For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 15 April 2014

Tuesday Tiddlywinks

Authors Guild files appeal against Google. Do you remember the Google Books copyright litigation saga? As this Kat reported back in December, it is still far from being concluded. Following the late 2013 summary judgment ruling in which Judge Denny Chin held that Google's activities were to be considered as fair use of copyright-protected works within Section 107 of the US Copyright Act [see here and here], on Friday last the Authors Guild filed its appeal before the US Court of Appeals for the Second Circuit. As reported by Publishers Weekly, in its appeal the Authors Guild is arguing that Judge Chin's ruling was deeply flawed and relied on an “unprecedented, expansive and erroneous interpretation of the fair use doctrine.” Watch this space for further developments!

Back in the UK, here's a sad Easter story. Would you deny a 3-year child the pleasure of having his first name iced on a chocolate Easter egg? Apparently this is what happened to little Rooney Scholes. A neighbour of his went to the Bury's Thornton store looking for a treat for the child, and asked to have his first name iced on a chocolate Easter egg. The store managers refused, on grounds that Manchester United hero Wayne Rooney could sue them for "copyright" infringement. Eventually, little Rooney got his Easter egg, but only because the neighbour consented to having his surname added onto the egg surface. This Kat has the slight suspicion that this story has nothing to do with copyright, but is nonetheless a further demonstration [do you remember the British Library story?] of how often our beloved copyright is used to scare people off with no apparent reason. As to other possible IP grounds, eg trade mark law, they look equally ... groundless.

Can this be true? This Kat was truly shocked when she read on Twitter yesterday (courtesy of @Cgarciaberned) that a new study funded by a coalition of music, film, publishing and videogame companies has found that 84% of content consumed in Spain is from unlicensed sources. This actual "big" data comes at a time when Spain is reforming its IP regime, as Katfriend Fidel Porcuna (Bird&Bird) explained a few weeks ago.

Around the weblogs. On The 1709 Blog Jeremy reports on EU external competence to negotiate copyright protection treaties and the recent Opinion of Advocate General Sharpston in Case C-114/12 European Commission v Council of the European Union. On Class 46 former guest Kat Laetitia tells a story of cows and cream fudge, while on Art and Artifice Simone reports of how priceless art has been recently discovered in a San Francisco storage facility.

Venue for Post-Fordham Copyright Catch-Up. As Jeremy announced last month, on 6 May the Post-Fordham Copyright Catch-Up event will take place. The venue for this seminar will be the lovely London offices of Olswang LLP. There are still places available, and you can register here.

A summer school in Moscow. From 30 June to 4 July 2014 the National Research University - Higher School of Economics will be hosting the International Summer School on Cyber Law "in a beautiful green area in Moscow". The School is covering accommodation costs and meals of selected participants. Further information is available here.

