Archive | 2013, June | (5) posts

Infringement – Gangnam Style

In our line of business we deal with protection of intellectual property, ranging from purely technical issues to art. Sometimes you come across matters which cater for a more, err, acquired taste….

A couple of years ago the Danish political party the Conservatives used the tunes to the song “Afrika” written by the Danish singer and composer Nanna Lüders. The party wrote their own lyrics and made an artistically very doubtful performance at their annual convention. Their fellow party in Government at the time, Venstre, equally used a song called “Sunshine Reggae” by Laid Back. Venstre actually did the right thing and asked the owners of the song for permission. And got a no. And still used it. Both political parties had to pay heftily, Venstre especially as they had been in (very) bad faith.

Seen from the chair of an IP-advisor this is noticeable as these infringements are made by the very members of Parliament who pass the laws on protection of rights. One of the active vocal performers was the appointed Minister for Cultural Affairs…

It is ever more bizarre to see a head over heels repetition. Recently four mayors from four municipalities on the Danish island of Funen decided to promote their region in order to attract business. This was done by adding new lyrics to the K-pop hit “Gangnam Style” and also using bits of the actual hit too. And by the mayors dancing “Gangnam Style.”The result was a bizarre music video which did get enormous viral attention. In this respect they achieved their goal. Although this writer has to remind himself that even bad publicity is still publicity. It also got the attention of Universal Music, owner of the rights to the original hit and the recording.

Today it is hard to find the video as Universal Music has requested its removal from channels such as Youtube. It is still available here: http://www.youtube.com/watch?v=51DuOq8GeZM though with the infringing bits replaced by enthusiastic applause. See it and enjoy. Or cringe – and please bear in mind that these people were elected not for their dancing and singing skills.

On a more serious note there is little doubt that this is an outright infringement. And there is little doubt that there will have to be compensation paid. Infringements like this happen on a daily basis but of course it should call for worrying attention when the politicians or even MPs commit them. But after all, to err is Human.

At Awapatent we still have deep faith in humanity, ingenuity and the arts. If only humanity would check with its IP-advisor before becoming too creative.

Thorbjørn Swanstrøm, Trademark and Design Attorney, Attorney at Law, Partner

Myriad patent claims on breast cancer genes invalidated by US Supreme Court

In a decision on 13 June, the highest court of the USA, the US Supreme Court, said the final word in the highly publicized “gene patent” case involving Myriad Genetics. The decision is available here. See our previous reports on this case here, here and here.

In brief, a group of plaintiffs wanted the courts to invalidate Myriad’s patents on the breast cancer susceptibility genes BRCA1 and BRCA2. The matter has been going through the various federal court instances since 2010, and is now finally settled.

The US Supreme Court, in their unanimous decision yesterday, held that claims to naturally occurring DNA are not allowable as a matter of principle. In other words, it is not a patentable invention to isolate such DNA, regardless of the effort involved or the practical benefits of these efforts. However, DNA that is further modified such that it is no longer identical to the DNA occurring in nature, is not barred from patentability.

The decision was somewhat expected, judging from the public discussion about the case during the last six months, and especially from the oral hearing in the Supreme Court on 15 April this year. This, however, does not mean that it will not have a great impact.

It is still too early to know the full consequences of the decision. It is, however, clear that the established legal landscape of 25 years or so, making DNA patents possible, has been radically altered, and that many thousands of granted patents on genes are now essentially worthless. In other words, any business depending on the exclusivity for a naturally occurring sequence will be adversely effected by the decision.

Apart from casting doubt on many settled expectations, the court decision also opens the door to future questions concerning the validity of patents to other naturally occurring molecules. What, for example, is the situation concerning naturally occurring proteins, such as hormones and enzymes? Many biopharmaceutical products in this category have been brought to the market based on patents for the products, patents motivated by their isolation and industrial application.

Another aspect of the case is that international harmonization of patent law, in particular between the US and the European Union, has suffered a setback. In the EU, the directive on legal protection of biotech inventions (98/44/EC) expressly permits, in Article 5(2), the kind of patents now prohibited in the US.

Niklas Mattsson, Partner and European Patent Attorney

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The 5th China IP Counsel Congress 2013

Recently  almost two hundred people, mostly IP in-house counsels, but also IP attorneys, met in Shanghai for the 5th China IP Counsel Congress 2013. I participated in this conference for the second year, this time together with my colleague Lars Nilsson.

