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).

Friday, 31 July 2015

Something to read? A couple more fresh titles ...

Secrets: Managing Information Assets in the Age of Cyberespionage, by James Pooley, is a very different kettle of fish from the same author's Trade Secrets, an 800-page blockbuster from US publishing house Law Journal Press which is addressed principally to US practitioners, particularly those who find themselves grappling with any number of technical legal and procedural issues when contemplating litigation, portfolio management and transactional issues.  Secrets however is addressed to the people who have secrets at their fingertips, as it were -- people who have to safeguard the confidential information which is at their disposal against prying eyes, accidental spillages, errant employees and ex-employees and other hazards that are daily encountered in business or commerce. Ideally, readers of this book follow the general guidance it contains and minimise their need to meet and instruct the readers of the other book.

This is not the author's first foray in writing for the benefit of the lay reader. Older readers may recall that, way back in 1982, when dinosaurs roamed the Earth and laptops, tablets and smartphones were still the stuff of science fiction, James hatched Trade Secrets: A Guide To Protecting Proprietary Business Information.  In the intervening years, his day-jobs with a leading IP practice and then with the World Intellectual Property Organization, not to mention his teaching activities, have given him a more complete, well-rounded view of a subject that was so poorly served by any sort of literature in the early 1980s.

According to the book's web-blurb:
"Information is the business asset of the 21st century. So our impulse may be to guard it. Yet in a flat global economy, we have to share it--not just with employees but also partners, vendors, customers and consultants.

Here's the risk: secrets falling into the wrong hands can destroy a project, or even bring down a company. And the same technology that enables seamless communication also makes data theft easy, cheap and hard to detect. So what can managers and business owners do to protect and exploit their competitive advantage, maintain productive relationships, and avoid lawsuits?

In Secrets you will find the answers, discovering how to:
  • Identify and reduce your risk of information loss 
  • Deal with employees leaving to join or start a competitor 
  • Manage your data on the Internet and in the Cloud 
  • Build an information protection program with best practices 
  • Respond when you find a breach of confidentiality ...
The books itself is short, in commendably large print, footnote-free and not cluttered by jargon. More spacious margins would have been nice, but everyone likes to make written notes on the printed page. The guidance is clear and direct, as are the appended non-disclosure and consultancy engagement templates. While a US readership is contemplated, much of the advice is law-flavoured common sense, which means that busy business readers can get something out of it whichever jurisdiction they find themselves in.

Bibliographic details: paperback. xviii + 286 pages.  ISBN 978 0 9963910 0 9.  Rupture factor: zero. Available on Amazon here.


Biotechnological Inventions and Patentability of Life: The US and European Experience is the second volume in Edward Elgar Publishing's New Directions in Patent Law series. Its existence is owed to funding from the Italian government's Ministry of Education, University and Research. The author is Andrea Stazi (Department of Human Sciences, European University of Rome, Italy).  Regular readers who have taken a glance at the cover illustration will need no reminder of this reviewer's antipathy to light bulbs as lazy cliche'd symbols of innovation. In this instance the light bulb is even less appropriate, since the tome itself deals, as the title indicates, with biotechnological inventions. No-one has however yet succeeded in cloning a light bulb or nurturing a breeding pair of them.  However, once past the cover, the book gets better -- as is so often fortunately the case.

According to the publisher:
In today’s technological world, biotechnology is one of the most innovative and highly invested-in industries for research, in the field of science. This book analyses the forms and limitations of patent protection recognition for biotechnological inventions, with particular regard to patentability of life.

The author expertly compares the United States model, traditionally based on technical evaluations, with the European model, inspired by fundamental rights and bioethics. He highlights how the regulation of biotechnological inventions should guarantee a fair balance between protection of investment and access to information, which is essential for further research and innovation.
The problem with this book is the problem faced by its subject-matter. The legal, philosophical, theological and economic literature on both sides of the Atlantic is vast and the author has done a valiant job in trying to identify this literature (largely but not exclusively that which is published in the English language) and make sense of it.  However, as is so often the case with books from the same publishing house, there is no stand-alone bibliography; nor is there a table of cases cited or treaties and statutes referred to.  Having read, edited and published a number of articles in this interdisciplinary field of scholarship, this reviewer had no means of spotting conveniently whether they were discussed by Andrea Stazi and what sort of opinion was formed in respect of them.

The depth of the author's thoughts on the subject can be gauged from the unusual length of the final chapter, bringing together a whole string of conclusions. It is difficult to summarise them since there is a dense weave of interrelation between the conclusions' many strands. The main themes of the author's approach can best be summarised by a string of words beginning with the letter "C": care, consideration, caution, control and cooperation -- but that would be trivialising the journey taken to reach that happy end.

Bibliographic details: hardback, vi + 325 pages. Price £85 (online from the publisher, £76.50). ISBN 978 1 78471 589 2. Rupture factor: lowish. Publisher's web page here.


The New European Patent, by Alfredo Ilardi (former Head of the World Intellectual Property Organization's Collection of Laws and Treaties), is a slender book that can best be described as a small monument to a large event and as a lost opportunity. According to the publisher's website: 
On 17 December 2012, following a complex negotiation which lasted 12 years, the European Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union. This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement.
This introduction gives an accurate flavour of the book: it is full of correctly-recorded official detail and does not venture into the real world of human passion, corporate concern, political expediency and devious diplomacy -- the very stuff of which the "complex negotiation which lasted 12 years" was made.  There has been a wealth of academic, scholarly and professional literature on this book's subject matter, not to mention a magnificent concatenation of blogposts in many languages and from many legal and linguistic cultures. None of this can be found here.  More than half of this book actually consists of appended materials that can be conveniently downloaded from the internet at no cost at all, which makes the £65 price look a trifle optimistic. 

Bibliographic details: hardback. ix + 150 pages; ISBN 978184946833. Price £65. Book's web page here.

Fifteen million reasons to say "thank you"!

This morning (or this evening, if you are basking in the Pacific moonlight) the IPKat's weblog recorded its 15 millionth page view, which works out at a little more than a million a year since the Kat started his IP blogging exploits in 2003.

Both the IPKat and Merpel would like once again to express their sincerest gratitude to all their readers, contributors and commentators for helping the blog to reach this milestone.  Thanks are also owing to those heroes and villains whose exploits, whether in court, in legislative chambers, in the marketplace or elsewhere, have been sufficiently memorable to make them worth commenting on.

This Kat would just like to add that being at the operational centre of this weblog, which is a team effort, is an exhilarating and often quite scary experience. He knows quite how much goes on behind the scenes, how much correspondence is received and processed, how many queries are answered or redirected, how many threats are parried, and how many photos of readers' cats are gratefully acknowledged.  From where he sits, the view of the intellectual property community is a remarkably complex and interdependent one. It is also a community of which he is immensely proud to be an active member.

Friday fantasies

We'll never know what they were laughing at,
since Twitter took the joke down ...
Twitter jokes: Katpost goes viral and it's no joke! "Lifting Jokes on Twitter", recently posted to this weblog by leading copyright Kat Eleonora, has attracted the attention of the wider media.  First we learned that this article on Twitter's take-down of tweets that allegedly infringed copyright had been picked up by practitioners' publication Legal Week. Then we discovered that our good friends at Managing Intellectual Property had been giving it some air.  Says the IPKat, it's lovely to know that what we post on this weblog is put to good use by others.  Adds Merpel, yes, just like you put their content to good use too ...

Forthcoming attractions.  Apart from the IPKat's frequent Friday reminder that there are lots of great events coming up, which you can check on his Forthcoming Events page, it's also the dawn of a new month -- August -- which means that it's time for the monthly Queen Mary Journal of Intellectual Property summary of events coming up in that lovely month.  Talking of events, the next JIPLP-GRUR London seminar, on IP Enforcement in the wake of the IP Enforcement Directive,, is coming up on 8 September: more than 60 people have now registered, but there's still room for more. Details of this seminar, which is free and has this Kat in the chair, can be accessed here.

Patents for second medical use, coming to a Bosphorus near you.  The mysteries of the patentability of a substance that already has one known medical use, one a further medical use is found for it, have been recently addressed in numerous Katposts on the litigation in England and Wales between Warner-Lambert and Actavis, most recently here and here. This Kat thanks his friends at the Turkish IP practice of Deriş for the information that Turkish practice, following that of the European Patent Convention, indicates that patents are available there for second medical use. Thanks go to Okan Can for sending him this link to the piece he wrote together with his colleagues.

Around the weblogs. "Old Money, Old Navy, Fabric Copyright Infringement Suit, Oh Dear!" is Marie-Andrée Weiss's instructive post on the 1709 Blog about a US copyright infringement action involving fabric designs (clothing designs per se are unprotected by copyright law on the basis that they are "useful articles").  There's also a CopyKat post from Ben Challis with a round-up that includes the latest on the sad saga of copyright in that eternal dirge "Happy Birthday to You".  The jiplp weblog features a note by Indranath Gupta and Vishwas H. Devaiah on the Court of Justice of the European Union ruling in Ryanair v PR Aviation, on whether the"you can't contract out" provisions of the Database Directive apply to data that isn't protected as well as to data which is. PatLit carries a helpful account by Marqués Jarque and Silvia Saenz de Ormijana on the new Spanish Patent Act and what it foretells for a jurisdiction that is determined not to be marginal in innovation terms, whatever it feels about the new European patent package.

In brief, and now at length.  The AmeriKat neatly potted this month's resolution of the major US patent dispute between Netflix and Rovi, relating to five Rovi patents covering interactive programme guides and multiple-device playback, in a single succinct paragraph here. Katfriend Kevin Winters, not to be outdone, has prepared his own summary of this decision which stretches to a little over 4,000 words: you can check it out here.

What kind of future does Twitter have?