Threateners don’t fret, your concerns may just have been met…

A peculiarity of intellectual property law is those provisions which make it actionable in itself to threaten bringing infringement proceedings against another party. These provisions, which apply to claims of trade mark, patent and design right infringement (but not copyright), are often a bee in the bonnet of the litigator, forcing him or her to deploy ingenious tongue-twisting language to dodge an unlawful threats bullet. Help is at hand. Following earlier reports here, comes news from Julia Jarzabkowski, a fellow Deputy District Judge but more pertinently the lead lawyer at the Law Commission considering reform in this area. Julia has exciting news to report:
“The Law Commission has published its report on the groundless threats provisions for patents, trade marks and design rights today, 15 April 2014. It was clear from consultees' responses that there is an appetite for reform and a desire that this happens sooner rather than later. Contrary to our usual practice the report does not include a draft bill; we hope that an early opportunity can be found to introduce legislation to enact new provisions on groundless threats to cover patents, trade marks and design rights (registered and unregistered).
Our recommendations will make the law clearer, easier to follow and apply, and will ensure that the protection against threats is more consistent between the rights. We consulted on two models for reform. The first, which enjoyed overwhelming support, builds upon the changes made for patent law in 2004. We recommend that the majority of those reforms should also apply for trade marks and design rights. The second model we proposed was to replace the existing provisions with a new cause of action for making false allegations in the course of business; it is loosely based on the Paris Convention. Overall, consultees felt that this was too big a change for the immediate future, but many recognised the long-term benefits such a reform would bring. Although our recommendations will tackle the most pressing problems in the law they do not deal with the more fundamental issue of the uneasy relationship between national law and the enforcement of European and Community IP rights (both current and future). For that we believe that wider reform may eventually become necessary.
We have made a total of 18 recommendations, some are quite detailed. These are the headline reforms:
Dealing with the "Cavity Trays" problem and intended acts: The principle that a threats action cannot be brought for threats that refer to particular acts gave rise to the "Cavity Trays" problem, which is that threats that stray beyond this restriction remain actionable. This was solved for patents. A threats action cannot be brought where threats to sue are made to those who have carried out the excluded acts, even where any other act is referred to. We recommend the same fix for trade marks and design rights. We have gone further to recommend that this also applies to threats in respect of intended acts. This will allow a rights holder to move quickly against those who are likely to inflict the greatest commercial damage.
Legitimate communication with secondary actors: Consultees wanted a "safe harbour" within which rights holders and those who act for them could communicate with secondary actors who would ordinarily be able to rely on the threats provisions. It was clear from responses that the current law obstructs legitimate communication, even where disputing parties are obliged to make contact. This can make compliance with the obligations imposed by the Civil Procedure Rules like navigating a minefield. We recommend that communication will be permitted where there is a legitimate commercial purpose behind it, for example, where contact is made in order to track down the source of the infringement or to remove an innocence defence. We also recommend that the legislation provides guidance through examples and in the form of a non exhaustive list as to the kind of information that may be communicated. As a check on abuse this exclusion from liability for making threats will only apply where the person seeking to rely on it has reasonable grounds for believing that the information communicated is true.
Professional adviser liability: As professional advisers are sometimes made painfully aware, liability for making threats to sue is not limited to the rights holder. Advisers, even when acting on clients’ instructions can be jointly liable for threats. This can cause problems, not least that this allows the threats provisions to be used tactically against advisers (obviously not by anyone reading this). Advisers may act more cautiously or ask for an indemnity. As a consequence the task of explaining to a client an already complex area of law can become even more onerous. We recommend that a lawyer, registered patent attorney or trade mark attorney should not be liable for threats when acting in their professional capacity and on clients’ instructions.
We have been greatly helped throughout this project by so many people who have been generous with their time and energy. We would like to take this opportunity to offer our warm thanks. The full report, an executive summary and the consultation responses are available at on our website:”
These all look like sensible conclusions – in this Kat’s humble opinion – and they are likely to be welcomed by practitioners and rightsholders.
Merpel has never heard of “Cavity Trays”, but Google tells her they are something to do with damp proofing. Never one to turn down a warm, dry shelter to snuggle down in, Merpel is giving this one a claws up.

Here's a link directly to the report page.  

UPDATE - Declaration on Patent Protection by MPI Now Online

Blogmeister Jeremy reported yesterday that the Max Planck Institute for Innovation and Competition was about to issue a Declaration on Patent Protection.  Hearty Katpat to Kat Emeritus and ongoing Katfriend Matthias Lamping for alerting the IPKat to it.

The text is now posted on the MPI website at

You can sign the Declaration as a Supporter by emailing Matthias Lamping as indicated at the above link.  The list of supporters will be indicated here.

Monday, 14 April 2014

Another two bite the dust – Hospira v Genentech

The IPKat has just been perusing the meaty yet compact decision in the case of Hospira v Genentech (Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 (Pat) (10 April 2014)) which came out last Thursday from Mr Justice Birss.  It concerns two patents, related only in that they both concern the antibody trastuzumab, more famously known as Herceptin (RTM), which is used for the treatment of breast cancer.  Other than that they are quite different, the first EP 1 210 115 being concerned with a dosage regime, and the second EP 1 308 455 with a purified composition.

EP 1 210 115
Claim 1 was as follows:

Use of the anti-ErbB2 antibody huMab4D5-8 [trastuzumab]
in the manufacture of a medicament for use in a method for treating a human patient diagnosed with a breast cancer characterized by overexpression of ErbB2, 
said method comprising the steps of 
administering intravenously to the patient an initial dose of 8mg/kg of the anti-ErbB2 antibody; and 
administering intravenously to the patient a plurality of subsequent doses of the antibody in an amount that is 6 mg/kg, wherein the doses are separated in time from each other by three weeks.

