Archive | 2015, December | (4) posts

Brazil drives onto the Patent Prosecution Highway

With the beginning of the year 2016, the Patent Prosecution Highway (PPH) family will welcome aboard an important new addition, namely the Brazilian Patent Office, INPI. With this addition the clear majority of the patent offices of the World’s biggest economies will have at least one PPH agreement. Thus the PPH becomes an even more useful tool for applicants wishing to speed up prosecution of their patent applications and lowering the associated costs.

According to the INPI website, they have announced together with The United States Patent and Trademark Office (USPTO) the agreement to launch a Patent Prosecution Highway (PPH) pilot program intended to take effect on 11 January 2016.

For starters this PPH program will, however, be somewhat limited on the Brazilian side. Most importantly, the program will at the INPI apply to patent applications in the oil, gas and petrochemical sector only, and to applications filed with the INPI within the last three years only.

The USPTO, on the other hand, will under the agreement process patent applications in any field and filed at any date.

Furthermore, the duration of the program will be two years or until each office has processed up to 150 patent applications.

Finally, it is well worth noting that if the application one wishes to prosecute under the PPH program between the INPI and the USPTO claims a priority, it must be a Brazilian or US priority.

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

Names as trademarks – maybe not such a good idea!

In Denmark the owner of a trademark cannot prevent others from branding themselves under their own name, as long as it is done in accordance with good marketing practice. This means that as long as the use of your own name does not lead to confusion, it is possible to trade under this name. Therefore if one is using his/her own name as a sign of recognition and assigns it to another company, then this person will be prevented from using his/her name as a sign of recognition in commercial activities conflicting with the proprietor. Therefore in that sense a name does not differentiate from “normal” trademarks.

On 30 November 2015 the Danish Commercial and Maritime Court gave their decision in a case between Topbrands and the Danish designer Benedikte Utzon. For several years she has designed clothing under her own name, and she has built her business on her name as her trademark. In 2012 her company went bankrupt and the Danish company Topbrands bought the main part of the bankrupt’s assets, including the unregistered trademark rights to “Benedikte Utzon”. Topbrands has since registered the name as a trademark in Denmark and EU. Benedikte Utzon herself was offered to buy the trademark for 20,000 DKK, but as she had no money after the bankruptcy she wasn’t able to do so.

Since the bankruptcy Benedikte Utzon has started a new brand under the name “My Little Curvy Love”. According to the Commercial and Maritime Court, she is not permitted to use her own name to market the company. Not even in variations as “My Little Curvy Love by Benedikte Utzon” or “designed by Benedikte Utzon”. She can still use her name in a personal context, but not as a sign of recognition in commercial matters conflicting with the existing brand “Benedikte Utzon”. Therefore she is actually now prevented from writing “Designed by Benedikte Utzon” on any commercial activities within jewellery, leather goods and apparel, as this will lead to confusion amongst the consumers.

Benedikte Utzon has appealed the case to the Supreme Court, as she finds that there are several untouched issues. She believes that the case is a matter of principle, as it concerns the basic right to the use of own name. Especially for designers, musicians, writers and artists she feels that this case is important, as they often are all building their career on their name.

On the other side stands Topbrands which bought the trademark. “My company bought the trademark – she even rejected buying the trademark “Benedikte Utzon”, and as we are now the owners of the trademark, we of course want our rights to be respected. You can’t just ignore others’ rights”, says Lasse Skarup from Topbrands.

As an IP professional it will be interesting to see where the Supreme Court will draw the line. Do they find that an owner of a trademark, which is also the name of a person, must accept use – that up until this point – was seen to be in conflict with good marketing practice, and therefore must now accept use of names in loyal commercial activities? Or will they find that a trademark that is rightfully obtained and used as a trademark must be respected as a trademark, even though it is the name of a person. And, is it fair that you can wind up in a situation, where you are not allowed to put your name on your work? We’ll see..

Maria Dam Jensen, Legal Counsel

Andorran patent law enters into force

In the heart of the Pyrenees Mountains, on the border between France and Spain, lies a small independent country. This country, of course, is The Principality of Andorra. The co-princes exercising sovereignty over Andorra are the President of the French Republic and the (Spanish) Bishop of Urgel. Andorra is not part of the European Union.

Neither patents with effect in France, nor in Spain, have effect for Andorra. Even if an Andorran Patents Act has existed since 1999 and an updated form was published on 26 November 2014, the Andorran Government, who has been empowered to issue the Implementing Regulations to this Patent Act and the Regulation Establishing an Andorran Patent Office, has hitherto not approved or even drafted any of these regulations.

Therefore, Andorra is one of only two European countries known to this blogger (the other one being the Vatican City) in which it is actually not possible to file a patent application. That is until now, because in 2016 the Andorran Patents Act of November 2014 will enter into force.

Although the corresponding chapters of the Andorran Patents Act will not yet enter into force, it is even prepared for both an agreement with the European Patent Organization (EPO) for the purpose of validating European patents in Andorra as well as for ratification by Andorra of the Patent Cooperation Treaty (PCT).

The reason that the Andorran Patents Act now enters into force is that things gained speed during the end of 2015. On 15 July 2015 the Government approved the Implementing Regulations, which were published in the Official Gazette of the Principality of Andorra on 22 July 2015.

However, a six month suspension of the practical application of the Implementing Regulation was decided. This to give time to provide the newly established Andorran Patent Office with technical and human resources needed to prosecute patent applications and to create a body of patent agents pursuant to the Implementing Regulations.

As this six month period is now nearing its end, this blogger wonders who will be lucky enough to apply for Andorran patent number 1.

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

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Change on climate and fast-tracking green innovations

A while ago I wrote a blog post about being profitable and still doing good things for the climate. I believe that there are many inventors out there who have found really cool and smart solutions to many of the problems of today, for instance how to provide electricity to poor and rural locations, how to reduce carbon dioxide emissions, how to handle waste and how to provide clean water for the people of the world, but that these inventors sometime struggle to find the right business partners to help them take their inventions to the market.

In an article by Antoine Dechezleprêtre at the London School of Economics and Political the fast-tracking of patent applications that relate to green innovations is analyzed. Green innovations can be related to many different technology fields, such as energy saving, transportation, water handling, biotech, renewable, storage, lighting as well as to recycling, solar and wind. The climate-change related technologies do however appear to represent a majority of the fast-tracked applications.
According to the article seven intellectual property offices have introduced a fast-track system for green patent applications – the US, Australia, Canada, Japan, Korea, Israel and the UK by the end of 2011. These fast-track systems usually comprise an accelerated examination, which for some applicants is of course not desirable, which is also the reason to why many green patent applications are not put through this fast-track system. The article points to studies showing that the green applications that are fast-tracked relates to high value innovations that may be the subject of commercial interest from business partners.

Just at this moment the world’s leaders have gathered in Paris, to set new goals for how to stop or at least minimize the effects of the climate change, and we all hope that this will be a successful meeting in contrast to the meeting in Copenhagen six years ago. During those years we have seen a lot of very innovative technical solutions with regards to for instance reducing carbon dioxide emissions, using raw materials in a more sustainable manner, recycling and more efficient use of energy.
Fast-tracking patent applications relating to green innovations thus appears to be a way of inducing more commercialization around green innovations, thereby creating an environment where innovators more easily can reach potential investors, entrepreneurs and other business partners so that their inventions can be realized and hopefully be a good step on the way of achieving the goals hopefully set out during the Paris meeting.

Sofia Willquist, European Patent Attorney