The conference included several very interesting presentations. Most of the speakers were from the Chinese IP community, such as Chinese companies already working actively with IP protection, but a few of us were from abroad. The topics varied; from IP development trends to local policies in Shanghai supporting companies that protect innovations through IP and the way Chinese companies may act to prevent and solve patent disputes. I contributed by introducing the Chinese participants to some important aspects that should be taken into consideration when filing and prosecuting patent applications in Europe.

It is clear that the interest in intellectual property is growing in China – both for foreign companies that are active in China but also very much so for domestic Chinese companies. This was demonstrated by the many questions that were asked during the presentations, and also by the discussions going on during the breaks.

As was repeated several times during the conference, it is no doubt that the previous saying “Made in China” has been replaced by “Invented in China”.

The conference also provided many good opportunities for networking with new and old contacts.

Lars and I spend a few additional days in Shanghai, meeting with people from the local IP community. From these meetings it is clear that the importance of intellectual property – in China and abroad – is increasing for Chinese companies.

Maria Stenbäck, Partner and European Patent Attorney

I have seen it on TV… so it must be true

Once upon a time most of us believed that everything seen or told on television was true … and still news and programs from the national television stations in Denmark are perceived as trustworthy sources. The credibility is actually so important that others try to exploit it.

Many of you may have seen the Danish television documentary program “KONTANT”. In May 2013 this program showed how easy it is to be tricked – you believe that you take part in a free competition, but actually you commit yourself to a subscription for products such as weight loss pills etc. The aim of the program was to warn people against these kinds of tricks and subscriptions which are sometimes extremely difficult to get out of.

One of the tricks used by the sales companies is to write “As seen on TV2” or “As seen on DR1” showing the logos of these two Danish television stations. The intention is to make the products more trustworthy. Typically, the products have not been shown on these television stations, nor have the owners of the logos given their consent to the use of the logos according to “KONTANT”. To such extent the use of the logos – or trademarks, actually – may be an infringement.

The Danish trademark law and the EU legislation are very specific at this point. The main rule is that a trademark may only be used by the owner or someone who has a consent to the use of the trademark. However, other parties’ trademarks may be used, if necessary, to inform possible buyers that a certain product fits with another product. This rule is often used in connection with spare parts, but recently it has also been applied in connection with for example accessories for mobile phones, tablets etc.

In my opinion, using the trademarks as described above, is an infringement of other parties’ trademarks provided that no consent is given. The interesting thing is that this is still a rather new variation of infringement and that this is attractive due to the original intention, namely recognition of the trademarks used. Trademarks are valuable assets and owners thereof must take care that this value is kept on their own hands. 

Henriette Vængesgaard Rasch, Attorney at Law 

DK-US Patent Prosecution Highway agreement version 2.0

Patent Prosecution Highway agreement version 2.0 between the DKPTO and the USPTO

Effective from today, 3 June 2103, the PPH agreement between The Danish Patent and Trademark Office (DKPTO) and The US Patent and Trademark Office (USPTO) has been upgraded to what the DKPTO aptly calls a “PPH-agrement version 2.0”.

With the PPH agreement version 2.0 – to this blogger’s knowledge the first of its kind – a significant simplification is introduced. Now, it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

In more detail it is now possible to proceed as follows:

  1. File a first patent application with the USPTO.
  2. File a second patent application claiming the priority of the first application with the DKPTO, and
  3. File a request for examination under the PPH in the US patent application with the USPTO using the result of the examination made by the DKPTO.

Hence, in contrast to the original and now superseded agreement, it is now also possible to use the examination result of the Office of Second Filing to request examination under the PPH at the Office of First Filing. In the original agreement it was only possible to use the examination result of the Office of First Filing to request examination under the PPH at the Office of Second Filing.

Furthermore, it is worth mentioning that with the arrival of June the Indonesian patent office has entered the PPH network by signing a PPH agreement with the Japanese Patent Office.

As always, we shall endeavour to keep our readers updated on further developments.

Link to the DKPTO-USPTO PPH-agreement version 2.0:

At DKPTO: http://www.dkpto.dk/media/20511122/pph2.0_us_filers_03062013.pdf

At USPTO: http://www.uspto.gov/web/offices/com/sol/og/2013/week22/TOC.htm#ref15

 

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent