Archive | 2012, May | (5) posts

The Patent Prosecution Highway expands

I have previously written about the PPH MOTTAINAI agreement, which aims at easing the requirements for requesting patent examinations. The latest news is that the EPO (European Patent Office) entered the PPH MOTTAINAI agreement at the beginning of the year (29 January) and thus the PPH MOTTAINAI agreement has now been signed by a total of nine countries.

With the PPH MOTTAINAI program, two previously strict requirements have been removed: Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

The Intellectual Property Office of the Philippines entering the PPH-network
Furthermore, a number of new PPH agreements with the JPO as one participant have been launched, namely with the Intellectual Property Offices of Taiwan, Portugal and the Philippines; the latter two relating both to the use of national and PCT work products for requesting accelerated prosecution under the PPH.

With these agreements, the PPH-system can be said to have reached a small landmark, as the Intellectual Property Office of the Philippines is the 25th office to join the PPH-system.

Read more about the Patent Prosecution Highway.

Troels Peter Rørdam, European Patent Attorney

Awapatent at the 4th China IP Counsel Conference 2012

On 22-23 May 2012 representatives from Awapatent participated in the 4th China IP Counsel Conference held in Shanghai. The program was very interesting with many different angles on IP, particularly on how to protect your IP in the best possible way.

A representative from the Chinese Intellectual Property Office (SIPO) opened with a speech about the Patent Prosecution Highway (PPH), a topic which raised many questions from the audience. Then it was time for our contribution: Maria Stenbäck explaining how to draft a patent application, which at the same time meets the requirements set by patent authorities in the USA, Europe and China but without becoming too expensive. Not an easy task!

The following break showed that the Chinese are very interested in hearing news from other areas of the IP world and the networking area was very busy.

Chinese speakers from large companies and research institutes then presented topics varying from how to protect your trade secrets to examples of how IP strategies can be used to improve business. It was obvious that a lot is happening in the Chinese IP community.

During the final panel discussion we noted that the frustration sometimes felt by European companies trying to enforce IP rights in China is shared by Chinese companies, but that they experience that things are changing for the better.

Indeed a very exciting visit to China and we hope to be able to participate in future conferences here in Shanghai. 

Maria Stenbäck from Awapatent speaking at the 4th China IP Counsel Conference in Shanghai.

Vibeke Warberg Rohde, European Patent Attorney
Claus Marcussen, Attorney at Law 
Maria Stenbäck, European Patent Attorney

Can counterfeits be legally imported for private use?

“…He wanted a genuine Rolex but they are expensive. So he wanted to make sure that he actually enjoyed wearing one before making the investment. In order to find out he bought the counterfeit watch…”

This very moving quote is from the questioning of the defendant in a recent case in the Maritime and Commercial High Court of Denmark.

As an IP-advisor, one of the tools I urge my clients to use is customs surveillance. It is cheap and easy and often ensures that counterfeit goods do not enter into circulation on the market. Contrary to many other EU-countries, Denmark allows copies if they are for private use. You are, for example, allowed to personally bring home counterfeit goods from a copy market abroad. However, you are not allowed to resell or redistribute the goods.

While the fairness of this rule may be debatable it poses significant difficulties in practice: when is an imported counterfeit for private use? And how many items may you import?

In this case the defendant had purchased a Rolex GMT-Master II watch knowing perfectly well it was a fake. The price of € 8,000 for the genuine article is modest; the fake is around € 450.

Despite the quite accessible rules in the EU-regulation on Customs surveillance it is obvious that the enforcement of the IP-rules requests that there is an actual infringement. On the face of it the Regulation gives Customs the right to bar the delivery of a shipment. No particular size of the shipment is required; in principle any size will do. How does this compare with the Danish rules on the right of private people to own counterfeits? Or purchase these abroad?

Obviously, in this case the Rolex watch is counterfeit and the importer knew this, the shipper did not give any impression that the watch was genuine and the price corroborated this. All parties and the Court agreed on this. So, could the defendant claim that this was exempt due to the right for individuals to own counterfeits for private use? And were Customs correct in seizing a shipment of just one item? A shipment that was obviously for private use.

