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

Saturday, 30 June 2012

Before This Guest Stays Too Long, A Final Post And A Bit Of Gratitude

No one likes to wear out their welcome, and so this Kat shall depart from this incredible herd and become a mere reader beginning tomorrow.  This Kat has been sadly unable to produce full posts on a number of events in the U.S. IP world over the past week, but she has been keeping up with them to the best of her ability, and wishes to leave you with as complete a picture of the latest important developments on this side of the Atlantic.  But first and most importantly, she wishes to thank you all most fur-vently (yes, she just did that) for your loyalty and engagement with her posts over the past six months, particularly on such "pressing" matters as how Columbians v Germans kiss their hellos at business conferences (yes, she just did it again).  

So enough chatter.  We are here to do a job, one last time.

Big Brother's Stones Miss the Glass House:  The network channel CBS had been scrambling to put a stop to its rival ABC from launching its new reality series, "Glass House," which CBS believed violated copyright and trade secrets of its show "Big Brother."  Both reality shows involve contestants living in a large house, following rules and competing in games until one contestant remains standing and wins a cash prize.  Glass House inexplicably chose to begin the show with 14 contestants, the same number as in Big Brother, but even so, and even though producers of Big Brother had defected to ABC to work on the competing show, a judge refused to find infringing similarity, saying the show wasn't a rip-off of  Unfortunately for CBS, U.S. District Judge Gary A. Feess said the differences between the two reality shows are enough to demonstrate that ABC didn’t flat-out rip off the CBS franchise, largely because the audience has a role to play in deciding the fate of Glass House contestants.  “The audience involvement playing a constant role is very likely to induce quite different behavior than one would see on Big Brother,” said the judge after saying he was not inclined to grant the preliminary injunction.  The premier went on as planned, to dismal ratings, and the real question at the end of the day remains, "Who watches this stuff anyway?"
Few Risks Too Big:  The Federal Circuit rewrote the standard for finding that a defendant in a patent infringement case acted willfully by holding that it is up to a judge, not a jury, to decide whether a defendant ignored an objectively foreseeable risk that its actions would constitute patent infringement.  The conventional wisdom seems to be that judges may perceive a finding of willfulness to be reversible error, and no one wants to get reversed.  The 2007 Seagate case established a two-prong test for willfulness: first there must be a finding of an objectively high likelihood of infringement, and second there must be proof of subjective knowledge of this risk by the defendant.  The second prong of the test is still to be decided be a jury.  This may result in having to have a separate proceeding on the objective risk before the facts are presented to a jury, making some patent cases just that much more complicated.

Preemption Killed by Idea Theft Cases:  The Second Circuit has effectively cut the life support from claims of preemption in breach of contract and copyright cases.  Cases based on a claim that an idea was presented to a television or film studio and then stolen by the studio without any payment to the plaintiff are frequent.  Defending studios would often argue that the claims of "breach of contract" were pre-empted by the Copyright Act, under which mere ideas are not protectible.  The Ninth Circuit had killed this defense last year.   In the case at bar, the plaintiff was Hayden Christensen, the actor who played Darth Vader (badly) in the last two (pretty bad) Star Wars prequels.   This Kat can not imagine that the plaintiff's identity was in any way relevant, but in any case, preemption claims are no longer available in either of the two major copyright courts in the country.

Of course, at least in the public discourse, all of this pales in comparison to the attention being paid to Thursday's Supreme Court ruling upholding President Obama's Affordable Care Act and the provision requiring nearly every American to purchase health insurance.  This Kat suspects that our European readers are bemused by the health care debate in this country, and probably find particularly funny the threats from the "Tea Party" mandate haters that now that "Obamacare" has been upheld, they shall all move to Canada, a country which has enjoyed socialist medicine for decades.   Perhaps some of you can suggest a nice villa resort in France for them.  

And so here ends this Kat's temporary inclusion among this esteemed group of bloggers.  She has been most honored to be a part of this since January of this year, and truly hopes that you will follow her back to her site at where she and her colleagues will continue to post.  Perhaps even in the first person.

Au revoir, auf Wiedersehen, Tschüs, ciao, adios, and bye y'all!

Farewell, and a final review of EPO Board of Appeal Decisions

An advantage of being a Kat is the
ability to wave and wash ears
This Guest Kat is coming to the end of his time as a member of the IPKat blogging team.  He would like to thank the other Kats, especially but not limited to the indefatigable blogmeister Jeremy, for their feline friendship and support over the last few months.  He particularly thanks Jeremy for teaching him the use of the Google Blogger software and related mysteries.  He has really enjoyed sharing some thoughts over these months with the dear readers of this weblog (and even a few not so dear ones).  He will continue to post thoughts on his professional blog, EIP Elements, albeit significantly less frequently, and will definitely submit pieces to the IPKat from time to time as well, when something really excites him, or when a Katcall is sent out.

Back in March, this Kat wrote a piece covering the EPO Board of Appeal decisions posted online in January and February 2012 that had caught his eye.  Some readers were kind enough to welcome this and ask for such pieces to continue. So, as his farewell, here is coverage of the decisions posted from March to June.  The only criteria for inclusion is interest to this particular moggy.  They are in approximate reverse chronological order of online posting.  There are rather a lot, but then again the Boards of Appeal have been very busy this year.

T 0197/08

A patent in the name of Alcon Laboratories concerning fluprostenol isopropyl ester for topical application for the treatment of glaucoma and ocular hypertension was opposed and revoked.  The claim as granted specified that fluprostenol isopropyl ester was the “sole active ingredient”, and this was held by the  Opposition Division to constitute added matter.  The Board of Appeal disagreed with the Opposition Division and found that, although “sole active ingredient” was not mentioned expressis verbis in the application as filed, monotherapy was the preferred method of administration disclosed in the application.  Therefore there was no added matter.  The case was remitted to the first instance.

T 0134/10

A patent in the name of Colgate-Palmolive Company relating to pearlised cleansing compositions was opposed by The Procter & Gamble Company and Sasol Germany GmbH.  In all the requests before the Board of Appeal, the open language “comprising” of claim 1 as granted had been changed to “consisting of”.  Integer (g) of claim 1 both as granted and in all the requests read “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”.  The Board of Appeal held that the change in claim wording meant that integer (g) became important for defining the limits of the claimed composition.  This resulted from the amendment made, and therefore the clarity of the integer was examinable by the Board of Appeal even though clarity is not a ground of opposition.  The integer was found to be unclear and the patent was revoked.