This claimed treatment regime involves an 8mg/kg loading dose and subsequent doses of 6mg/kg on a three weekly schedule. This regimen can be summarised as 8 + 6 q3w [don't you just love those pharmacist abbreviations, says Merpel - apparently the "q" stands for "quaque", meaning "every"].

Was this not the skilled team you were looking for?
This was held to be obvious over the prior FDA-approved treatment regime of 4 + 2 q1w.  The clinician, it was held, would consult with the pharmacokinetics expert and decide to go ahead with a trial of a three-weekly dosing schedule and select the claimed doses.

In the alternative, if the claim was not obvious, then the judge would have considered the patent invalid for insufficiency, because “the skilled team would not conduct a clinical trial of the claimed three weekly dosing regimen based on the information in the patent read in the light of the common general knowledge”.

EP 1 308 455
Claim 1 was as follows:

A composition for therapeutic use comprising a mixture of anti-HER2 antibody and one or more acidic variants thereof,
wherein the amount of the acidic variant(s) is less than about 25%,
and wherein the acidic variant(s) are predominantly deamidated variants wherein one or more asparagine residues of the anti-HER2 antibody have been deamidated,
and wherein the anti-HER2 antibody is huMAb4D5-8 [trastuzumab],
and wherein the deamidated variants have Asn30 in CDR1 of either or both VL regions of humMAb405-8 converted to aspartate,
and a pharmaceutically acceptable carrier.

This patent was about purifying trastuzumab so that it contained mainly only one acidic variant, namely one in which the asparagine residue at the 30 position had been deaminated (hydrolysed) to aspartate, and that in an amount of less than “about 25%”, which was agreed to mean less than 24.5%.  It is noteworthy that the claim was not limited to any particular method, but claimed the product as such.

This was held to lack novelty over a prior Genentech PCT application PCT/US96/12251 ("Andya") which was published as WO 97/04801.  In particular a specific formulation disclosed therein, which the judge found to be enabling, in which 82% of the protein was native trastuzumab, so that the maximum level of acidic variants was 18%, was held to anticipate the claim.

The claim was also held to lack inventive step having regard to “Waterside” - prior art consisting of slides presented at a conference by Reed Harris from the Analytical Chemistry Department of Genentech.  Other inventive step attacks were rejected.

Finally, for good measure, a declaration of non-infringement was granted to Hospira in relation to this patent, since the levels of acidic variants were outside the range.

The judgment records that “Both patents were opposed in the EPO. In both cases the Opposition Division has held the patent is invalid. Both are presently under appeal before the Technical Board of Appeal.”  The upshot of the case is that, subject to any appeal in the UK, Hospira has cleared the way to sell generic trastuzumab after the supplementary protection certificate (SPC/GB04/015) based on the basic underlying patent held by Genentech on trastuzumab (EP 0 590 058) expires on 28th July 2014.

#HappyKat event: materials and webcast recording now available

Luca followed the #HappyKat
event from Italy (GMT +1)
IPKat readers will of course remember our #HappyKat event that was held on 1st April last at the lovely London offices of Bristows LLP [a big thanks for hosting us, and a special thanks to Zuleika Walsh for her wonderful work].

Although it is still unclear whether online copyright plus enforcement equals happiness, it was a most enjoyable day, wonderfully and wittily chaired by blogmeister Jeremy [to whom - and all our Jewish readers - we wish a lovely Passover]. We had enthusiastic speakers – as well as attendees - who shared their experiences, knowledge, wisdom, love and/or misgivings for online copyright enforcement. 

As the over 600 people [!!] who watched it online know, the event was also live streamed, and the recording of the webcast is now available here and here for everybody to watch and re-watch.

Also brave Max followed the event,
but he was in a slightly
more challenging time zone: HST
The highest number of hits came from the United Kingdom, followed by Italy, Switzerland, Russia, Sweden and Colombia. This Kat notes with pleasure that this may only mean that - similarly to the Oscars night - the topic of online copyright enforcement is of global interest, no matter the time zone where you happen to be located.