For those Kat readers who do not actively follow the corporate earnings reporting season, Second Quarter (Q2) results have been coming in for several weeks. While disappointing results by hi-tech behemoths such as Apple and Microsoft have garnered most of the headlines, given the sheer bulk of these companies, perhaps the most interesting dynamic took place regarding Twitter. It is no secret that Twitter has seen ups and downs since its IPO on November 7, 2013, and whispers having been getting louder and louder about whether the company’s business model will meet investor expectations. The Kat question is simple: does Twitter have a long-term future? The answer, based on the words of the company’s senior management following the company’s earnings announcement earlier this week seems to be: at best—maybe.

The summer has been a trying time for the company. The CEO, Dick Costolo, stepped down in June and there was hope that the company’s share price would improve. Add to this the fact that Twitter co-founder Jack Dorsey returned as interim CEO-- but the share price still declined. Then came the release of the Q2 numbers following the close of the share trading day on July 28th. The announcement seemed encouraging, reporting better than anticipated results; the stock price rose almost immediately more than 10% in after-hours trading. However, this was accompanied by the customary earnings call with senior management, the substance of which painted a challenging, if not worse, outlook for the company. Consider the following, as reported here and here:

1. Dorsey began his comments by warning that the company has a long road ahead, stating bluntly:
"We’ll take the necessary time to build the service people love to use every single day, and we realize it will take some time to show results we all want to see.”
The stock price immediately began to fall.

2. Dorsey went on to discuss user growth and audience participation, lamenting that new features such as the Timelines and Logged-Out experiences have not had the desired impact. “This is unacceptable and we’re not happy about it,” he said.

3. Dorsey was followed by CFO Anthony Notto, who was equally, if not even more, downbeat. He noted:
"Specifically, we did not see organic growth, positive seasonality or growth initiatives seen in Q1. As Jack mentioned, we’re obviously not satisfied with these results.”
4. Noto paid particular attention to the metric of monthly active users (MAUs), regarding which he observed:
“We do not expect to see sustained, meaningful growth in MAUs until we start to reach the mass market. We expect that will take a considerable period of time.”
5. In other words, the company had not yet found a way to reach the “average” user of social media, which is the key for ultimate financial success. Some investors found enough in the bluntness of these remarks to stick with the stock, but a significant number did not. The stock price at one point declined over 10%.

6. As for the question who will take over as the permanent CEO of Twitter, Dorsey stated:
“I know this is a trending topic on Twitter around the CEO search, but unfortunately, we do not have an update to provide today.
The upshot is that the company saw the ex-CEO walk out the door last month, is currently being run by an interim CEO, and has no replacement for the CEO position for the moment.

Stepping back from the dynamics of quarterly earnings reports, what does this spike up and almost instantaneous down in the Twitter stock price tell us about the company. An interview on July 30th on Bloomberg radio with hi-tech analyst Brian Wieser of Pivotal Research Group made several telling observations. At its heart, the question is whether Twitter will ever be more than a niche company, serving a certain number of users who find benefit in it. The target of comparison is Facebook and, indeed, Twitter is said to be obsessed about benchmarking itself to Facebook. The problem is that Facebook seems to be moving inexorably forward towards establishing itself as a social media platform. It is reported that the average Facebook user is on the site for over 40 minutes a day. Together with the extraordinarily high number of Facebook users world-wide, that is music to the ears of advertisers, of whom more and more turn to Facebook as a first port of call.

Compare this with Twitter. It reported that it has slightly more than 300 million users, a respectable number—if you are a niche social media service. The attractiveness of Twitter as an advertising opportunity is, however, more limited, and one wonders whether just the passage of time can ever ameliorate the situation. Add to this an anecdotal observation by this Kat. He has four fully grown Kittens, with whom he is in nearly daily contact. Facebook is frequently mentioned in conversation; Twitter has never once been uttered. So we end where we began—does Twitter have a long-time future?

Thursday, 30 July 2015

Best thing since sliced bread -- or even better? Report praises IPEC litigation option

This Kat's excitement about the possibilities for IP litigation at the bargain basement end of the market was stirred up when, in England and Wales, the Patents County Court ("PCC"), was first reformed, reconfigured within the High Court and then rebranded as the Intellectual Property Enterprise Court ("IPEC"), with its Enterprise Judges and its Small Claims Track. Could the IPEC really be the best thing since sliced bread, he wondered -- apart from sliced toast, that is.  This excitement has been shared by some of the litigants themselves, notably photographers who previously generally found copyright infringement litigation far too expensive to make it worth the effort. an example of this can be enjoyed in a blogpost on the 1709 Blog, "Small claims triumph as aerial photographer routs flagrant infringers", here, posted on 15 April and the most frequently-visited item on that blog in the past three years.

Excitement, however, is not enough, says Merpel: what we need is some evidence that the IPEC is a good place to litigate. Well, Katfriend Luke McDonagh, together with some scholarly friends of his own, has been doing some research. Luke, some readers may have spotted, has a serious interest in IP litigation and drew attention to this in providing the information for a PatLit post, "Patent litigation in England and Wales 2007-2013: is it a predictor for UPC behaviour?" which you can read here.

Luke has just told this Kat about a 53-page UK Intellectual Property Office-commissioned report, Evaluation of the Reforms of the Intellectual Property Enterprise Court 2010-2013, published yesterday and accessible via this link.