A patent in the name of Nippon Steel Corporation was opposed by Tata Steel.  Claim 1 was one of those lovely claims that seem to exist only in the metallurgical arts (and this Kat adores the “balance of unavoidable impurities” that often appears in such claims):

Use of a steel in laser welding, in which the laser welding is done to a section of the steel plate cut by laser cutting, plasma cutting or gas cutting without removing scales, the steel containing, by weight %, 

0.01 to 0.20% of C, 

0.01 to 1.5% of Si, 

0.2 to 2.0% of Mn, 

0.02% or less of P, 

0.02% or less of S and 

0.031 to 1.0% of Al; and 

optionally further containing, by weight %, one or more of 

0.001 to 0.1% of Ti, 

0.001 to 0.1% of Zr, 

0.0001 to 0.02% of Mg, 

0.0001 to 0.02% of Ca and 

0.001 to 0.3% of REM; and 

further optionally containing, by weight %, one or more of 0.001 to 0.1% of Nb, 0.001 to 1.0% of V, 0.001 to 2.0% of Mo, 0.01 to 3.0% of Cu, 0.01 to 7.0% of Ni, 0.01 to 5.0% of Cr and 0.0001 to 0.01% of B the balance consisting of Fe and unavoidable impurities; and the value of Y defined by the following equation (1) satisfying 0.4 < Y < 1.5, 

Y = 0.88[%Al] + 1.14[%Si) + 0.67[%Ti] + 0.35[%Zr] + 0.66[%Mg] + 0.40[%Ca] + 0.30[REM] ... (1).

During examination proceedings, the lower limit for the Al range of the steel composition featuring in granted claim 1 had been amended from 0.0005% into 0.031%. It was undisputed that the amendment was based on the individual Al-content of the steel composition of example F given in Table 1 of the original application.  This was held to be an unallowable generalisation from a specific example, and the patent was revoked.

In this case the applicant, after Oral Proceedings and the issuance of the Rule 71(3) communication, requested that a new, broader, request be admitted.  The Examining Division refused to admit the request and refused the application because there was no agreed text for grant.  The applicant appealed and again requested grant of the patent on the basis of the broader request.  The BoA doubted the admissibility of the appeal because “the statement of the grounds for appeal does not challenge the reasons for refusing the application given in the decision under appeal”, but in any case rejected the appeal as unallowable because the Examining Division had correctly exercised its discretion under Rule 137(3) EPC in refusing to admit the broader request.

In this astonishing case the Examining Division refused an application relying on a post-published document which did not in fact form part of the state of the art under Article 54(2) EPC.  The Board of Appeal set aside the decision and remitted the application to the first instance.  However, it was considered that “incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements”, and that “Such an error does not constitute a substantial procedural violation”. Therefore, there was no reason justifying reimbursement of the appeal fee.

In this case, by contrast with the case above, a substantial procedural violation was found and the appeal fee reimbursed.  The Examining Division did not admit certain requests because they were considered not to comply with Rule 137(4) EPC as then in force (Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.)  The Board of Appeal considered that the requests should have been admitted and then examined for compliance with Rule 137(4).  Furthermore, the decision did not explain why the requests were not unitary.  This was considered to represent a substantial procedural violation.

This decision derived from G2/10 a test for added matter, further to the one set out in G1/03.  The decision stated:  “The further test to be applied is whether the skilled person would, using common knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (see point 4.5.4 on page 39 of decision G 2/10).”  Using this test, amendments to the claims to add the terms “non-human” (i.e. non human animal) and “wherein the cell is not produced using a process which involves modifying the germ line genetic identity of human beings or which involves use of a human embryo for industrial or commercial purposes” (in relation to a cell claim) were held not to constitute added matter.

This is another example of a case, of which there have been many, where a decision “according to the state of the file” issued using the routine EPO Form 2061 was considered by the Board of Appeal to be not reasoned, thus representing a substantial procedural violation making it equitable to reimburse the appeal fee.

This concerned a situation where the applicant tried to pay the extension fees late.  After coming into force of the EPC 200, the old "grace period system" according to Rule 85a(2) EPC 1973 had been replaced by the remedy of further processing under Article 121 EPC.  However, the Receiving Section considered that  “Article 121 EPC was only applicable in cases where both designation fees and extension fees had not been paid in due time and a loss of rights communication under Rule 112 EPC was issued. In other cases, in particular where the designation fees had been paid in time or where an applicant waived the right to receive a communication according to Rule 112 EPC, no possibility to pay extension fees was available any more.”  The Board of Appeal upheld this reasoning, and stated that “Article 121 EPC and Rule 112 EPC are not applicable to cases where (only) the due designation of extension states and the payment of extension fees was omitted”, and, furthermore, that “the Legal Board of Appeal is not competent to decide a case that is solely governed by a "foreign" legal system [the extension agreements].”  For this latter reason, the appeal was not even considered admissible.

This case shows again that special care needs to be taken with extension states and fees, because fewer remedies are available if these are missed.

This case involves a second referral of questions to the Enlarged Board of Appeal, and was already blogged by the IPKat here.

T 0107/08

A patent of Bristol-Myers Squibb Company opposed by Bayer Health Care, directed towards a composition containing a statin and aspirin in the form of a bilayer tablet or capsule containing separate statin and aspirin granules, was revoked on the grounds that it was not substantiated that there was an incompatibility between the drugs such that the claimed formulations provided improved stability.

T 0445/08

This case, concerning possibility of correction where appeal was filed in the wrong name, resulted in a referral to the Enlarged Board of Appeal noted by the IPKat here.

T 1911/08

In this case involving a claim to a genus of compounds with pharmaceutical activity, a disclaimer was not permitted to exclude prior art that related to pharmaceuticals of a completely different type from the field of the claimed invention.  The prior art was not considered to be an accidental anticipation. It was stated “The board therefore agrees with the conclusion reached in T 134/01 (see Reasons point 2.3), namely, that a further document belonging to the field of pharmaceuticals is not to be considered as being an accidental anticipation within the meaning of the decision G 1/03, that is, even if it does not relate to the same illness or biological pathway as the patent or application in suit.”

T 0980/08

This is a short decision describing how claims that are amended too much on appeal may not be admitted.  In this case, the Board did not admit the claims of the request filed with the Grounds of Appeal, pursuant to Article 12(4) RPBA (the board can hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings), because “the amendments did not cause the procedure to converge, but instead created a new case on appeal.”

T 1188/08

This is a case where the Appellant appears to have simply re-presented as the grounds of appeal arguments already presented to the Examining Division, and filed no new claims.  Because the reasons in the decision of refusal were not addressed, the Board considered that the grounds of appeal were not sufficiently reasoned and ruled the appeal inadmissible.

J 0027/10

In this case, an application was filed that referred to Figures 13 and 14, but such Figures were not filed.  Instead of filing missing parts (i.e. the apparently lacking Figures), the applicant filed a new description corresponding to the description of the priority application.  The Receiving Section did not consider these “missing parts”, and the Board of Appeal agreed.  However, the Board decided that the Receiving Section (or, if the matter proved too technical, the Examining Division) should “specify exactly what references to drawings 13 and 14 in the description and/or claims filed on 13 August 2009 should be deleted pursuant to Rule 56(4)(a) EPC.”

T 1639/07

This decision contains interesting comments (at 2.5-2.7) on whether a problem can be taken as implementing an aim if no technical effect is apparent from the specification, stating “An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question.”

T 2434/09

The Board of Appeal continued with the examination of this appeal, even though the underlying patent application had lapsed for non-payment of renewal fees, because a substantial procedural violation had been alleged, and a refund of the appeal fee requested.  The decision says:
If a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. (See points 4 and 5).
However, where, as in the present case, the sole aim of the appeal is to obtain a finding by the board of appeal that a substantial procedural violation occurred in the first-instance proceedings, such that the appealed decision is to be set aside and the appeal fee reimbursed, the appeal cannot be dealt with in this way. In these circumstances the appellant has a legitimate interest in receiving a decision on the merits of the appeal. Therefore the appeal must be examined and the appeal proceedings cannot be closed without a substantive decision on the case. (See points 6 to 9).
However, the Board considered that no substantial procedural violation had occurred.   The alleged violation consisted of the Examining Division introducing a new document (D5) in first instance Oral Proceedings, and, while offering the representative time to study it, refusing to adjourn and continue in writing.  The Board stated:    “The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in oral proceedings and thereby changes the subject of the proceedings.”  Furthermore, the Board did not permit the applicant to change its case to allege that D5 had been referred to in relation to novelty rather than, as the Board supposed, to substantiate common general knowledge.  New submissions in this regard at Oral Proceedings were not accepted.

T 1877/07

In this interesting case, the Board of Appeal held that the common general knowledged alleged by the Examining Division had not been substantiated.  The conclusion was:
The board remits the case to the first instance for further prosecution so that the examining division will have the possibility to procure evidence that the alleged system including feature (ii) was common general knowledge. If such evidence turns out to be available, the examining division will have the opportunity to back up its arguments, clarify and modify those arguments to take account of the actual features disclosed by that evidence, and further consider the newly claimed feature (iii). On the other hand, if no such evidence is found, it appears that the examining division will have to acknowledge that the claimed subject-matter involves an inventive step.
The case was thus remitted to the department of first instance for further prosecution.

The Catchword says it all: 
An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.

These are the test cases concerning whether emails are “public”, reported by the IPKat here.

This was another case where a “Decision according to the state of the file” using the standard EPO Form 2061 was considered by the Board of Appeal to be not reasoned, thus representing a substantial procedural violation making it equitable to reimburse the appeal fee.  In this case, the result of using the form decision was the examining division did not address in the decision the applicant’s arguments submitted in response to the objections raised in the communications referred to in the form decision.

This decision is an example of how messy things get when there is an entitlement dispute between parties outside the EPC contracting states (in this case, Korea).

This is an unfortunate case where a number in the patent specification was illegible.  The applicant took the ingenious step of conducting a survey to support the number that was correct, but the Board of Appeal did not accept this as a means of proof.  The Board considered that the survey did not establish the correct meaning beyond reasonable doubt (the standard required – not “balance of probability”) and stated “In any event, a question of accuracy and disclosure cannot be decided by a poll.”

In this case, prior publication in a diploma thesis and oral presentation of that thesis at the Fachhochschule für Technik in Mannheim was alleged, but it was not established that the disclosure was in fact made available to the public, so novelty was accepted.

In an example of giving with one hand and taking with another, the Board of Appeal accepted the novelty of a claim to a spray gun, because the feature that “the front end of the paint nozzle tip projects 0.3 to 0.8 mm from the front end of the central opening in the air cap” could not be clearly and unambiguously derived from a drawing in the prior art showing a similar projecting nozzle tip, because, even if the drawing was to scale, no dimensions were given.  But the Board then said that the same drawing rendered the claim obvious because “measurements can be taken from drawings if true to scale, to reduce a teaching to practice”.

So long, and thanks for all the fish.
Here an appeal was not held to have been filed at all.  The only acts completed in the time limit were the payment of the appeal fee and the submission of debit order recording payment of an appeal fee, and including the application number and the name and address of the representative of the Appellant.  The Board did not accept the argument that the debit order could be regarded as a notice of appeal.

So, my thanks again to the IPKat readers, all the the IPKat team, and to Jeremy, for all the fun I have had over the last few months.  I have really valued the opportunity to consider and share a multitude of legal issues and developments, both inside and outside my usual areas of interest.  I am most grateful to you all.

Friday, 29 June 2012

Friday fantasies

When Chamberlain said "Peace in our time",
he was wrong -- but Prime Minister Cameron
has better prospects of success ...
The European Council's Conclusions today bring to an end the long and tortuous chapter on the European patent deal, embracing both the unitary patent system and the unified patent litigation scheme.  The position thus reachednotwithstanding this morning's saga of UK Prime Minister David Cameron's veto, is as follows:
Heads of State or Government of the participating Member States agreed on the solution for the last outstanding issue of the patents package, namely the seat of the Central Division of the Court of First Instance of the Unified Patent Court (UPC). That seat, along with the office of the President of the Court of First Instance, will be located in Paris. The first President of the Court of First Instance should come from the Member State hosting the central division. 
Given the highly specialised nature of patent litigation and the need to maintain high quality standards, thematic clusters will be created in two sections of the Central Division, one in London (chemistry, including pharmaceuticals, classification C, human necessities, classification A -- but don't forget, dear Parisians, that London gets to keep the Olympic Games, chortles Merpel), the other in Munich (mechanical engineering, classification F --a move welcomed by Merpel, who notes the recent success of London's Chelsea FC when playing in that lovely city). 
Concerning actions to be brought to the central division, it was agreed that parties will have the choice to bring an infringement action before the central division if the defendant is domiciled outside the European Union [is that the central division, ie Paris, London and Munich, or the central division of the central division, ie Paris?] Furthermore if a revocation action is already pending before the central division the patent holder should have the possibility to bring an infringement action to the central division [this sends the Kats rushing for their thesauruses in search of a word that means the opposite of 'bifurcation']. There will be no possibility for the defendant to request a transfer of an infringement case from a local division to the central division if the defendant is domiciled within the European Union. 
We suggest that Articles 6 to 8 of the Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection to be adopted by the Council and the European Parliament be deleted [you're not the first to make this suggestion -- and let's hope that it never needs to be made again].
Annsley the AmeriKat, who has made this topic very much her own in sharing it with our readers, will be penning a magisterial epitaph on the whole saga in due course, so watch this space.

A great deal of the IPKat's incoming correspondence is what might be termed feline content -- performing cats, copycats, events and activities involving cats, missing cats, the naming of cats and so on.  Slightly embarrassed that he can't recall the kind benefactor whom he owes a katpat for this item, he gives you this item from the Daily Mail on "mockbusters", a term which appeals to him and with which he was not previously acquainted.  This phenomenon would appear to be most vulnerable to an action for passing off or unfair competition where unsuspecting consumers are lured into buying the cheap cover version of a classic, but trade mark protection is not generally available in respect of well-known public domain stories and characters.  

To enforce its "one cat per
family" policy, China built
this massive wall ...
The Great Wall of China. "China Customs: a wall to keep counterfeits in?" is the title of a atriking article in the Journal of Intellectual Property Law & Practice (JIPLP) by Matthew J. Elsmore and Aaron D. Hurvitz. Although this article is jointly written by an Englishman based in Denmark and an American based in China, it is emphatically not the equivalent of eating a smorgasbord with chopsticks.  It describes, analyses and evaluates the role and likely impact of using China trade mark and customs law and procedure in the fight against global trade in counterfeit Chinese-manufactured products. It's very counter-intuitive in many places and quite fun. You can read the abstract here.