Besides the recording of the webcast, also the presentations and materials of the speakers are now available. Here they are: 

"Don't blame TRIPS for poor provisions of national IP law", say MPI and friends

The IPKat has known for a while that his friends at the Max Planck Institute for Innovation and Competition, together with a number of eminent patent scholars from elsewhere on the planet, have been working on a Patent Declaration on the interpretation of TRIPS for the past couple of years [says Merpel, this is why they have been wandering around with solemn countenances which send out an "I'm-up-to-something-really-important" message ...].  The Declaration hasn't quite been launched yet –- that happens tomorrow -- but in the meantime we have a taste of things to come, via former guest Kat Matthias Lamping (currently a Senior Research Fellow at the Max Planck Institute). Matthias has kindly given us sight of the press release that trumpets the publication of the Declaration. This is what it says:
20 Years WTO/TRIPS: Experts Show: Problems of the Patent System are Home-Made

Patent law is omnipresent in the business news of today. One record number of patents issued follows the next. At the same time, the public consciousness is occupied by ‘patent wars’ between Smartphone manufacturers, massive demonstrations against the perceived greed of pharmaceutical companies or the patenting of tomatoes, animals and even parts of the human body. At the time of its introduction, the patent system was not without controversy either. However, is it now at the brink of collapse? What are the problematic issues -– are they to be found in international law? 40 patent law experts from 25 countries deliver answers. In the ‘Declaration on Patent Protection’, published in connection with the 20th anniversary of the WTO, they demonstrate the manner in which the international legal order leaves ample space for differing designs of national patent systems and how this flexibility promotes economic growth and social welfare.

On April 15, 1994, the community of states entered into an historic agreement of international law. With the establishment of the World Trade Organization (WTO) they responded to the globalization which had been rapidly progressing since the 80s. The WTO is based on three pillars, the General Agreement on Tariffs and Trade (GATT), the General Agreement on Trade in Services (GATS) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). By incorporating the major international treaties on intellectual property at the time, the TRIPS Agreement became the benchmark for national IP systems practically overnight ['practically overnight' is the way it might look if viewed through the binoculars of 2014, but it was a long, long process while it was actually happening, notes this Kat, who was alive at the time ...]. Today, the WTO has 159 member states, including all industrial nations and upcoming economies such as China and Russia, in addition to a number of developing and emerging countries. 
In the two decades since, the perception of intellectual property’s importance and function has changed substantially. It did not take long for the Internet to reveal the darker sides of copyright law. In contrast, the drawbacks of the patent system have only recently come to light. Nowadays, the patent system makes headlines for the disputes it generates instead of for the innovation it promotes. Smartphone manufacturers like Apple, Microsoft and Samsung engage in litigation wars and try to drive each other out of the market. Pharmaceutical companies are accused of blocking, or at least delaying, the market entry of generics in order to maintain high prices for their blockbuster drugs. So called ‘patent trolls’ have come into the spotlight for buying up entire patent portfolios -- not to manufacture their own products but to extract licensing profits by blackmailing alleged infringers. Not all industries are equally affected by these phenomena, but there is a general perception that patents are increasingly used for strategic purposes rather than to protect innovation [it's regrettable that IP is consistently subjected to analysis in simple binary terms. For example, patents can be used both for strategic purposes and to protect innovation]. 
Disappointment awaits those who expect to find the potential damage of such dysfunctional patent uses reflected in the debates about international law. Most developed countries vehemently advocate strengthening patent protection even more. However, these efforts are now met with considerable resistance [curiously, little reference is made in these disputes to the presence and the efficacy (of lack of it) or otherwise of the antitrust and competition law provisions which may be used to neutralise abuses caused by over-strong IP protection]. Roughly two years ago, the Anti-Counterfeiting Trade Agreement (ACTA) raised the level of public awareness in this regard. This secretly negotiated agreement led to a global outcry and resulted in a wave of public demonstrations across the globe. 
The success of such resistance was remarkable. Several legislators, including the European Parliament, have rejected ACTA. However, this victory was rather limited in scope. The world’s attention has now been turned to the Trans-Pacific Partnership (TPP), which is currently being negotiated –- still secretly, but this time without the participation of the EU –- between the Unites States and a number of other countries. In addition, there are several other, often equally intransparent, bilateral negotiations going on. Patent law is often a subject matter of these negotiations. In exchange for trade concessions in other areas like textiles or agriculture, developing countries are being persuaded to implement high standards of patent protection which are often not in their interest. Such standards may even prove detrimental to the long-term development of national innovation capacities and may therefore ultimately only serve export interests of trading partners. 
Intellectual property is not merely a third-world problem. It is a global challenge. As important as the legal certainty resulting from exclusive rights may be in maintaining investment incentives, the very same rights can cause immense harm if protection becomes excessive and thereby compromises effective competition or other public interests. Thus it is vital to achieve the appropriate scope of legal protection. More protection does not necessarily lead to more innovation. Patent law does not merely function to serve the interests of inventors and right holders. It is a regulatory institution. 
It is often claimed that international law requires a high level of patent protection and leaves little policy space for pursuing national public interest goals. In a ‘Declaration on Patent Protection” a renowned group of patent and international law experts prove this assertion to be inaccurate. In particular, the experts declare that international law permits many measures which are essential to a sustainable patent system. The hostility shown to the TRIPS Agreement by many developing and emerging economies is often owed to a failure to recognize the actual flexibility afforded by the Agreement with regard to the design and application of national law [bravo, cheers this Kat, who has been saying this for years ...]. 
The Declaration on Patent Protection was drafted under the auspices of the Max Planck Institute for Innovation and Competition in Munich. It is the result of two decades of intensive research. In brief and clear manner, the Declaration indicates the interpretive scope of TRIPS norms. Overall, the Declaration remains neutral – it is neither directed at states with a specific level of development nor does it aspire to provide recommendations for legal action. It only points out the regulatory discretion that national legislators enjoy when it comes to implementing their own patent systems. In the end it is up to the individual state to choose the option that best suits its national socio-economic situation.