In this report, which I co-authored with two economists, Christian Helmers and Yassine Lefouili, our task was to examine the impact of the 2010­-2013 reforms undertaken at the former PCC, now the IPEC. The primary aims of the reforms were to streamline litigation procedures and reduce litigation costs, and thereby increase access to justice for IP litigants, particularly for individual claimants and SMEs who had previously found the PCC an expensive and unwieldy litigation venue. The reforms introduced a number of changes -- staggered over the period 2010-­2013 -- including a cap on recoverable costs and damages, a reduction of the length as well as complexity of court actions, and the reconstitution of the PCC -- a county court -- as the specialist IPEC within the Chancery Division of the High Court.

In our report we assess the reforms both quantitatively and qualitatively. In our quantitative case counts we find that there has been a large increase in the quantity of IP cases filed at the IPEC post-reforms, and via a comparative study of IP cases at the High Court (HC) and Patents Court (PHC) we show that with the exception of patent cases, there has not been a corresponding increase in cases at the higher level.
IPEC has a very positive message for SMEs 
We find quantitative and qualitative evidence that the costs cap and active case management by the IPEC judge have been the most influential reforms with respect to the large increase in cases filed at the IPEC post-reforms. We also note that case filings by SMEs have increased substantially following the reforms, fulfilling one of the key aims of the reforms [Look, everybody, and forget mind all the pompous pontificating  about what's good for SMEs -- here's something SMEs actually need and use]. Importantly, we find that this effect is driven by changes at the extensive (more claimants) and intensive (more cases per claimant) margins of litigation behaviour at the IPEC. Finally, we provide a theoretical model that allows us to gauge the effect of the reforms on those IP disputes that never reach a court. Our theoretical predictions suggest that in addition to encouraging more IPEC case filings, the reforms have had the effect of increasing the quantity of out-of-court settlements as well [this is great news too, for SMEs, anyone locked in legal dispute with them, and for mediation services such as those offered by the IPO itself].
This Kat is thrilled at the import of these findings and hopes that the functional utility of IPEC will continue to flourish.  Merpel hopes so too, and is a little sad when she speaks to friends who have taken professional advice and who have not been told by their chosen professional adviser about the option of suing in the IPEC.

Smith & Nephew seek to go to the Supreme Court and EPO proceedings continue - the war is not over

This Kat does not routinely comment on procedural judgments, but the IPKat has reported so extensively on the ongoing dispute between Smith & Nephew and Convatec, and this case is so fascinating, that on this occasion this Kat feels moved to post on the decision just out (not yet on BAILII but you can read it here).  He criticised the Court of Appeal judgment (here and here), also reported by Jeremy here, and preferred the analysis of the first instance judgment of Mr Justice Birss here.  These judgments related to infringement of Convatec's patent by Smith & Nephew; the validity of the patent had been considered, and the patent upheld in amended form, in earlier proceedings (see here for first instance and here for appeal).

This case concerning silverised wound dressings is not to be confused with a related case between the same parties, noted by the IPKat here. This latter case relates to a similar technology, but without the silver.  Readers interested in that case may wish to know that the decision was upheld on appeal (see here), and that there was a further decision, principally about costs (see here).

Returning to the silverised wound dressings case, infringement turned on the question of what is meant by "1" in the context of a claimed range of 1 to 25%. At first instance, Birss J construed it as meaning a lower limit of 0.95%, meaning that Smith & Nephew's modified process did not infringe, although some experiments conducted to obtain regulatory approval did.  But on appeal the Court of Appeal held that the lower end of the range extended to 0.5%, so that the modified process did infringe.  So what happens now?  That is what today's decision addresses.

Appeal to the Supreme Court
The Court of Appeal has refused leave for Smith & Nephew to appeal to the Supreme Court, because it considered that there is no significant point of general public importance at stake, since it has done no more than apply the established principles of claim construction from Kirin Amgen (Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9) to the case before it.  However, Smith & Nephew have stated that they will seek leave to appeal from the Supreme Court, and the Court of Appeal has recognised that the Supreme Court may take a different view.

Proceedings at the EPO
Merpel & nephew
There are ongoing opposition proceedings at the EPO relating to the same patent EP 1,343,510, which have taken a rather complex course.  The Patent was granted on 19 May 2010. On 18 February 2011 Smith & Nephew filed a notice of opposition. The opposition proceeded to an oral hearing and, in its written decision issued on 21 December 2012, the Opposition Division upheld the Patent with claims in an amended form corresponding to the amended claim held valid by Birss J in the Patents Court at [2012] EWHC 1602. Both Smith & Nephew and ConvaTec appealed against this decision. Oral proceedings took place before the Technical Board of Appeal (the “TBA”) in November 2013 and the written decision was issued on 29 January 2014. The TBA held the Patent invalid for lack of inventive step. However, it then remitted the case to the Opposition Division for consideration of the admissibility and allowability of various auxiliary requests. A further oral hearing took place before the Opposition Division in October 2014 and it issued its decision on 16 December 2014. It declined to admit further evidence upon which ConvaTec sought to rely and revoked the Patent. ConvaTec have now appealed against that decision.