Japanese practice changes in relation to "sub-combination inventions"

During his time as a guest Kat, this particular Kat was hoping to cover developments from Japan, but his time is nearly running out, and so far the score is zero.  He has been saved at the last minute by an email from his friends at Ohtsuka Patent Office, with news of a revision of the Japanese Patent Examination Guidelines.  The revision of the Guidelines is recent, although the case that has occasioned it, referred to and attached in the note below, is from last year.

Liquid supplying system?
(See end of post)
The issue concerns claims to parts of inter-related apparatus, such as client-server, transmitter-receiver, printer-cartridge, and the like.  In the actual IP High Court decision, the whole apparatus is a "liquid ink supplying system", made up of the inter-related parts "recording apparatus" and "liquid ink container".

The Japanese nomenclature for this type of situation is to call a claim to the whole apparatus a "combination invention", and a claim to one of its parts only a "sub-combination invention".

Over now to Mr Ohtsuka:
We have attached a Special Feature article from the October 2011 issue of Patents & Licensing (P&L) regarding the IP High Court decision of Case No. 2010 (Gyo-ke) 10056.  This article was prepared in cooperation with Canon, for whom we managed the case. 

The IP High Court rendered a remarkable decision on a sub-combination invention relating to ink-cartridges by overturning the JPO’s Board of Appeal Trial Decision. The court decision prompted the JPO to announce a supplementary revision to the Current Patent Examination Guidelines in April 2012.  This revision stated that in the examination of patents of sub-combination inventions (like ink cartridges), the patentability of claims that include main body (other sub-combination) elements will be assessed and examined in the same way as normal patent claims.

The following three items are the key points of this Patent Examination Guideline revision: 
(1)  A claim cannot be deemed “unclear” for the sole reason that it includes a main body element. 
(2)  The patentability of the invention cannot be determined without considering the technical relationship to the main body. 
(3)  Even if a claim includes a main body element, if the claim itself is clear, patentability should be judged on the claim as-is. 

The reason we are writing to inform you of this IP High Court decision, and the resulting revisions to the JPO Patent Examination Guidelines, is that it is something of a landmark case. Its impact is not just limited to the case participants, but also has important implications for Japanese patent practice in general.
We hope that this information may be of interest to you, and perhaps help to contribute to the development of patent practice in your home nations.

The IPKat understands this as meaning that a claim to one part of the apparatus is permitted to refer to features of another part which is not claimed, without the claim being rejected as unclear for this reason.  If so, this appears to represent a more generous understanding than that adopted by the EPO, which is generally reluctant to allow claims to refer to features that are not within the claimed object. Will the other Trilateral Offices follow suit?

For an adorable animated version of the cute cat picture above, see here.

On-off-on: it's European patent deal day ...

Every blogger's nightmare is the sudden occurrence of a really big news item which everyone else seems to get to before he can. This scenario is not unique to bloggers, though. It is shared by all members of the media whose contributions, though of substantial significance at the time, soon fade in terms of their interest value. This Kat well recalls a BBC TV interview many years ago with the obituary writer for The Times, the doyen of British obituarists in his generation. After answering a variety of questions relating to the methodology employed in creating and updating obituaries, he was asked one final question: "In all your days as obituary writer for The Times, have you ever had any regrets?" He gave the shocking response: "Yes. I was on holiday the daWhat y they shot John F. Kennedy".

This Kat feels a bit like that himself, since he was offline and with not a sniff of a computer connection for several hours while the rest of the IP fraternity, not omitting his PatLit blogging companion Michael Thesen, all the way from Germany, were making merry with the news that David Cameron has finally taken the initiative in blocking the famously and controversially flawed European patent deal. Following yesterday's post on the position taken by a generally unknown but suddenly influential Parliamentary Committee that the proposals were "not fit for purpose", this decision was understandable, even if it's fair to say that few of us -- even those who practise the occult science of hindsight -- could make a plausible claim that this was ever likely to happen.

The interesting question is what happens next.  Since there are no votes in patents, it is fair to assume that David Cameron is acting out of conviction that he is right to do so, rather than on a whim.  Indeed the fact that, if the report is accurate, David Cameron offered to drop the call for the court to be located in London in exchange for the Court of Justice of the European Union being stripped of its ultimate jurisdiction in European unitary patent matters supports the theory that the man is acting with the interests of the patent community at heart, rather than simply those of the British. However, even as this Kat writes, word is emerging via Twitter that an agreement has been finally achieved.

From a domestic UK point of view, there remains plenty to discuss, regardless of the final deal.  Can it be that, with the gentle drip-drip-drip of information about the importance of IP finally making its mark on the solid rock of political apathy and unconcern, the need to prioritise a fair, workable and value-adding IP system has now been recognised?  And is the Prime Minister, like a lion emerging from the shadow of a mouse, taking the reins of the IP portfolio from the deeply embattled Baroness Wilcox?  In the latter case, will he be receptive to further IP policy proposals, not least of which is the speedy establishment of an equivalent position to the Intellectual Property Enforcement Coordinator in the United States?  We will no doubt soon find out.

Thursday, 28 June 2012

"Not fit for purpose": Parliamentarians excoriate British patent negotiation strategy

The latest news from the United Kingdom may come too late to affect the outcome of the European Summit on the Fate of the the Unitary Patent, which opened today, but it's at least of interest to those people who think that Parliamentary scrutiny, checks, balances and other organs of legislative decision-making in a democratic nation actually work.

So what has happened? The Commons Business Skills and Innovation Committee yesterday released a report entitled “The Hargreaves Review of Intellectual Property: Where next?”. This report contains a passage on the long-running European patent reform negotiations which is critical of the Government approach. This summary might give readers who are of a delicate disposition some cause for alarm:

"147. In some circumstances we might have concluded that the apparent absence of negotiating "red lines" could be attributed to a desire not to give away the Government's negotiating position, but combined with the overall vagueness about direction and the lack of command of detail, the impression was instead of a lack of firm direction [or indeed of any direction: see earlier Katposts here and here, for example]. The depth and range of concerns that have been expressed, from such a wide constituency of interested parties, leads us to conclude that the Government should resist the temptation toward the "need a win" argument in favour of proceeding with the UPC [note for first-timers: "Unified Patent Court"]. This is especially so as there are options that would not involve such an irrevocable commitment to an untested idea. For instance, one possible compromise would be to set up the new court system with non-exclusive jurisdiction and let businesses become convinced of its merits over time [references to the need for business confidence are welcome in the debate, though sadly overdue]. This would also allow the court to compete with the newly reinvigorated UK Patents Country Court [pedantic point: there is no such court. There is a Patents County Court for England and Wales, but not for the rest of the UK].