The Declaration on Patent Protection supplements the existing research work of Max Planck Institute for Innovation and Competition. Six years ago the Institute published a Declaration on a ‘Balanced Interpretation of the Three-Step Test in Copyright Law', which deals with limitations and exceptions to copyright protection and has received worldwide attention. Both Declarations are flanked by ‘Principles for Intellectual Property Provisions in Bilateral and Regional Agreements’, in which the risks of unbalanced free trade agreements (FTAs) are pointed out and recommendations are given with regard to the definition of negotiation mandates, negotiations as such as well as the interpretation and implementation of FTAs.
Roll on tomorrow! Let's see the details. Then we can start to discuss them in earnest ...

Hi Hotel: CJEU rules on copyright jurisdiction, Merpel floored by long sentence ...

Taking photos of buildings is
easy: they don't keep moving
around ...
Oh what a tangle the single European market remains in, when we have a single market in which pan-European and national IP rights coexist and in which enforcement can depend more on the accident of geography than on any meaningful correlation between the act done and the consequence of doing it. A good example is Case C‑387/12, Hi Hotel HCF SARL v Uwe Spoering, a reference for a preliminary ruling from the German Bundesgerichtshof, the Fourth Chamber of the Court of Justice of the European Union (CJEU), which had to address a set of the sort of facts that crop up surprisingly often in real life but which generally don't get litigated on account of the expense, inconvenience and uncertainty inherent in them.

Back in February 2003 Uwe Spoering, a photographer, took 25 transparencies of interior views of various rooms in the Hi Hotel in Nice.  He licensed Hi Hotel to use the photos in advertising brochures and on its website. As usual, and needless to say, there was no written agreement to spell out the terms of use. Hi Hotel paid 2,500 euro for the photographs, following receipt of an invoice that stated, a little mysteriously, ‘include the rights — only for the hotel hi’.

Hi Hotel, Nice
Five years later Spoering noticed in a bookshop in Cologne an illustrated book with the title Innenarchitektur weltweit (‘Interior Architecture Worldwide’), published by Berlin publishing house Phaidon-Verlag.  This book contained reproductions of nine of the photos he had taken for Hi Hotel. Considering that Hi Hotel had infringed his copyright by passing them on to a third party, Spoering sued Hi Hotel in Cologne, seeking injunctive relief and damages. Hi Hotel questioned the basis for the action.  After all, Phaidon also had a place of business in Paris. Maybe it was to Phaidon's French office that Hi Hotel could have made the photos available, and that the French Phaidon then passed them on to its sister company in Berlin -- in which case the passing of the photos to a third party would have taken place in France, not Germany.