Both sides claim that they will eventually prevail in the opposition.  They have also offered different views of the likely timescale for the proceedings to be finally concluded.

Stay of injunction and delivery up
Convatec has sought an injunction to restrain further infringement by Smith & Nephew and an order for delivery up of infringing product. Whilst accepting that Convatec is in principle entitled to this relief, concerning the timing, because of the possibility of appeal to the Supreme Court, and the possibility that the EPO Board of Appeal might uphold the revocation of the patent, the Court of Appeal has decided:
We have therefore come to the conclusion that the injunction should be stayed pending the decision of the Supreme Court in relation to the application for permission to appeal or, if later, the decision of the TBA. For like reasons we also grant a stay of the order for delivery up or destruction. We grant these stays on the basis that Smith & Nephew undertake to continue to press for expedition of the TBA hearing and to prosecute their application for permission to appeal to the Supreme Court with all due diligence. We would make it clear that, subject to any further stay which the Supreme Court may grant, we do not envisage this stay extending beyond April 2016. We therefore give the parties liberty to apply to a single judge of the Patents Court of the High Court should that appear likely.
There are fairly complex submissions on costs, because on the one hand Convatec has ultimately prevailed, and so is in principle entitled to its costs, but on the other hand Smith & Nephew argue that Convatec withdrew at a late stage a large part of some aspects of their case in respect of which Smith & Nephew had incurred substantial costs, which were wasted because of the withdrawal.  Holding that Convatec's behaviour was not unreasonable, but recognising that some wasted costs were incurred, the Court of Appeal ordered Smith & Nephew to pay 60% of Convatec's first instance costs and 86% of their appeal costs.

This Kat is no more able than the Court of Appeal to predict the outcome of the EPO proceedings, but it does seem that maintenance of the revocation of the patent is at least a possibility, in which case these protracted UK proceedings will have been entirely vitiated.  This makes him sad.  On the other hand, he would dearly love the infringement case to go the Supreme Court so that we can finally find out what "1" means.

Given, taken away -- then Given back: when is a method of presenting information patentable subject matter?

The design of graphical user interfaces has seen huge innovations with the advent of the touch screen. The next wave of innovation in user interface design is imminent with the virtual reality and augmented reality revolution that requires a whole new way of interacting with machines. Whether innovations in user interface design are patentable in Europe is another question, however. Art. 52(2)(d) European Patent Convention excludes "presentations of information" "as such" (the famous last paragraph of art. 52) from patentability, and that often presents an obstacle in obtaining patents for interface designs.

Whether an innovation exhausts itself in the presentations of information is not always obvious. In a decision of 26 February 2015 (published in May), the German Bundesgerichtshof tackles the question in the context of a medical device. The reasoning has ramifications far beyond medical devices, however, and is relevant for the patentability of any user interface design.

Given Imaging Ltd, Israel, had obtained a European patent (EP 1 474 927 B1) for a method and system for displaying a series of images obtained from a capsule swallowed by a human and travelling through the gastro-intestinal tract. Claim 1, the method claim, reads:

A method for displaying an image stream, the method comprising:
1.1 receiving images acquired by a swallowable capsule (40),
1.2 the images forming an original image stream; and
1.3 displaying simultaneously on a monitor (300) at least two subset image streams,
1.4 each subset image stream including a separate subset of images from the original image stream.

Fig. 2 from the patent showing the monitor illustrates the method. The BGH construed the claim such that "original image stream" means that the images are displayed in the order they were taken, resulting in a movie-like display if the images are displayed quickly enough. The subsets created preserve the original order. They may be overlapping. The "swallowable capsule" was not under the physicians control any more once it had been swallowed.

The unnamed plaintiff brought a nullity suit alleging a number of grounds for nullity. The Federal Patent Court declared claim 1 for invalid for lack of inventive step. On appeal, the BGH reverses.

While the findings on inventive step are very much tied to the specific prior art and shall not be addressed further, the Bundesgerichtshof makes some interesting remarks regarding the exclusion of "presentations of information as such" from patentable subject matter. Not patentable is the presentation of specific information to influence human cognition, such as highlighting important information by visual clues. However, the features 1.3 and 1.4 of the defended claim 1 (which differs from the granted claim 1) one did not simply present information as such (cons. III 2 b aa (4)):
"Features 1.3 and 1.4 concern the problem of displaying an ordered stream of images - irrespective of its content - such that the user is able to comprehend it quickly and efficiently. Such teachings, which concern the (visual) presentation of information, but do not focus on its specific informational content or its presentation in a certain format, but rather take into account the physical characteristics of human perception and reception of information and are aimed at allowing, improving or making more practical the perception of the presented information, are a technical solution to a technical problem and must be considered in the assessment of inventive step."
I know that was a long sentence. German is such. But it is an important one: whenever the patentee can argue that the presentation of information is "content neutral" and takes into account the physical characteristics of human perception ("die physischen Gegebenheiten der menschlichen Wahrnehmung"), the presentation is technical in nature and to be taken into account in the assessment of inventive step. This should not be so hard - there are a great many features of human perception clever UI design will exploit, especially in the virtual reality domain.  Considering the "presentational features" in the assessment of inventive step will often make the difference between a valid or invalid patent, as this case shows - the BGH, taking features 1.3 and 1.4 into account when assessing inventive step, upheld claim 1.