148. It is clear to us and the European Scrutiny Committee that the Government's current negotiation strategy for a Unified Patents Court is not fit for purpose. As a matter of urgency the Government needs to take a firmer stand for UK interests in the UPC negotiations than was manifested in the recent evidence session held by the European Scrutiny Committee. In particular, it needs to set out clearly defined options for outcomes acceptable to the UK and a robust strategy on how to translate those options to an acceptable overall solution. Such a strategy has to clearly state the Government's position on avoiding European Court of Justice jurisdiction [this the one piece of advice Chief Judge Randall R. Rader gave the British last night at the Sir Hugh Laddie Lecture], avoiding the risk of remote and costly litigation for UK [and indeed non-UK?] business, and neutralising or mitigating the effects of any bifurcation regime. Furthermore, that strategy should include a cogent argument for locating the central court in London and not one that relies upon hope and aspiration. Anything less runs the risk of undermining the competitiveness of British industry".
The IPKat wishes that it had been possible for the Committee to say this at least a year ago, and that it was free-standin and not simply a small message floating within a pronouncement on the mainly copyright-oriented Hargreaves Review. He agrees that the location of the central court, and indeed of any European institution, should be based on cogent argument, even if it means opting between a number of competing cogent arguments, rather than on the basis of political horse-trading.

Merpel agrees and reminds readers that the location of major European institutions is a matter of shame and embarrassment.  The European Union boasts a pantomime horse of a Parliament, with its snout in Strasbourg, its liver in Luxembourg and its backside in Brussels.

Wednesday, 27 June 2012

Of Sun, Sumption and Sanity: the Supremes hit the high notes

Originally called Sun Microsystems Inc v M-Tech Data Ltd and another (noted by the IPKat here), the case of Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd and Lichtenstein was marked out by the IPKat as a thunderously bad decision when the Court of Appeal reversed the decision of Kitchin J at [2010] EWCA Civ 997. The story however has a happy ending: today the Supreme Court (Lords Walker, Clarke, Sumption -- who delivered the judgment -- Reed and Carnwath) restored both the trial judge's decision and common sense in its ruling at [2012] UKSC 27.

The facts were as follows. Sun owned a series of UK and Community trade marks comprising or consisting of the word 'Sun' for computers, computer hardware, computer software and computer peripherals.  M-Tech, a UK company, supplied computer hardware in the "secondary market" for hardware originally sold by major manufacturers like Sun and its rivals. M-Tech bought 64 Sun disk drives from a US broker and sold them in the UK. Sun sued for trade mark infringement, alleging that M-Tech had put the drives on the UK market without Sun's consent. M-Tech maintained however that, since Sun hadn't shown where the drives had been first marketed, its attempt to enforce its trade mark rights was contrary to Articles 28 to 30 of the EC Treaty since its effect would be to prevent the attainment of a single market in hardware. Further, the enforcement of Sun's rights in this way was contrary to Article 81 of the EC Treaty and therefore prohibited.

Sun, maintaining that there was no evidence to suggest it had ever consented to the importation of these drives into the EEA, sought and obtained summary judgment, having furnished evidence that the drives had initially been placed on the market outside the European Economic Area (EEA). According to Mr Justice Kitchin:
* The court had to ask whether the claimant had a 'realistic' as opposed to a 'fanciful' prospect of success, one which carried some degree of conviction and which was more than merely arguable.

* In reaching its conclusions the court should not conduct a mini-trial, but had to take account of evidence that could reasonably be expected to be available at trial.

* The court should not be hasty to reach a final decision without a full trial where reasonable grounds existed for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case.

* Summary disposition was not appropriate in any area of law that was still developing.

* 'Consent' -- the parallel importer's favourite defence to a trade mark infringement -- had to be a pan-European concept under harmonised European law. It was thus up to the European Court of Justice to supply a uniform interpretation of the concept of 'consent' to the placing of goods on the market within the EEA. In view of its serious effect in extinguishing the exclusive rights of proprietors of trade marks, consent had to be expressed in such a way that an intention to renounce those rights was unequivocally demonstrated. While such an intention would normally be gathered from an express statement of consent, it was conceivable that consent might be inferred from the facts and circumstances surrounding the placing of the goods on the market outside the EEA that unequivocally demonstrated that the proprietor had renounced his rights.

* Implied consent to the marketing within the EEA of goods put on the market outside that area could not be inferred from the mere silence of the trade mark proprietor, from the fact that the proprietor had not communicated his opposition to goods placed on the market outside the EEA being placed on the market within the EEA or from the fact that the goods carried no warning of a prohibition on their being placed on the market in the EEA.
The Court of Appeal, in a relatively short decision, granted the defendants permission to appeal, since M-Tech was entitled to argue that Articles 28 to 30 and 81 of the EC Treaty prevented Oracle from obtaining summary judgment for trade mark infringement. Reminding the parties that the fact that this application for permission to appeal was allowed didn't mean that M-Tech wouldn't have to substantiate its defences, the court directed Oracle to call for a case management conference as soon as possible, perhaps for the strange reasons that (i) it has the potential to establish an industry precedent and (ii) it looks like a good prospect for a reference to the Court of Justice of the European Union. Thus the court said (at para. 41):
“... This case clearly has important financial and economic implications not just for the parties but also for others involved in the grey market in Oracle, and possibly other, computer hardware and goods. The economic function of parallel imports and the grey market is controversial”,
adding ominously (at para. 42):
"If M-Tech's allegations are established, the trial judge will have to consider whether to make a reference to the Court of Justice to enable him to decide the issues in the action. In the absence of any material change in European Union law or in M-Tech's case, there would be a strong case for a reference by the trial judge. The point is not acte clair, and in this case where the issues involve questions of economic policy likely to affect the European Union as a whole and where this court has already considered the points of European Union law in issue, there would be a good reason to make a reference without waiting for the case to reach this court again".
The IPKat was unhappy about this. It was his view that, if the Court of Appeal was correct, the raising of Euro-defences under the Treaty or its renumbered successor in title the TFEU was not likely to be a strong candidate for summary judgment. If this is so, parallel traders could routinely plead Euro-defences and thereby avoid summary judgment, thus causing havoc among legitimate rights owners.

