Archive | 2013, July | (3) posts

Birthday musings: Designing design strategy

Earlier this year, the community design celebrated its tenth birthday. On 1 April 2003, the first community design was registered in Alicante and since then more than 690,000 designs have been registered. The yearly filings increase by a rate of no less than 78,000 a year.

I think it’s fair to say that the community design has been a roaring success. For the past ten years, it has been possible to obtain a registration with very little trouble. The unitary nature means that a single, central application is all that’s needed to obtain protection in all 28 member states, and that protection is automatically extended to new member states as they join. Further, protection through this system is cheap, and most registrations can be obtained in as little as two or three days.

What could be better?

Alas, it is common knowledge that there is no such thing as the perfect system. As the community trademark is growing up and closing in on its teenage years, it is starting to meet with competition from the younger Hague System, which can be seen as a parallel to the Madrid Protocol for trademarks.

The Hague System allows for centralized design registration internationally, and more and more countries are starting to join this system. It is rumored that both China and the USA will join by the end of this year, which would make the Hague system a heavyweight when it comes to the battle between registration systems.

So what are the differences between the two systems, and which should you choose?

The most obvious difference is the scope of protection. The registered community design covers only the EU-member states. So if your interest lies outside of the community, you would be well served to consider using the Hague system instead.

Another difference, which is certainly worth taking into consideration when planning your design strategy, is the number of reproductions allowed in the respective system.

The reproductions are the bread and butter of the design registration, as they define the right itself.  Currently, an applicant is limited to just seven views of the design in question if the application is filed through OHIM. Further, the only accepted format is still pictures or drawings. It is worth mentioning that South Korea now allows film clips as part of the registration, and that this is one possible way in which the community design might look at improving itself.

The Hague System on the contrary imposes no such restrictions on the applicant, allowing a potentially unlimited number of reproductions of the same design, as long as they are filed electronically. This allows for a much more thorough description of e.g. designs with moving parts, allowing you to show the design in several positions.

On the other hand, the WIPO sets the limit for the number of designs allowed in one application to one hundred, where the OHIM has no limit on how many designs are allowed per application.

The fee systems are also different, and which solution works out cheaper depends on the number of designs to be filed under the same application, the geographical extent and whether or not publication should be deferred.

These discrepancies give rise to a number of important questions when it comes to choosing the right design registration strategy. What kind of business are you, and what are your needs? Do you intend to file multiple applications at once, or will you file for single design registrations a few times a year? How complex are your designs? Can they be adequately described in just a few pictures? Or are you intent on protecting not just the whole, but every single detail? What is your budget like? And of course, what are your key markets?

All of these questions form part of the bigger picture when designing the best possible strategy for any given applicant. You are – of course – welcome to contact one of our experienced attorneys if you would like our input on how to optimize your design strategy.

Mette Bender, Attorney at Law

 

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The dark side of the Internet

On Friday the 14 June 2013 we participated in a seminar arranged by the Danish PTO in corporation with the Confederation of Danish Industry on the topic “IP infringements online”.

The seminar aimed at discussing how to protect against infringement of one’s IP-rights on the Internet, and moreover a discussion of counterfeit, its extent and the seriousness about being aware of it. Several interesting speakers gave their view on the different issues under this topic.

The first speaker was David Shore, Director of Global Security EMEA at Pfizer. He gave a very interesting speak on counterfeit in relation to medicines, and the danger and consequences of buying such. He gave several examples from Pfizer, and their strategy in discovering and unraveling of some parts of the major counterfeit business within medicines.

Nikolai Bisgaard from GNResound also shared his experiences as Vice President of IPR & Industry Relations. He described a specific case, where GN Resound discovered that someone was copying one of their products. The case ended with court proceedings in China, and Nikolai Bisgaard explained the many challenges and immense formalities faced by GN Resound in the process of this lawsuit. Moreover he highlighted the importance of registering trademark rights in all countries where these are used, as trademark rights are “easier” to defend, as there is well developed practice within the trademark area in contrast to the unregulated Internet.

Erling Vestergaard, Vice Public Prosecutor, also gave a speak on the criminal fight against IP infringements on the Internet. He explained about the scanty practice within this area in Denmark. He only highlighted copyright cases, as this is the only area within IP where Denmark actually has practice regarding IP infringements on the Internet. He stressed the fact that the Danish legislation is not accommodated to the Internet. According to Mr. Vestergaard our laws have simply not developed in pace with the Internet and the extent of it.

What stood out as a main point from this seminar was that the global reach, openness, versatility and unregulated character of the Internet creates both a great place for marketing and easy access to consumers, but it also creates an obvious place for trademark abuse. In other words, the Internet has a very dark side as well. The non-material damage an infringement can cause a trademark is often much worse than the loss in turnover. Sale of counterfeit goods under a trademark can lead to the dilution of this through a false association of the trademark and goods not originating from the owner of this trademark. Therefore is it crucial to protect these rights.

There were several questions from the attendees. One of the start-up companies asked David Shore and Nikolai Bisgaard as being representatives from established companies, what they would recommend in order to prevent infringements on the Internet. Without any doubt the speakers answered that registered trademark rights formed the best basis to prevent infringements. 