Book, also nice ...
The trial court upheld Spoering’s claim; Hi Hotel then appealed unsuccessfully. However, on a further appeal on a point of law, the Bundesgerichtshof had its own doubts as to whether the international jurisdiction of the German courts might be established on the basis of Article 5(3) of Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. In its view, the international jurisdiction of the German courts under Article 5(3) must be examined on the basis of the assumption that the German Phaidon infringed copyright by distributing the photographs Germany and that Hi Hotel assisted it in so doing by handing them over to Phaidon in Paris. To be on the safe side, the Bundesgerichtshof decided to stay the proceedings and referred the following question to the Court for a preliminary ruling:
‘Is Article 5(3) of Regulation … 44/2001 to be interpreted as meaning that the harmful event occurred in one Member State (Member State A) if the tort or delict which forms the subject-matter of the proceedings or from which claims are derived was committed in another Member State (Member State B) and consists in participation in the tort or delict (principal act) committed in the first Member State (Member State A)?’
Last week, while this Kat was clearly looking in the other direction and missed it completely, the CJEU ruled thus:
'Article 5(3) ... must be interpreted as meaning that, where there are several supposed perpetrators of damage allegedly caused to rights of copyright protected in the Member State of the court seised, that provision does not allow jurisdiction to be established, on the basis of the causal event of the damage, of a court within whose jurisdiction the supposed perpetrator who is being sued did not act, but does allow the jurisdiction of that court to be established on the basis of the place where the alleged damage occurs, provided that the damage may occur within the jurisdiction of the court seised. If that is the case, the court has jurisdiction only to rule on the damage caused in the territory of the Member State to which it belongs'.
Er, does that mean "yes" or "no", ponders Merpel.

Saturday, 12 April 2014

Commission publishes responses to Public Consultation on the Review of EU Copyright Rules

Getting ready for an intense weekend of ...
copyright reading?
Would you fancy some reading this weekend? 

Of course, you will remember the Public Consultation on the Review of EU Copyright Rules [here], which the Commission launched back in December and closed on 5 March last. 

Although the official numbers have not been published yet, this Kat saw on Twitter [disclaimer: not an official EU law & policy source (yet)] that the Consultation appears to have attracted 11,117 responses [Merpel wonders how many responses the Commission expected, since initially the Consultation was scheduled to remain open for just two months?]

A task-force of 15 zealous people is also rumoured to have dealt with them [this would mean that each person has taken care of over 740 responses: can that be true?] 

You bet!
Yesterday the Commission made part of responses [the replies of those who asked to remain anonymous are not published] available [for the response of UK Government and its analysis see here] and divided them between those of registered contributors and non-registered contributors. The responses of the latter are sub-divided between those of users and other stakeholders.  

The summary results should be published soon, even if it is most likely that when that time comes EU copyright enthusiasts will have already read and memorised all the available responses.

What's next anyway? As this Kat's favourite Commissioner, ie Michel Barnier, tweeted back in February, the Commission is planning to release a White Paper [this should be in June] aimed at identifying solutions to the problems emerged from the Consultation where and if problems exist.