Now, in a refreshingly short and direct speech of just 37 paragraphs, Lord Sumption put things right. The following snippets will give readers the flavour of the Supreme Court's reasoning
"11. It will be apparent that it is not good enough for M-Tech's purposes to establish a breach of the treaty. It has to show that that breach gives them a defence to an action for infringement of the marks. There is a principle of English public policy, which is common to the national legal systems of most member states, that a person may not profit from his own illegal act. The Court of Justice has held that it is open to member states to apply that principle to causes of action arising from directly applicable provisions of EU law, as indeed it has sometimes done itself ...".
Quite right, says the IPKat. It's good to see a little gleam of old-fashioned English public policy peeping through the dense cloud of European law. But that's not all. Specific harmonised IP rights trump mere general principles:
"13.... where a particular area of commercial activity engaging the principle of the free movement of goods is regulated by harmonising legislation of the EU, then that legislation supersedes the general provisions of articles 34 to 36 of the treaty. ..."
On this basis,
"15. Article 5 of the [trade mark harmonisation] directive provides that the proprietor of a trade mark "shall" be entitled to exercise certain rights, including the right to prevent the use by others of his own or an identical trade mark in connection with goods of the class for which the mark is registered. It is not qualified by any proviso relating to the free movement of goods within the EU, because it does not need to be ...".
On this basis, M-Tech's case, and the Court of Appeal's decision, appear to disintegrate:
"25. ...On the agreed facts, these goods were never marketed in the EEA until they were imported and marketed there by M-Tech without Sun's consent. It is therefore not in dispute that the only right derived from its trade marks which Sun is seeking to enforce by these proceedings is its right to control the first marketing of the goods in the EEA. This is an exercise of rights which does not engage the principle of the free movement of goods between member states embodied in articles 34 to 36 of the treaty. It affects only the entry of the goods onto the EEA market, not the movement of the goods within it. It is specifically authorised by articles 5 and 7.1 of the Trade Mark Directive, which are part of an exhaustive code that itself fully reflects the requirements of articles 34 to 36 of the treaty. M-Tech's argument to the contrary, and the decision of the Court of Appeal accepting it, are both substantially based on decisions of the Court of Justice under article 7.2 concerning the use of trade mark rights to obstruct the trading between member states of goods already legitimately in circulation within the EEA. That is a different, and for present purposes irrelevant situation".
That's not to say that Articles 34 to 36 don't exist; they do, but they're just irrelevant to M-Tech's case here:
"29. It may well be that M-Tech has a perfectly good cause of action against Sun based on articles 34 to 36 of the treaty for damages for preventing them from selling Sun products by their policy of withholding information about the previous history of the goods. I make no comment on that, because it is irrelevant to this appeal. We are not concerned in these proceedings with business that M-Tech have been prevented from doing, still less with business that other traders have been prevented from doing. We are concerned with business which M-Tech have done in infringement of Sun's trade marks. It is not a defence to proceedings brought on that basis that there is other business that M-Tech have been prevented from doing by Sun's arguably unlawful policy of withholding information".
This was not a case in which any reference need be made to the Court of Justice of the European Union either:
"36. Once the Court of Justice has laid down the relevant principles of law in terms which are clear, consistent, and sufficient for the decision of the case, it is the function of national courts to apply them. That there are obscurities in parts of this area of EU law is beyond question. But the particular legislative provisions and legal principles which make M-Tech's case impossible are in my judgment entirely clear. A reference is not required to elucidate them. M-Tech's real problem, under all three heads of their argument, is that they are unable to establish a relevant connection between the exercise of Sun's right to control the first marketing of their trade-marked goods in the EEA and any breach of the treaty".
Well done, says the IPKat, you've got it right!

Breaking News: Paris to get Central Division, London and Munich to get "branches"

The AmeriKat surprised by today's
unconfirmed news
Although unconfirmed by the AmeriKat as yet, she has been alerted to the following article in the German newspaper Handelsblatt which announced over an hour ago that the proposed Central Division of the Unified Patent Court is to be located in Paris. The AmeriKat understands, from several unconfirmed reports, that the President's Office and Registry are also to be housed in Paris. London and Munich also fair well from the apparent agreement. They both are to receive "branches" with London reported to obtain cases dealing with the biotechnology and pharmaceutical industries and Munich to deal with cases concerning the automotive industry. The AmeriKat muses that Paris must get telecoms cases...Munich is also set to deal with "administrative" issues, which one can only guess what that includes. The article in Handelsblatt refers to President van Rompuy as stating that
"This compromise makes clear the way for a single European patent, and that will save money and be a boost for innovation."
As the AmeriKat reiterates, this is all unconfirmed but she expects some clarification over the next few hours and indeed tomorrow which marks the start of the European Summit.

If readers have any further information, please do let her know. Otherwise she will see you tonight at this year's Annual Sir Hugh Laddie Lecture where Chief Judge Rader will be speaking on the apropos topic of the internationalization of IP law.

Yesterday's news, but the joy goes on ...

Celebrated as a blogger, Merpel is less
well known as a thespian.  She is depicted
here in her well-reviewed role of
Ophelia in Shakespeare's Hamlet
The IPKat remains slightly puzzled that, while the World Intellectual Property Organization (WIPO) broke the news yesterday that the Beijing Treaty on Audiovisual Performances had been successfully concluded [see 1709 Blog here], the British Copyright Council (BCC) should have embargoed its press release on the event till today. Nonetheless he is happy to respect the BCC's wishes.  And while WIPO and the Chinese pat each others' backs for having done a jolly good job at this highly productive Diplomatic Conference, the good folk who actually do the performing -- and the bodies that represent them -- are entitled to do a bit of merrymaking too.  Only the curmudgeons at Techdirt would begrudge them their moment of pleasure, in the mistaken belief [shared by quite a lot of performers, Merpel thinks] that all performers are either Hollywood stars or about to be so.

So what does the BCC say?  Here are some extracts from the press release, expertly cut-and-pasted by a Kat who spurned the initial pdf in favour of something more user-friendly:
"... Within any group of creators and performers there are times when it is right to accord special recognition for achievement. This Conference has enabled the establishment of a Treaty to recognise the work, the commitment and the contribution of actors, singers, dancers, musicians and other audiovisual performers around the world. The Treaty marks a significant landmark within the work of the World Intellectual Property Organisation and brings the recognition for audiovisual performers into line with recognition for performers whose work is fixed in phonograms.

The British Copyright Council welcomes the Treaty and the benefits for performers and rights holders which its existence will provide for the future.

Speaking for those organisations representing actors, musicians, singers and other performers, Andy Prodger, Christine Payne and John Smith gave their reactions.
“This is most welcome news for audiovisual performers around the world. For decades Actors have been second class citizens in comparison to Musicians and Singers whose performances have much greater protection. This Treaty, when adopted into national laws around the world, will give us the chance to be properly rewarded and recognised for our skill and status as artists. The goodwill shown in Beijing now needs to be converted into positive legislation to the benefit of performers in audio visual productions and we particularly call on the UK Government working within the European Union to bring forward this legislation at the earliest opportunity” [Now who, reading the Hargreaves Review and all the debate over orphan works, the digital economy and file-sharing, would ever have guessed that performers' rights would be making a claim to shoot up to the top of the legislative agenda?]
Andy Prodger, Chief Executive, British Equity Collecting Society
"This is a great moment for audio-visual performers all over the world - at last they have an international treaty which will provide recognition of the economic and moral rights of performers when working in film, television and other audiovisual media. But the challenge now is to turn these rights into a reality. This week there has been a great spirit of co-operation and determination amongst governments to achieve this Treaty - I hope this continues in the discussions they will now have with performers in their own countries. Equity is certainly looking forward to being part of discussions to implement the Treaty" [This may be some way off.  The Beijing Treaty must be ratified by 30 countries and/or "certain intergovernmental organizations" before any country is obliged to implement it].
Christine Payne, General Secretary, Equity
“...  for the first time performers will enjoy both economic and moral rights in all of their recorded and live work. We hope that the EU and UK Government ratify and implement the new treaty at the earliest opportunity [Article 5 deals with moral rights and carries this fascinating footnote: "For the purposes of this Treaty and without prejudice to any other treaty, it is understood that, considering the nature of audiovisual fixations and their production and distribution, modifications of a performance that are made in the normal course of exploitation of the performance, such as editing, compression, dubbing, or formatting, in existing or new media or formats, and that are made in the course of a use authorized by the performer, would not in themselves amount to modifications within the meaning of Article 5(1)(ii). Rights under Article 5(1)(ii) are concerned only with changes that are objectively prejudicial to the performer’s reputation in a substantial way. It is also understood that the mere use of new or changed technology or media, as such, does not amount to modification within the meaning of Article 5(1)(ii)". That should circumvent a few spurious legal claims, thinks Merpel]. ...
John Smith, General Secretary, Musician’s Union and President, International Federation of Musicians (FIM)

