Archive | 2013, September | (4) posts

Changes in the Patent Prosecution Highway agreement between DKPTO and CIPO

Effective 30 July 2013, the part of the PPH-agreement between The Danish Patent- and Trademark Office (DKPTO) and The Canadian Intellectual Property Office (CIPO) applicaple for applicants using the DKPTO as the Office of First Filing, i.e. typically Danish applicants, has been changed by the CIPO to have the same requirements as a PPH MOTTAINAI agreement. The PPH MOTTAINAI has been described previously by the Awapatent IP Blog in more detail – see here.

Thus, within one patent family, irrespective of the origin of the priority application(s), it is now possible to use a positive examination result originating from any of the offices with which the CIPO has a PPH agreement to request prosecution under the PPH at the CIPO.

Simultaneously, the part of the agreement applicaple for applicants using the CIPO as the Office of First Filing, i.e. typically Canadian applicants, has been upgraded to a so-called “PPH-agrement version 2.0”.

The PPH-agrement version 2.0, which the Awapatent IP Blog has described previously in more detail here, introduces the significant simplification that it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

Hence, 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.

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

Link to the DKPTO-CIPO PPH-agreement version 2.0:
At DKPTO: http://internationalcooperation.dkpto.org/patent-prosecution-highways/pph-between-denmark-and-canada.aspx
At CIPO: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02163.html

A slip of the pen?

A claim for 90 MSEK worth of damages is being filed today in the Skellefteå District Court by 707 Chilean plaintiffs, who were poisoned by arsenic-containing waste products deposited near their hometown in the early eighties. The defendant, the Boliden mining group, had commissioned a Chilean company to take care of the waste according to best practice at that time. But according to the plaintiff side, Boliden knew that best practice was not good enough – as the background section of their patent application SE8001847-6 reveals:

“The arsenic content of such waste products is often up to 20–40 %, rendering it difficult to safely dump said waste products because of the enormous environmental problems created thereby, even though the prescribed safeguards per se have been taken.”

It will be a crucial point to prove that Boliden’s decision-makers were as knowledgeable about chemical hazards as their patent drafters. A not-unexpected defence – and maybe a successful one – might be to have a patent attorney confirm that patent backgrounds often are very concerned about the shortcomings of the prior art, to draw a flattering backdrop for the invention.

The new claim brings to mind a case (judgment of 27 May 2003 by Bavarian Administrative Court of Appeal in case 5 CE 02.2931) where the holder of European patent EP0236736 requested the German Patent Office not to publish his competitor’s patent DE4332545 unless the competitor removed his disparaging statements about the former’s beverage cans:

“EP0236736B1 … show[s] a tearable lid … These stiffening ribs are however interrupted … so that the achievable stiffening action is more or less lost. Because further the pulling ring is substantially immersed in the U-shaped seam, it is difficult to get hold of the ring with a finger nail …. Yet another drawback is the considerable mechanical tensions in the lid, which develop during manufacture as a consequence of the many seams and deformations, and which lead to undesired displacements in the plate.”

The holder of EP0236736 produced evidence that these statements were much exaggerated. He cited § 4 of the German Act Against Unfair Competition (UWG), by which discrediting statements are an unfair commercial practice.

The court noted that the Patent Office has no duty to scrutinise statements in the background section, so that the public ought to read that section of patent publications with caution. Further, most applicants will want to highlight their invention by stressing the disadvantages of earlier solutions, of course within reason and without downright insulting their predecessors. Moreover, while patent rights may be powerful business tools, the court couldn’t agree that patent publications have a significant commercial impact. This decided the matter and the background section in DE4332545 was left unchanged.

It will be very interesting to see what importance the court attaches to the statements in Boliden’s 1980 patent application.

Anders Hansson, European Patent Attorney, member of Awapatent’s Specialist Team Litigation

Trademark lingo – a hindrance for participation in society?

Swedish media has lately relished in the fact that the language consultants Prodica has made an official complaint with the Parliamentary Ombudsman against the Swedish Patent Office.

The background is that Prodica tried to register the trademark GRAMMATIKDAGEN (the Day of Grammar) for services in class 41, but received an Official Action in which the Examiner of the Swedish Patent Office held that the trademark lacked sufficient distinctiveness for registration. Prodica then complained to the Parliamentary Ombudsman that the language used by the Examiner was contrary to the legal requirement for Swedish authorities to express themselves in a way that is tended, plain and understandable. Prodica went so far as to express that the language used by the Patent Office was a hindrance for participation in the society since it was incomprehensible and thus a bar to obtaining a trademark registration.