Friday, 11 April 2014

The moose, loose in the non-use hoose

Emerging from the busyness of hearing preparation, this Kat has now found a moment to tell you about a clever little loophole just closed by OHIM (the Office for Harmonisation in the Internal Market) which previously made it possible to defeat (in part at least) an attempt to revoke a Community trade mark (CTM) despite it never having been used.
For those who don't get the tenuous
reference in the title, scroll down
Under European trade mark law, you either use it or you lose it – once a mark has been registered for five years, it becomes liable to revocation if it has not been put to genuine use in the Community (see Article 51 of the Community Trade Mark Regulation).
However, in certain circumstances it is possible to “convert” a CTM into a series of national trade marks, in fact up to 26 of them – one for each Member State of the European Union (well, there are 28 states, but Belgium, the Netherlands and Luxembourg are covered by a Benelux mark). Your CTM ceases to be and you – once you jump through the right hoops in each local jurisdiction (see Section 8 of this OHIM document) – end up with a number of separate national registrations. The converted national registrations retain the same filing and priority dates as the CTM but, as they are only registered once the conversion process is complete, will be given new registration dates.
As a result, while a proprietor of a CTM who finds itself up against an earlier right holder in perhaps one Member State may lose its CTM, it can retain the same level of protection on a national level in the other Member States, or at least those of interest to it.
So far as registrations are concerned, conversion is available where the proprietor has chosen to surrender its CTM or has not renewed it. It is also available where the CTM has been declared invalid by OHIM or a Community trade mark court or revoked other than for non-use. Conversion is also available in the case of a CTM application where the application has been refused or withdrawn or is deemed to be withdrawn, or where the CTM ceases to have effect. See here.        
If you don't recognise this scene,
I guess you weren't around in the early 90s... 
Conversion is not available where a mark has been revoked for non-use. However, under the old practice, if your mark came under attack for non-use, you could simply surrender it and then convert. It was possible to do this while the non-use revocation action was pending, or even after losing at first instance provided that an appeal had been filed. The result would be a series of national applications, which once registered would be given a new registration date. The upshot is that despite your CTM being revoked, you end up with a series of new national marks which cannot be challenged for another five years.
Take this example. Teller-Morrow Automotive registers a CTM for JAX in respect of motorcycles in 2002. It makes no use of the mark for 12 years. Business rival Charming Heights, Inc. applies to revoke the mark for non-use. Knowing its mark is at risk, Teller-Morrow Automotive surrenders the CTM, converts in fourteen Members States and obtains new national registrations with 2014 registration dates. These JAX marks are now invulnerable to non-use attack until at least 2019.
OHIM’s got wind of this and isn’t impressed. Its new practice is as follows. Once non-use cancellation proceedings are underway, any attempt to surrender the CTM by the proprietor will be put on hold. The applicant for cancellation will then be asked if it wants to continue its action notwithstanding the surrender. If it does not, the surrender will go ahead and the proprietor can convert as before. If the applicant does wish to proceed, the cancellation proceedings will run to their conclusion. Only then will the surrender be allowed to go ahead, and only in respect of those goods and services which survive the non-use attack.
I'm half way through Season 5. It's brutal.
In my example above, Teller-Morrow Automotive’s surrender would be suspended. If Charming Heights, Inc. wanted to maintain its action, it would (given the complete non-use) end up revoking the CTM and there would be nothing left for Teller-Morrow Automotive to convert.
To any proprietors with CTMs vulnerable to non-use attack – if you are thinking about converting in light of a possible cancellation attack, don’t wait until your rival commences it. You’ll be too late.

Juice loose aboot this hoose here.
With apologies for the lack of mooses (meese?) in this post.

Patent exhaustion:"Patent-by-patent" or "claim-by-claim"?

This Kat has long wondered why it is that so many basic legal issues with respect to third-party uses of an IP right are still unsettled. Let’s take patent exhaustion. True, the creation of the European Community/European Union has added a layer of complexity because of the separate principle of free movement of goods. Still, the basic notion of patent exhaustion would seem to be simply expressed—a patent owner is not allowed to control use of a product, by seeking to assert patents rights in the product, once there has been an authorized sale. Against this backdrop, the act of patent exhaustion occurs countless times daily all over the world. And yet, despite this ubiquity and the deceptively simple notion upon which it rests, courts continue to wrestle with legal questions that one would have thought had long been resolved.

A decision given by the Federal Circuit Court of Appeals in October 2013, Keurig, Inc. v Sturm Foods, Inc., here, is an excellent example (this Kat thanks les Nouvelles, the journal of the Licensing Executives Society, for drawing his attention in its March 2014 issue to this case.) Is exhaustion to be determined at the patent-by-patent level, or at the claim-by-claim level? In particular, when the patent contains both apparatus and method claims, does exhaustion apply to the patent taken as a whole, or should a distinction be made between the apparatus and method claims? In this case, the patentee produces a single-serve device for the brewing of coffee. To make that perfect cup of coffee, the user needs to insert a cartridge into the brewing device. Hot water is then run through the cartridge, resulting in a cup of coffee for the user. Employing a version of the razor blade business model, the patentee sells both the brewing device and the cartridges. The defendant sells only cartridges, which are compatible for use with the brewing device. Two of the patentee’s patents contain apparatus claims regarding the brewing device. As well, these two patents contain method claims, which relate to the way that a person make a cup of coffee using the device.