Andrew Yeates, attended the Diplomatic Conference as the nominated Director for the BCC which is an accredited WIPO observer member and he also worked as part of the official UK delegation at the Conference. Andrew said
"... Representatives of BCC members have given their initial reactions to the Agreement reached and the potential of what has been achieved is clear from the comments from BCC members Equity, BECS and the Musicians Union [which issued its own press release yesterday: a katpat to Les Hurdle for letting the IPKat see it] in this release. I hope that all members of the Council will join me in recognising that the new Treaty ... shows that multilateral agreement on issues affecting copyright and related rights remains a current issue. It is something for today and for the future".
Says the IPKat, the vast majority of performers he comes across work hard, have to practise and refine their skills even when they're not working, receive irregular income for irregular work and have to act as their own debt collectors, and generally have quite a tough time of it. He's pleased that this Treaty at least strikes a positive note in favour of them, though he suspects that it's a poor substitute for the sort of remuneration and security enjoyed by the staff at his local supermarket.

Performing cats here and here
The BCC's favourite Beatles' track here

Tuesday, 26 June 2012

Two titles on trade secrets

It seems that the IPKat's friends at Oxford University Press are trying to corner the market for publications in the area of trade secrecy. For, just when the second edition of Gurry, enrobed in its magisterial jacket of red, breaks forth from the leafy groves and dreaming spires of Oxford, the very same publisher is launching an equally second edition of a bright, brash, bouncy counterpart from its stylish New York suite office suite. This post notes them both.

Trade Secrets Law and Practice (second Edition) has been put together by the IPKat's friend David W. Quinto with fellow US attorney Stuart H. Singer. The authors have been around the block a few times and their feet click to the subtle rhythm of their subject: David is a founding partner and head of internet litigation at Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, California. His clients include some of the biggest and boldest fish in the IP pond and you wouldn't want to go trifling with them while he's around.  Stuart practises on the Atlantic seaboard, down in Fort Lauderdale with Boies, Schiller & Flexner, LLP. Presumably, if the Californians cope with sharks, the Floridians can deal with the alligators.

Is this a good book, one which is worth not merely buying because it's quite reasonably priced for a law book but which is worth reading?  One must first put aside for a moment the drab and uninspiring cover, a feature of OUP's New York intellectual property books which is probably intended as a pictorial representation of their serious content but merely serves to remind us that even IP lawyers are attracted by bright colours and pretty pictures, particularly when choosing books online. Peeling back the cover, one is left the product itself -- and it's a winner.  As the publishers say:
"The value of a business is more than ever a reflection of the value of the company's ideas, which makes trade secrets an increasingly important part of this equation. Trade Secrets: Law and Practice is the first legal treatise to cover the subject from a trial lawyer's perspective, and it should be on the desk of every firm litigator and in-house counsel involved in the protection of trade secrets.

Written by two highly experienced trial lawyers, this Second Edition contains a new overview of litigation burdens, presumptions and inferences [for non-US lawyers, this is the most interesting bit since it is here, rather than in the realms of substantive law, that the battles over trade secrecy are truly fought, won or appealed --  people don't take easily to defeat in the US]; a comprehensive analysis of the applicability of the Computer Fraud and Abuse Act (CFAA) to trade secret misappropriation claims; the latest developments in the evolving approaches to the Uniform Trade Secrets Act (UTSA) preemption of common law and state statutory claims; and an expanded state-by-state analysis of trade secret litigation.

This book is an invaluable resource for both firm-based litigators and in-house attorneys. It sets a new standard for the insightful analysis of U.S. trade secret law and practice [Sets a new standard? Merpel thought the first edition did that ...]".
It's good to be reminded that, just as some Americans foolishly look over towards Europe and think it's a single jurisdiction, a probably greater number of Europeans foolishly look West towards the United States and think much the same. But while a homogeneous one-size-fits-all Federal law covers patents, copyright and the big and interstate bits of trade mark law, trade secrets are a subject matter that may depend precariously on the depth of protection that state law can offer, and on the manner in which the state court systems put their laws into operation.  An appendix of nearly 150 pages summarises the relevant law of 23 states, five of which begin with the letter 'M'.  Says Merpel, who also begins with an M, this is a very useful book and a good read too.

Bilbiographic data: xv + 582 page. Paperback. ISBN 13: 978-199767571; ISBN 10: 0199767572. Rupture factor: low. Price US$225. Book's web page here 

 Gurry on Breach of Confidence The Protection of Confidential Information (Second Edition) has been put together by Tanya Aplin, Lionel Bently, Phillip Johnson and Simon Malynicz.  This Kat isn't even going to attempt to review this book (in case you're wondering, he has commissioned someone else to do so) since his friends have been involved in it --  but he is going to draw it to the attention of his readers.  On  a personal note, Francis Gurry's original Breach of Confidence, published in 1984, had a lot going for it: it was scholarly, readable, clearly thought-out from first principles and absolutely devoid of competition from other titles.  This Kat can't remember which journal he reviewed it for, but he seems to think that, despite its 1984 date, it didn't have any references to any articles or case notes published in the European Intellectual Property Review -- a journal which, though launched in 1978 and published continuously thereafter, was then unknown to the law faculty of Oxford University. Does anyone have a copy? Can they verify this?

Anyway, since this is more than a kat's lick and a promise, here's the bit you really want to know: ...

Bibliographic datalxxxix + 881 pages. Hardback. ISBN 978-0-19-929766-5. Rupture factor: severe -- not a book to drop on your toes. Price £195. Web page here.

Something to complain about? First poll yields fascinating results

Merpel, joined on this occasion by a selection of her fellow kats, would like to thank everyone who voted in their sidebar poll [for which the full results will remain at the top of the IPKat's sidebar for the rest of today] about the EPO complaints procedure. They would particularly like to thank the institutions that prodded their members to respond.  This definitely includes the Chartered Institute of Patent Attorneys (CIPA), and the IPKat has been informed that others did as well.