Based on our experience, we fully agree with the reply from the speakers and therefore take this opportunity to stress the importance of having registered trademark rights in all the countries where you intend to use your trademarks. This gives you a right that is recognized, and a right which can be enforced. Moreover, we at Awapatent can assist you in navigating through this complex web of rules, and by forming an online trademark protection strategy. We can assist you in monitoring and surveilling your trademarks through our knowledge and access to specialized online trademark monitoring services.

As something new Awapatent also offers registration and monitoring of trademarks in Trademark Clearinghouse in relation to the new top level domains (TLD). Read more about this service here.

Henriette Vængesgaard Rasch, Attorney at law

Maria Dam Jensen, Associate

An attempt to clarify what an embryo is

What is really meant by the term ”human embryo” as used in Article 6(2)(c) of the Biotech Directive (98/44/EC)? Are parthenotes to be considered as embryos and what is meant by “capable of commencing the process of development to a human being”?

Following an appeal by International Stem Cell Corporation (“ISCC”) against a decision that the subject matter sought protection for in two related applications is excluded from patentability as it relates to human stem cell, the UK High Court has referred a question to the Court of Justice of the European Union (“CJEU”). The subject matter of these patent applications relates to human embryonic stem cells (hESCs) isolated from oocytes activated by parthenogenesis, which is the initiation of embryogenesis without fertilization through the activation of an oocyte by artificial means in the absence of a sperm.

During normal embryonic development, the first few cell divisions give rise to cells that are totipotent (capable of differentiating into both embryonic and extra-embryonic tissues, such as the placenta). Already when the embryo consists of 100-200 cells and makes up a hollow sphere called the blastocyst, the developmental potential of a central group of cells called the inner cell mass has become restricted to embryonic tissues (pluripotent), while the outer layer of cells gives rises to extra embryonic tissues.

Scientific studies have shown that parthenotes of several species, which in contrast to fertilized embryos only contain maternal DNA, cannot develop to term. This is because paternal DNA is required for the development of extra embryonic tissues necessary for normal embryonic development. In particular, human embryos have been shown not to develop beyond a blastocyst-like structure. And, in contrast to a fertilized ovum, in the first few cell divisions after activation the cells of a parthenote are only pluripotent, not totipotent.

The CJEU gave guidance in the Oliver Brüstle v Greenpeace case (C-34/10) as to what is the correct interpretation of Article 6(2)(c), saying that the concept “human embryo” must be understood in a wide sense. Accordingly, “any human ovum must, as soon as it is fertilized be regarded as a human embryo since fertilization is such as to commence the process of development of a human being”. Also, any artificially manipulated ovum capable of commencing the process of development of a human being just as an embryo created by fertilization must be regarded as a “human embryo”.  Hence, any human ovum after fertilization, any non-fertilized human ovum into which the cell nucleus from a mature human cell has been transplanted and any non-fertilized human ovum whose division and further development have been stimulated by parthenogenesis constitute a “human embryo” within the meaning of Article 6(2)(c).

In the case at hand, ISCC argued that it was necessary to establish what the CJEU meant by “capable of commencing the process of development of a human being”. According to ISCC, the question is whether it means “commencing a process of development which leads to a human being” or whether this applies also to processes that are incapable of leading to a human being. ISCC submitted that the test adopted by the CJEU was clearly directed at the first alternative and therefore their inventions should not be excluded from patentability as their embryos never develop past the blastocyst-like structure. They argued that CJEU incorrectly assumed that parthenotes were capable of commencing the process which leads to the development of a human being. ISCC also pointed to the reasoning of the Bundesrichtgehof following the ruling of the CJEU in Brüstle, interpreting the CJEU judgment as permitting the use of hESC derived from non-viable embryos.

The Comptroller General of Patents (the UK patent office) argued that the test applied by the CJEU might refer only to the start of the process of development and did not require its completion and the birth of a viable human being. In doing so, he pointed for example to the phrase “as soon as fertilized”, as well as to similarities between early development of parthenotes and viable embryos. However, the Comptroller agreed that it was unclear whether the Brüstle test turned on commencing the process of development, or commencing the process capable of creating a viable human being.

The Deputy Judge decided a further reference was justified, based on the different factual matrix (the evidence before the CJEU was that parthenotes have the potential to create a human being whereas in the present data was presented showing that this is not the case) combined with the insufficient clarity of the test applied by the CJEU in Brüstle

Like the Advocate General in Brüstle, the Judge considered that a distinction should be made between totipotent cells and pluripotent cells. He emphasized that parthenotes and fertilized ova are not identical at any developmental stage. In his view, if the process of development is incapable of leading to a human being, as in the case of parthenotes, then it should not be excluded from patentability as a “human embryo”.  Also, the Judge repeated well known concerns of the biotech industry and academia and concluded with stating that the total exclusion from patent protection of the fruits of stem cell research would be “to the detriment of European industry and public health”. 

It appears as if the last word on stem cell patenting has not been said…  

Joanna Applequist, Associate

The question to be referred:

“Are unfertilized human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilized ova, contain only pluripotent cells and are incapable of developing into human beings, included in the term “human embryos” in Article 6(2)(c) of Directive 98/44/EC on the legal protection of biotechnological inventions?”

The case:       International Stem Cell Corporation v Comptroller General of Patents, Patents Court, London, UK, 17 April 2013, Case No. [2013] EWHC 807 (Ch)

Link:             http://www.bailii.org/ew/cases/EWHC/Ch/2013/807.html