The text in question in the official action essentially reads as follows:

“A mark indicating only the nature, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods/services, or the time of manufacture of the goods, or has become a customary designation for the industry does not possess distinctiveness and cannot be registered.”

The Parliamentary Ombudsman, however, has decided not to pursue this complaint. It has stated that even though the text in question can be improved it is not so complicated that it cannot be understood. Furthermore, the Official Action contains the name and telephone number of the Examiner as well as contact information to the customer service of the Patent Office and the applicant can, accordingly, easily get further clarification, if needed.

The Ombudsman furthermore points out that trademark law is a complex legal area and that you need some basic knowledge of the legal field in order to comprehend the text in question. However, basic information on trademark law can be obtained on the web site of the Patent Office.

I am not sure if the web-site info helps very much. Even though I have practiced trademark law for thirty years I sometimes find myself reading official actions more than once in order to fully grasp the intentions and nuances of the communication. As a trademark attorney you are faced with complex language everyday, in decisions, legal texts etc. An important part of my job is to translate the trademark jargon into comprehensive language for my clients.

However, many of these wordings that appear complex to people in general are used to simplify the lives of the experts. By using legal expressions we can make sure that we are clearly understood by other persons skilled in trademark law, such as other trademark attorneys, examiners in trademark offices and judges in courts. The trademark profession is no very different from other professions in this respect. Try listening to a pair of doctors discussing in medical Latin, two mechanics bent over a car engine or two computer programmers discussing how to solve a technical problem in their field. The use of jargon reduces the risk for misunderstandings between experts.

I think that the overall opinion in Sweden is that the communication of the authorities is too complex and hard to understand for people in general and this is certainly the case when it comes to the trademark department of the Patent Office. This needs to change since a large number of the applicants are not trademark professionals. I agree with the Parliamentary Ombudsman, there is room for improvement.

Kristina Fredlund, European Trademark Attorney

Cookyright…? Cookieright…? huh…?

A couple of years ago a successful German chef with a restaurant in Rome called for protection of recipes. And was laughed out. But consider this: over the last ten years cooking has evolved into big business. Television chefs like Nigella Lawson, Jamie Oliver, Claus Meyer, Tim Mälzer, Ernst Kirchsteiger, Gordon Ramsay, Alain Ducasse and Tina Nordström have all become familiar household names – internationally for some or nationally for others. For some television networks and publishers they are a huge export.

So considering this, didn’t the German chef have a point? One of the purposes of IP is to encourage and facilitate development for the benefit of society and economy, and to protect human creativity.

In May this year in New York City local patissier Dominique Ansel put his ingenuity to work and struck a chord with the American sweet tooth: he invented the Cronut, a cross between a croissant and a doughnut. Amazingly, it has quickly become the stuff of legends: the things, of which the patisserie can only produce 200 a day as the process is quite laborious, sells out by 8 in the morning and people are queuing from 6. Black market prices (!) are up to $80 a piece.

© Dominique Ansel (Cronut). © Jeff Glasse (Line)

Mr Ansel has applied for trademark registration for the name CRONUT, which has caused quite a few raised eyebrows. Clearly Mr Ansel is more than just a baker. He has struck gold and is thinking ahead by protecting the trade name. Unfortunately, outlook is that New York will see all sorts of knock-offs of the Cronut and all that is left will be the name. Already, Dunkin Donuts have tried a knock-off in South Korea.

As IP-advisors we always stress that there is no legal protection for concepts. But should that really be set in stone? Chefs can rely on trade secrets or copyright for protection but really this is not a satisfactory protection. Copyright protects mainly works of art and creativity. Yes, you can argue that a recipe is a work of art, albeit with a narrow protection but there is more to it than that. I think most will agree that a chef who develops his/her own recipes does invest a lot of skill and labour in it. Then one must also take into consideration the whole universe surrounding this: television shows, books, appearances in shows, cookery lines etc. One can easily argue that such things have become so important both culturally and for society economics that this can be a thing that society should have an obvious interest in protecting through IPR. Here, copyright is just too cumbersome and inflexible. As for Mr Ansel from Manhattan, would it not be fair to let him reap the fruits of his ingenuity – as any inventor? And reward him for the flurry of activity and increase in turnover he has caused in the world of baked-goods?

Things change around us, and some things require mentalities and perspectives to change. Does current IPR reflect current society and how creativity is manifested and commercially exploited? Do we not have a need for protecting things like Dominique Ansel’s Cronut?

Personally, I think IPR should be alive, evolving and above-all reflecting the balance between society’s need for protecting incentive and inventors’/creators’/businesses’ need for protection.  Therefore we should not refrain from discussing these matters, nor accept that things seem to be set in stone.

Cookyright? Even Cookieright? Bring it on, I say!

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