Decision X ZR 37/13 of 26 February 2015 - "image stream"

Je t'aime ... Moi non plus: Can Jane Birkin actually require Hermès to rename the Birkin bag?

Happy times: Jane Birkin with a Birkin bag
Like all icons, also the iconic Birkin bag has a history that is a mix of chance and inspiration. 

As explained by the relevant Wikipedia entry, it all began in 1981 when Hermès chief executive Jean-Louis Dumas was travelling next to actress and singer [how to forget this?] Jane Birkin on a flight from Paris to London. Ms Birkin had just placed her straw bag in the overhead compartment of her seat, when the contents fell to the deck. She told Mr Dumas how difficult it was to find a weekend bag she liked. 

Apparently this plea for (fashion) help was irresistible to Mr Dumas, who in 1984 created a black supple leather bag for Ms Birkin, based on a 1982 design.

What happened next is history, as there is probably no fashion enthusiast who is unaware of what a Birkin bag looks like, and how exclusive it is to own one.

Nonetheless, after PETA released a video and launched a petition against the use by Hermès of crocodile- and alligator-skin accessories a few weeks ago, yesterday Ms Birkin released the following statement

"Having been alerted to the cruel practices endured by crocodiles during their slaughter for the production of Hermès bags carrying my name …, I have asked Hermès Group to rename the Birkin [apparently not the Birkin as such, but only the croco version] until better practices responding to international norms can be implemented for the production of this bag."

Bag of discord
While Hermès also issued a statement in which it promised to investigate further the farm implicated in the PETA video, one may wonder whether from a legal standpoint this iconic French fashion house may be actually required to change the name of its equally iconic bag. 

Besides possible contractual arrangements in place between Hermès and Jane Birkin, could IP law play any role?

Based on a quick search on TMview, Hermès successfully applied to register 'Birkin' as a French trade mark in Classes 16 and 18 of the Nice Classification back in 1997. 

One question that may arise at this stage is whether the fact that the person after which a certain good is named no longer wishes to be associated with it can represent a ground, eg misleading use, for revocation of the relevant trade mark.

Among the grounds for revocation, Article 12(2)(b) of the Trade Mark Directive includes the situation in which a trade mark, in consequence of the use made of it by its proprietor or with his consent in respect of the goods or services for which it is registered, is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Although the list in Article 12(2)(b) is not exhaustive, it would appear that mere subsequent lack of endorsement from a person after whom a certain good is named may not be sufficient to have a trade mark revoked.

And here's the new,
timeless Lady IPKat
This would be so especially on consideration that Jane Birkin appears to have never been actually involved in the design and/or production of the Birkin bag. Similarly to other instances, eg the Mulberry Alexa (named after Alexa Chung) or Dior's Lady Dior (named after Diana Spencer) [see here for further examples], the Birkin bag was not the result of a collaboration between Hermès and Jane Birkin.

And even if this had been the case, perhaps it would not make much difference either.

In its decision in Elizabeth Emanuel [not just Lady Diana's very romantic wedding gown designer, but also owner a relevant Community trade mark who had assigned it, together with her business, to a third party] the Court of Justice of the European Union held in fact that, even if the average consumer might think that Elizabeth Emanuel was still involved in the design of the relevant goods even after the assignment of her business and trade mark, this would not be misleading as to the nature of quality of the relevant goods. As such, it would not be sufficient to have a trade mark revoked on grounds that its use is misleading.

All in all, it would appear that - besides asking - Jane Birkin could not really request Hermès to rename the Birkin bag, whether as such or even just its croco version.

But what do readers think?