With a steady hand the Maritime and Commercial Court passed a ruling that this counterfeit product should not be released to the importer, that Customs were right in seizing the shipment and that the defendant had infringed Rolex’s rights.

This is a novelty in Danish Law; the court’s decision is based on the rule on hypothetical manufacture, i.e. could the goods legally be manufactured in Denmark (even though they are not). The court explicitly stated that the exception does not extend to shipments from countries outside the EU. 

This ruling means that there is no longer any difference between shipments for businesses or private individuals. The contents of the exemption are now that this only applies to personal, physical import in you travelling luggage. And provided it is strictly and evidently for private personal use.

This is a significant strengthening of the rights of the brand owners – no question about that. And a consequence of this will also be that legal goods, imported legally but not intended for the Danish market can be barred. This is significant and a break with legal tradition in this field.

The case has been appealed to the Supreme Court and it will be very interesting to see if the Supreme Court agrees to this new principle on hypothetical manufacture or not. Should the Supreme Court follow the appealed ruling, this will be a novelty in Danish Law and a significant strengthening of IP-protection. I shall not fail, dear readers, to follow this case and duly report it when the Supreme Court rules on this.

Thorbjørn Swanstrøm, Attorney at Law

High Court Decision Confirms Low Compensations to Inventors Employed to Invent

Decisions are few when it comes to considering the inventor’s right to compensation in accordance with Section 8 of the Danish Act on Employee’s Inventions (Lov om arbejdstageres Opfindelser). Recently the High Court (Østre Landsret) has passed a decision in U.2012.420Ø, confirming that compensations to inventors employed to invent are low.

In the case in question, a dismissed employee filed a claim with the City Court of Odense against his former employer, claiming compensation for transfer of inventions he had made while still employed. During his employment three inventions were transferred to the employer. The inventions had resulted in two patents and one patent application. His claim was not sustained by the City Court, and the case was appealed to the High Court.

The High Court held that the value of the inventions did not exceed what the employee could be expected to deliver under the terms of his employment, even if one of the inventions originated from an independent project based on the inventor’s own idea. The two other inventions originated from customer’s wishes which the employer, as a traditional customer-driven engineering firm, sought to fulfill for the customers.

The employee was, however, awarded a small compensation for a deficient employment contract, due to the fact that the contract contained a clause according to which the employee was never entitled to any compensation. This is in violation of the mandatory interpretation of Section 8 which states that the employee is entitled to a reasonable compensation, even if something else has been agreed upon.

The High Court decision is well in tune with earlier decisions, e.g. the Supreme Court Decision U.2004.1018H, emphasizing that Section 8 is mandatory, and therefore cannot be dispensed from, e.g. not just because the employer did not claim any compensation at the time of transfer.

Kim Garsdal Nielsen, European Patent Attorney

It’s not the end …

Close to nine months ago twelve eager trainees started an exciting journey. Looking back, they had no idea what they were getting themselves into. I do believe all of them had some idea but none had the same idea and perhaps more importantly no one had the right idea. Bit by bit however, the puzzle became clearer, only to be blurred again by more information, new words, new laws and new guidelines. Strangely, most of these new Associates stayed with the company, and they grew, nurturing from the vast collective information source that Awapatent is.

One interesting aspect of the Trainee programme seems to be to realize that the more I learn – that is, the more I know – the more I realize that I don’t know. Now this can either render a person sad, or as it seems in this case, it may open up for new possibilities, development and opportunities. Because no matter how hard anyone tries there is no end to the growing, learning and continuous education of you, within the area of IP.

We are now closing in on the end of the nine-month long Trainee programme. The irony of it all is that although these twelve Associates realize how much we don’t know, we are now more than willing (we are all eager and anxious) to happily take on the new challenges that the world of IP has to offer us. So in a sense, now is not the end, it’s just the beginning. 

Sandra Lindvall, Associate