The patentee alleged that the use of the defendant’s cartridge to make a cup of coffee using the brewing device directed infringed several of the method claims in the two patents. The patentee also alleged that the defendant was liable for inducing infringement as well as contributory infringement. The defendant countered that all of the patent claims, including the method claims, had been exhausted upon authorized sale of the brewing devices. The trial court granted summary judgment in favour of the defendant, and the plaintiff then appealed the decision to the Federal Circuit, which affirmed the decision of the lower court.

Focusing on the argument that exhaustion must be evaluated at the claim-by-claim, rather than the patent-by-patent level, the court rejected the plaintiff’s position, as follows:
“Keurig sold its patented brewers without conditions and its purchasers therefore obtained the unfettered right to use them in any way they chose, at least as against a challenge from Keurig. We conclude, therefore, that Keurig's rights to assert infringement of the method claims of the '488 and '938 patents were exhausted by its initial authorized sale of Keurig's patented brewers. To rule otherwise would allow Keurig what the Supreme Court has aptly described as an "end-run around exhaustion" by claiming methods as well as the apparatus that practices them and attempting to shield the patented apparatus from exhaustion by holding downstream purchasers of its device liable for infringement of its method claims — a tactic that the Supreme Court has explicitly admonished. [citation omitted]. "Such a result would violate the longstanding principle that, when a patented item is `once lawfully made and sold, there is no restriction on [its] use to be implied for the benefit of the patentee.'" Id. (quoting Adams, 84 U.S. at 457).
Not so fast, however. One of the three judges, Judge Kathleen O’Malley, here, while concurring with the result reached, dissented on this part of the court’s decision. She reasoned in relevant part as follows:
“The conclusion that the rights to the asserted methods were exhausted by the brewer sales in this case does not, however, depend upon whether exhaustion should be assessed on a claim-by-claim or patent-by-patent basis. Keurig's patent rights covering normal methods of using its brewers to brew coffee would be exhausted by the sale of the Keurig brewers, regardless of which patent or patents contain the relevant apparatus and method claims. Thus, the majority's conclusion that exhaustion should not be assessed on a claim-by-claim basis is dicta. To the extent it could be characterized as anything other than dicta, I must dissent from that conclusion. There could be instances where assessing exhaustion on a claim-by-claim basis — the same way we conduct almost every analysis related to patent law — would be necessary and appropriate. "[E]ach claim must be considered as defining a separate invention." Jones v. Hardy, 727 F.2d 1524, 1528 (Fed.Cir.1984). "Because patent claims are independent of each other, it stands to reason that the legal doctrine of patent exhaustion should apply on a claim-by-claim basis." Amicus Br. of Boston Patent Law Ass'n at 7. Thus, to the extent the majority purports to lay down a blanket rule affecting cases with facts that diverge widely from those we consider today, I must dissent.”
So what are we to make of the court’s ruling on this point, given the dissent? This Kat’s head is a bit dizzy from trying to decide whether the issue of “patent-by-patent v claim-by-claim” is obiter under the circumstances of the case. In this regard, however, the judge offers no examples to aid in understanding her position, simply relying on several disembodied quotes (one taken from the amicus brief filed by the Boston Patent Law Association). Moreover, it is not at all clear whether the judge really means that the majority’s ruling on this issue is dicta or rather she objects to the articulation of a black and white rule. Is the question of “patent-by-patent v claim-by-claim” simply irrelevant when ruling on exhaustion, or was reliance on the distinction by the majority simply unnecessary under the circumstances? If the latter, an example or two should have been included to demonstrate when “facts that diverge wide from those we consider today” might be relevant to support a “claim-by-claim” analysis for exhaustion.

Circling back to the beginning of this Kat post, the question remains—what is it in the jurisprudence of IP with respect to third-party use that seems to leave such seemingly basic legal questions unresolved, especially when they relate to commonplace behaviour? One thing for certain, the result in the Keurig decision has not helped as much as one might have liked in resolving the “patent-by-patent v claim-by-claim” issue.

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