Wednesday, 29 July 2015

500 and counting: websites blocked by order of UK courts

People write about court orders that require internet service providers (ISPs) to block access to websites that contain or offer unlawful content; they praise them, they criticise the presence or absence of safeguards -- depending on their political preferences -- and they read the small print in the hope of finding loop-holes or inspiration. Not many people count them though. This is where our good friend, former guest Kat Darren Meale, comes in.  Darren, who currently sits as a Deputy District Judge and holds the title of Managing Associate with law firm Simmons & Simmons, has blown the dust of his abacus and actually totted up how many websites British browers aren't supposed to be able to reach any more.  This is what he writes:
Access blocked! 500 sites so far-- and more if you count all the mirrors and proxies
This note about blocking injunctions provides at the end what I hope is a very helpful link for those of you interested in this subject. I used to be able to count the number of websites blocked by UK ISPs by order of the High Court on one hand, but I couldn’t do that with all my digits nowadays unless I was an Illacme plenipes (warning, link contains bugs). 
By my count there have now been at least 121 websites blocked by ISPs in the UK as a result of s.97A of the Copyright, Designs and PatentsAct 1988 and s.37(1) of the Senior Courts Act 1981. The blocks cover BitTorrent trackers; streaming sites; websites selling counterfeit products; and Popcorn Time sites. Music, film, sports matches, luxury goods and eBooks are protected. The burden on the ISPs is ever growing. 
A complete list of the blocks, and the judgments and orders which granted them, is hard to find. The UK ISP Court Orders website, registered to internet service provider BT, has a good list. There are also lists on the websites of BT's competitors Sky and Virgin Media. I could not find one for EE.  TalkTalk, however, has what appears to be the most comprehensive. 
In addition to blocking the main sites which have been the subject of blocking injunction applications, ISPs are also required to block mirror and proxy versions of the sites, as and when they arise and are notified by rights holders. TalkTalk’s list, which includes at least some of these sites as well, has 500 different sites listed. For, one of the first eBook websites to be blocked, TalkTalk lists at least 13 domains, including,,, and
The ultimate block?
As might be expected, all of these lists are consumer-, not lawyer-focused, so I have created my own more legal-friendly list, with links to all of the freely available law reports and a few words of commentary on each. You can access it here, on the Simmons & Simmons’ elexica website – and I will endeavour to keep it up to date as the jurisdiction continues to rise. 
Thanks, Darren, says this Kat. It's very public-spirited of you to do this.  Readers, please feel free to contact Darren if you find any blocked sites that aren't on his master list. Just email him here. Oh, and if you find that some of these sites have somehow become unblocked, you may as well tell him too. There might just be a spot of contempt of court for someone to be worrying about ...

You wouldn't steal a car: Criminalisation of IP

With recent and possible changes to IP crime laws, your Katonomist turns her third eyelid to criminalisation and the economics of crime.  

Criminalisation throws up a number of questions. Do existing laws cover the area to be criminalised?  (For example, trade secret theft in the US is often covered by wire fraud laws.) Will criminalisation have the desired effect on incentives?  Is it an appropriate use of police and public resources? Does harm exist? Is there a victim?  How do magnets work?

It is easy to compare criminalisation of IP infringement to violent crime, and question the allocation of public resources.  Instead, compare IP crime with white collar crime.  The last 15 years of white collar crime, from Enron, to the wonderfully named Madoff, and our current Fifa, have highlighted the billions that white collar crime can cost. A lot. Yet Golan suggests criminalisation of white collar crime over-deters otherwise desirable business activities, conflates blameworthiness with imprisonment and increases social costs, among others.  This of course, assumes that IP infringement can be considered white collar crime and that the impact is analagous.  So where does that leave us? 

Turning to the economics of crime, the famous economist (yes, economists have heroes) Becker argues that the optimal murder rate is not zero.  All crime cannot be prevented. It would be far too costly to prevent all murder.

In addition to the sheer resource costs of preventing all crime (anyone seen The Minority Report?), there are also civil liberties to consider. The amount of invasion of privacy required to prevent all IP infringement would be intolerable. So we are stuck with some infringement.

Crime is rationale.  Becker argues that criminals respond to incentives as they weigh up the costs and benefits of crime. Increased punitive measures increase the costs of crime to criminals.  This cost-benefit analysis is based on expected costs and benefits (known as expected utility).  This associates the probability of getting caught with the costs of getting caught.  Becker and evidence suggest that, for online copyright infringement, increasing this probability is more effective than increasing fines or other punishment.

Here is an example of the criminal's analysis; assume the following:
  1. Probability - there is a probability (p) that I will be caught and found guilty
  2. Costs - being found guilty costs me fines (f)
  3. Benefits - infringement provides me benefits and utility (U) 
  4. Income - infringement saves me money and increases my income (y)
C'mon it's economics, doesn't have to be practical!
Some squiggly lines of the criminal's calculation of the expected utility of infringement:

So, the expected utility of infringement = the probability and costs of getting caught + the probability and benefits of not getting caught.

If expected utility is positive, then the infringer becomes a hardened criminal.  If expected utility is negative, then the infringer stays cute and fluffy.

To nudge criminals to not infringe, you either increase p or f. That is, you either increase the likelihood they'll get caught and found guilty, or you increase the fine or punishment.

(N.B. If you're struggling with saving money equating to increasing income, assume that income would have decreased have they purchased non-infringing goods.  So the 'savings' of infringement 'increase' income.)

Still with me? Police priorities are reportedly shifting as budgets are cut, so it is unlikely a lot of resource will be devoted to investigation of online IP infringement. That means that increasing the probability of being caught may not be feasible. Instead, criminalisation f for copyright infringement could be provide the intended deterrent.

Yet, with private copying quashed, it could be a slippery slope for the average consumer and would be infringer.  Maybe format shifting is a gateway drug into the dark, sordid world of online copyright infringement.

UK's consultation on "equalising the maximum custodial sentence for online and physical copyright infringement" closes August 17th, here.
UK IPO reports on online infringement, criminal sanctions and enforcement here and here.
An interesting previous post on IP & Criminalisation here.

Do you need permission to link to freely accessible content? The 2015 Toronto Games website appears to think so

Do you need permission from the relevant copyright owner to link to his/her content?