Now it comes to the difficult part: how to interpret the results. Unfortunately, this is not quite so easy, but Merpel will valiantly try.

Question 1 received the most answers, with 27 respondents out of 162 (16%) having filed a complaint at the EPO using the DQMS department [for background information click here and follow the links to your heart's content], and 135 respondents reporting that they have not. On its own, this suggests that the rate of complaints is rather low, especially since would one expect people to be more likely to enter the poll if they have such experience. On the other hand, it could simply be that people have not wished to use the DQMS procedure -- or were not aware of it.

Question 4 was intended to act as a control to question 1, asking whether redress of a grievance had been attempted by any other means. 42 out of 77 (54%) reported yes, and 35 no. But because the total number of respondents is so much less than for question 1, it is not clear what this means: did the people who did not respond do so because the answer was no, or for some other reason? So although it is clear that the “any other” route for complaints is more common than the DQMS route, it is not clear how much more common.  Ot is not accordingly clear whether the low positive response to question 1 is because of a low rate of complaints, or a lack of desire/knowledge to use the DQMS procedure. It is thus uncertain as to how great is the incidence of dissatisfaction, which would have be given by the cumulative answers to questions 1 and 4 if the response rates to each were comparable (although some people could have used both DQMS and other procedures, resulting in some double counting).

One of the comments to the original post reported that the official complaints procedure was not well publicised, and the IPKat noted that only the Handbook of Quality Procedures set out the procedure in detail for the first time, and this would explain the larger use of a non-DQMS procedure.

Whichever way the figures for questions 1 and 4 are construed, they seem to suggest that dissatisfaction rates are rather low.  A great many people have never filed a complaint or sought redress of a grievance at all. This is what Merpel has heard anecdotally – users of the EPO are generally satisfied but, on the few occasions where they are not, many have found it difficult to get the situation addressed. The written comments appear to reflect these perhaps rare situations of intransigence.

Turning now to the outcome questions, these again are a little difficult to interpret, and again Merpel wonders, with hindsight, whether in fact the questions needed to be clearer, and apologises if this is the case. The number of responses to the outcome questions 2 and 3, relating to the DQMS procedure, is higher than the number of “yes” responses to question 1, so presumably some people responded “no” to these questions if they had never used the DQMS procedure, while others simply passed the questions over.

13 out of 37 respondents reported in question 2 that they had a procedural issue redressed by a complaint using the DQMS complaints procedure. On the other hand, a mere 3 out of 30 respondents reported in question 3 to have had a substantive issue redressed by a complaint using the DQMS complaints procedure. This confirms what Merpel heard anecdotally, that -- if the issue is substantive -- it is difficult to get anything done.

Questions 5 and 6 asked the same questions as 2 and 3, but in relation to obtaining redress by means other than the formal DQMS procedure. Bearing in mind that 42 respondents reporting having sought redress using other means, 11 out of 33 respondents reported in question 5 having had a procedural issue redressed by other means, while 14 out of 37 respondents reported in question 6 having had a substantive issue redressed by other means. Although there is again the difficulty of interpretation in that the respondent numbers to questions 5 and 6 are higher than the “yes” respondents to question 4, it seems that in a reasonable number of cases redress of a grievance by other means has been possible, and that this has been relatively insensitive as to whether the nature of the issue was procedural or substantive.

By subtracting the “Yes” responses to questions 2 and 3 from those to question 1, we get the result that at least 11 respondents did not get a grievance redressed by DQMS procedures and, analogously using questions 4 to 6, we find that at least 17 respondents did not get a grievance redressed by any other means (the real numbers may be higher if the same respondents replied yes to each of questions 2 and 3; or each of questions 5 and 6). Even though there may be a positive reporting bias, this does suggest that there is a real issue, albeit perhaps small, that in some cases users are left with no effective avenue to pursue.

Turning now to length of time to resolve the situation, the results were as follows:
Less than one month - 9 (20%) 
1-2 months - 6 (13%) 
2-3 months - 9 (20%) 
More than 3 months - 21 (46%) 
Total 45
So, in nearly half the cases, the resolution took more than 3 months. In other words redress, even when obtained, was not often rapid.

The IPKat has found this very interesting, and thanks everyone who took the time to respond. Clearly this straw poll is only an initial step in looking at the situation. Merpel thinks that the question should be pursued further, and urges the European Patent Institute (epi), and/or national patent attorney associations in contracting states, to take this up with their members.

Monday, 25 June 2012

Monday miscellany

What shall we do with Richard O'Dwyer? This Kat has not had the opportunity to discuss with the other Kats the whys and wherefores of the case of Richard O'Dwyer, who is facing extradition to the United States and a possible 10-year prison sentence for committing acts in the United Kingdom that are not, so far as he can tell, criminal in the United Kingdom itself but which may transgress the criminal provisions of US copyright law.  It is also well known that this Kat does not condone intellectual property infringement, in whatever shape or form it finds itself.  For all that, he feels that not only fictional felines but real humans are entitled to enjoy an expectation that an act which they perform in their own country, where it attracts no criminal sanction, is not an act for which they will be extradited to an alien jurisdiction and made to face criminal charges there.  Wikipedia founder Jimmy Wales has launched this petition to the British Home Secretary Theresa May to refuse the extradition request.  To date it has attracted fewer than 30,000 signatures, but this Kat has now added his own.

What shall we do with Ian Hargreaves? This Kat is no great enthusiast of Digital Opportunity, the so-called Hargreaves Review of intellectual property and growth in the United Kingdom which he --  along with a comfortingly large number of others -- considers to have been ill-conceived, poorly focused, hastily executed and, he suspects, largely destined for oblivion. He is however more than happy to salute its eponymous chair, Professor Ian Hargreaves, Professor of Digital Economy at Cardiff University, Wales, who has just received the honour of a CBE in the Queen's Birthday Honours List.  Ian's efforts have led to a sharp increase of awareness of the prospects and the problems facing not only IP owners but their competitors and their customers and have provided a valuable agenda for debate across many areas of IP. Well done, Ian!

What shall we do with Kingsley Egbuonu?  The 54th and final episode in Kingsley Egbuonu's A to Z tour of official African IP websites for the Afro-IP blog ends on a low note with a report on Zimbabwe --a country that plays host to the African Regional Intellectual Property Organization (ARIPO) but manifestly has failed to get its own act together.  This Kat is impressed at the dedication and enthusiasm with which Kingsley has flung himself at this task and hopes that he will find something suitably huge for his next challenge. Can readers find him one?

What shall we do with Natalie Westerman? 22-year-old Natalie, who tweets as @natwest, has been beset by angry and frustrated customers of the National Westminster Bank (which trades under the registered trade mark NATWEST) following the bank's well publicised computer failure which left a goodly proportion of its 17.5 million customers either unable to get hold of their cash or, almost as bad, unable to spend it.   The moral of the story is simple: if you want to use a trade mark as your Twitter handle, be prepared for the consequences. A katpat goes to Chris Torrero for this link to the Telegraph.

Subscribe to the IPKat's posts by email here

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