK company that since 2013 has also sold and marketed textile prints through its online marketplace. Textillis has allegedly sold certain fabrics and textiles incorporating the pattern designed by Mr Frank. 

Josef Frank
Svenskt Tenn brought proceedings against Textilis on grounds of copyright and trade mark infringement. It argued that the Patents and Market Court (lower instance) should prohibit Textilis from selling the specific items and prohibit use of the Manhattan trade mark. In response to Svenskt Tenn’s application, Textillis argued that the Patents and Market Court should revoke registration of the 'Manhattan' trade mark. According to Textillis the reason for this was that Manhattan lacks distinctive character and that the sign is a shape that gives the product a substantial value, thus being ineligible for registration.

The Patents and Market Court (lower instance) found that it had not been demonstrated why the Manhattan trade mark should be revoked. In support of this, it held that the EU Trade Mark Regulation states that a EUTM may consist of all signs which can be represented graphically, including images, provided that they have distinctive character. In this regard, because pattern-like images can be registered as trade marks, the Court found that the elements represented in the Manhattan design are signs that are likely to attract trade mark protection. Furthermore, the Patents and Market Court found that the registration of the Manhattan trade mark did not entail a sign consisting of a shape. Thus, a trade mark could not be cancelled on the basis of the absolute grounds for refusal within Article 7(1)(e)(iii) of the Regulation.

The CJEU reference

The case was appealed to the Swedish Patent and Market Court of Appeal which decided [see also here] to stay the proceedings and refer the following questions to the CJEU [please note that the reference is not yet available on the Curia website so the translation from Swedish may not be accurate]:

1. Whether Article 4 of Regulation 2015/2424 means that the wording of what is now Article 7(1)(e)(iii) of the EU Trade Mark Regulation applies to invalidity proceedings brought after the entry into force of the new provisions but in relation to trade marks registered before that date;

2. Whether Article 7(1)(e)(iii) of the EU Trade Mark Regulation should be interpreted as meaning that its scope covers a sign consisting of the two-dimensional representation of a two-dimensional product, including a fabric; and

3. If the answer to question 2 is yes – how should the wording in Article 7(1)(e)(iii), “shape, or another characteristic, which gives substantial value to the goods", be interpreted? Would it cover a situation where the registration includes a variety of classes of goods and services and the sign in question could be applied differently to the various goods and services covered by the registration? 

The IPKat will follow this reference and reports on relevant updates in due course.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':