This question has been haunting European (to say the least) minds - and possibly also hearts - at least since the Court of Justice of the European Union (CJEU) issued its 2014 decision in Svensson [Katposts here], in which it held that:

"[T]he provision on a website on a website of clickable links to works freely available on another website does not constitute an ‘act of communication to the public’ as referred to in [Article 3(1) of the InfoSoc Directive]".

This is so because such an act, whilst being an act of communication, would not be also an act of communication to a 'new public', ie "a public that was not taken into account by the copyright holders when they authorised the initial communication to the public". 

As such, it would not satisfy both conditions required under Article 3(1) of the InfoSoc Directive.

There is probably no need to recall that the notion of 'new public' has generated a fairly heated debate in the aftermath of Svensson, with the Association Littéraire et Artistique Internationale (ALAI) holding the view that such criterion would be contrary to international law and scholars like Prof Jan Rosen (Stockholm University) suggesting that national judges should disregard it [here]

In all this, following Svensson the CJEU issued two further decisions on the topic of linking and copyright, these being BestWater [here, concerning framing of videos] and C More Entertainment [here, on linking by means of paywall circumvention], whilst a third case is currently pending. This is the so called GS Media case [or, suspecting that it might prove slightly more popular, Playboy case], concerning whether linking to a source that is freely available on a website but which communicates to the public without the consent of the copyright holder should be qualified as an act of communication within Article 3(1) of the InfoSoc Directive.

Whilst waiting for the outcome of the latter, via Katfriend Norman Siebrasse (University of New Brunswick) comes the news of a fairly interesting approach recently taken in Canada by the Toronto 2015 Pan Am and Parapan Am Games.

Until very recently the Terms of Use of the Toronto Games website stated in fact the following:

"Links to this Site are not permitted except with the written consent of TO2015™. If you wish to link to the Site, you must submit a written request to TO2015™ to do so. Requests for written consent can be sent to TO2015™ reserves the right to withhold its consent to link, such right to be exercised in its sole and unfettered discretion."

Now the Terms appear to have changed [possibly following some online mocking?], in the sense that they state the following:

"Other sites may link to the Site with or without our authorization, and we may block any links to or from the Site. Your use of third party websites and resources is at your own risk.
The use of or embedding of content from this Site is not permitted except with the written consent of TO2015™. Requests for written consent can be sent to TO2015™ reserves the right to withhold such consent, such right to be exercised in its sole and unfettered discretion."
Whilst any insights from Canadian readers would be very welcome as to the correct approach under Canadian law, do these Terms make sense from a EU/post-Svensson perspective?
Readers might remember that one of the episodes of the Post-Svensson Stress Disorder Katseries produced with fellow blogger Alberto was indeed devoted to discussing whether non-compliance with the terms of use of a certain website by means of linking to relevant content could constitute an act of communication within Article 3(1) of the InfoSoc Directive, on consideration that such content could not be 'freely accessible'. 
Katexclusive: here's one of the pictures
leaked in the Playboy case
At that time we concluded in the negative on this point (whilst also expressing the view that a future CJEU decision should clarify this very issue). Relying especially on paras 26 to 28 of the Svensson judgment, contractual restrictions relate to uses that follow the moment of the initial communication. The public targeted by the initial communication would consist of all potential visitors to a certain site that does not adopt any restrictive measures. As such, the 'new public' requirement would not be likely met and hyperlinks to that site, whilst being acts of communication, would not be to a new public.
It would appear that the 2015 Toronto Games site has adopted a different view and, although the language of its Terms has changed, the substance has remained pretty much the same, especially considering that links to the site may still be blocked. In fact how can the latter be enforced if not on copyright grounds and by means of relevant takedown requests to be submitted to the likes of Google, Facebook, Twitter, etc?
Similarly to embedding, also mere linking to content on the Toronto Games website appears to be considered something subject to the exclusive control of the relevant copyright owner. But is it so simply because the terms of use require one to seek and obtain permission first?
Hopefully when the CJEU decides the Playboy case it will shed some light on the important issue of whether contractual restrictions may determine whether a certain act falls within our outside the scope of Article 3(1) of the InfoSoc Directive. 
Hopefully the Court - unlike SvenssonBestWater and C More Entertainment - will also seek the Opinion of an Advocate General first. 
Hopefully, hopefully ... Too much hope?

Gama v Pal: those wipes -- and a sidebar poll

Yesterday morning the IPKat posted this item on a procedural issue relating to amendment of pleadings in a passing-off action, Gama Healthcare Ltd v Pal International Ltd.  The blogpost featured a couple of illustrations that were not featured in the Lawtel note from which this Kat sourced his blogpost.  At the bottom of the post, the Kats explained:

The ... the illustrations ... were the closest to similar packaging that this Kat could lay his paws on via a Google Image search. If anyone has more confusingly similar images, do please share them.
The Kats have since received, via an anonymous benefactor, the following illustrations. The one on shown above, right, is the packaging of the claimant, Gama; on the left is the packaging of the defendant Pal. Might you be confused into picking the package on the right, mistaking it for the package on the left if you didn't have them both in front of you?  Whether you are a hospital or health authority purchasing officer, a private purchaser or a person being wet-wiped, the Kats are running a sidebar poll which will enable you to answer this question.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all. 

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