Archive | 2016, April | (6) posts

Recruitment of Judges to the UPC during May

According to the Report of the 15th Preparatory Committee meeting of the Unified Patent Court (UPC), the recruitment of Judges will start during the beginning of May. [1]

The Court of First Instance will always have a multinational composition of the panel of judges. The panel shall comprise three judges, unless one of the parties requests that the President of the Court allocates an additional technically qualified judge from a pool of judges, in which case the panel is extended to four judges. The parties may also agree that the case is to be head by only one legally qualified judge. The panels will always be chaired by a legally qualified judge.

In the central division, i.e. Paris, London and Munich, any panel will consist of two legally qualified judges who are nationals of different Contracting Member (CM) states, and one technically qualified judge from the Pool of judges. (the “Pool”)

The local divisions expected to handle less than 50 cases annually, will have one legally qualified judge from the CM state where the local division is placed, and two legally qualified judges who are not nationals of that CM state. These judges will be allocated from the Pool of Judges. If the local division is expected to handle more than 50 cases annually, the panel will instead comprise two legally qualified judges who are nationals of that CM state, and one who is allocated from the Pool. That third judge will serve this local division on a long term basis in order to ensure an efficient functioning of the Court. If the Court is a regional division, two legally qualified judges will be selected from the CM states concern, and one from the Pool.

The technically qualified judge will always be selected by their experience in the relevant field of technology.

The judges now to be recruited shall ensure the highest standards of competence and proven experience in the field of patent litigation, and the legally qualified judges must have qualifications required for appointment to judicial offices in a CM state. The technically qualified judges must have a university degree and proven expertise in a field of technology, they must also have proven knowledge of civil law and procedure relevant to patent litigation.

The Pool will comprise all legally and technically qualified judges, who are full-time or part-time judges of the Court. There will be at least one technically qualified judge per field of technology. The allocation of judges from the Pool will be based on legal or technical skills, linguistic skills and relevant experience.

All judges to be recruited will receive proper training at a training facility set up in Budapest. The training framework will also focus on internships in national courts or divisions of the UPC, and improvement of linguistic skills, technical aspects of patent law. For the technically qualified judges the knowledge in civil procedure will of course be given a special focus.

Sofia Willquist, European Patent Attorney

a special focus.

If Plant and Page stole “Stairway to Heaven”, why wait 45 years to take action?

On May 10 a trial will start in a district court in Los Angeles. A jury will decide whether Robert Plant and Jimmy Page of Led Zeppelin copied the opening chords of their classic song “Stairway to Heaven” from “Taurus” of Spirit. Judge Klausner holds that the songs are similar enough to allow the case of copyright infringement to be tried.

The composer of “Taurus”, Randy Wolfe, died in 1997 and the lawsuit has been filed by a trustee of the estate. It is argued that Plant and Page were inspired by the song on a joint Led Zeppelin and Spirit tour in 1968 and 1969.

The defense is likely to be based upon a claim that the chord progressions have been used by composers well before “Taurus” was written in 1967, as well as argumentation that there in fact is an overall difference between the two songs. Personally, I think there may be some merit to this, see (and listen) for instance https://www.youtube.com/watch?v=JcYeLRI76No.

I also reflect on the rather strange fact that “Stairway to Heaven” was written in 1971 and that it actually is possible to wait 45 years to file a copyright infringement claim.

There are several examples in different legislations and in doctrine to the fact that if you are bound by your passive behavior. For instance, sometimes in civil law a party that does not speak up within reasonable time will be held to have accepted certain conditions, whether or not he or she agrees to those conditions.

For me, the rule of passivity frequently comes up in trademark conflict discussions.  Article 54.1 of the EU Trademark Directive states that acquiescence or passivity limits your ability as a trademark owner to apply for invalidity or to oppose a later trademark.

For this rule to apply, the following needs to be fulfilled:

  • The younger mark has been used in the territory where the older trademark is protected.
  • The trademark has been used in more than five successive years in the relevant territory.
  • The owner of the older trademark has been aware of the use of the younger mark for more than five years.
  • The owner of the older trademark has been passive and not acted against the use of the younger mark.
  • The younger mark was not applied for in bad faith.

Here, it should be noted that the holder of the later trademark has the burden of evidence to the first four bullet points above, whereas the holder of the older right has the burden of evidence to the last bullet point.

A period of five successive years is stated as a relevant period of time. I think this period is generous enough for the owner of the older trademark to evaluate the situation from different perspectives and to prepare and file a claim.  There is really no just reason why a right holder should be allowed to wait around for decades before deciding to notify a good faith party that they have been committing infringement all that time.

Personally, I feel for Jimmy Page and Robert Plant and think that there is a moral right in the old Italian proverb; “silence means consent”.

Kristina Fredlund, European Trademark Attorney

The inventor’s right to waive being mentioned – or Bene qui latuit bene vixit

Roman poet Ovid stated the above latin quote in his work Tristia about 1000 years ago, and French philosopher René Descartes adopted it as his motto: He who has kept himself well hidden has lived well.

But what if you have conceived an invention and you or your employer planning to patent it – is it then at all possible to do so, that is not to be mentioned as the person behind the invention?

The answer is yes! There is an in practice rarely used possibility, which is available in surprisingly many jurisdictions. Namely the inventor’s right to waive being mentioned.

By now you are probably beginning to wonder why you would desire not to be mentioned in connection with your undoubtedly brilliant invention. For that, there may be several good reasons.

It may for instance be that you do not want to be connected with the invention due to it belonging to a technical field being controversial in one way or another. Take, for instance, Alfred Nobel who invented dynamite and patented it. As we know he eventually instituted the Nobel Prize as he later came to regret having made an invention taking so many lives and no longer wanted the money he made off of it. This blogger is pretty sure that Alfred Nobel would have wished that he had known of the possibility of waiving his right to be mentioned as the inventor.

A modern take on the controversial type of invention may be those related to computer software. If possible, patenting your computer software-related invention makes very good business sense. But as many within the software business have strong feelings and opinions about patenting, staying anonymous might just be preferable.

It may also be that there is contractual or other purely business related circumstances making it preferable for the inventor to remain anonymous. This may be particularly relevant for inventions connected with national security interests. Of course, in such a case the patent application itself will most likely be secret, but even so the secrecy will at some point be lifted and even at that time it may be preferable for the inventor to remain anonymous.

Or it may simply be that you feel the same as Australian singer/songwriter Sia, who is not only famous for her music, but also for not wanting to be famous and for trying to stay as anonymous as possible.

Now, how to waive the inventor’s right to be mentioned? And where is it at all possible?

To take the last question first, you will be well covered by applying for regional patents where available as the treaties/conventions governing European, Eurasian, ARIPO and Golf Cooperation Council patents all make it possible, while the national law of many of the member states does not. Further countries include Brazil, Mexico, Russia and Ukraine.

On the other hand, important countries such as the USA, China, Canada, India, Japan and South Korea seem not to have this possibility enshrined in their patent law.

And generally, waiving the inventor’s right to be mentioned is pretty straight forward. With a provisio for national peculiarities, generally all it takes is to file to the relevant patent authority a declaration signed by the inventor stating that he or she wishes to waive his or her right to be mentioned.

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

Recent Measures Introduced by CTMO

On March 24, 2016, the China Trademark Office (CTMO) announced the implementation of certain measures from that date.

  1. FAQ – An FAQ on trademark applications is put up on the CTMO’s website. The FAQ mainly deals with the practicalities involved in the filing procedures. While this may be a useful source for the basics, it does not provide anything new.
  2. Notarization – Notarization is not required for supporting documents for trademark applications for the portrait of a person or the name of a celebrity as a trademark, assignment applications, removals of registered mark, recordals of change of name or address in foreign language.
  3. Notices of Correction – Notices of Correction will provide, as appropriate to the case,more explanations or guidance to facilitate responses.
  4. Single set of evidence for multiple oppositions – For oppositions filed by the same opponent within one month, if all the evidence (not part of the evidence) is the same in all such oppositions and a complete set of the evidence is already filed in the first opposition at the time the opposition is filed, then the opponent is not required to file the evidence again in the remaining oppositions, provided that the opposition which has the complete set of evidence is clearly referred to in the remaining oppositions.
  5. Consolidation of oppositions – The CTMO may consolidate oppositions if the parties are the same, the opposed marks are the same, the same set of evidence is used or cross-oppositions are filed by the parties, or the CTMO considers that the other reasons as raised by a party satisfy the requirements for consolidation.
  6. Expedition of post-registration matters – The CTMO may expedite post-registration matters such as recordals of changes, assignment applications, renewal applications etc. if the applicant can explain with supporting documents the urgency and the reason for the expedition.
  7. Online database – The CTMO will improve the online trademark database by making timely updates, enhancing stability and improving the status check function etc. This is said to be most welcomed by practitioners and TRAB.

Rhonda Tin, Counsel

Artists’ rights ./. Freedom of panorama

Wikimedia Sverige has compiled images of art in public places in a database. This database is open to all, free of charge and is intended for the general public, the educational system and tourism. The project was in fact financially supported by Vinnova, a governmentally owned organization for supporting innovation and business development in Sweden.

Bildupphovsrätt i Sverige ek. för. (BUS) is a Swedish organization for collecting copyright remuneration for artists. In 2014 BUS sued Wikimedia before the District Court of Stockholm for copyright infringement concerning three works of art (all sculptures that are part of the database of Wikimedia). The District Court decided to refer the case to the Supreme Court to clarify §24 of the Swedish Copyright Act, namely the meaning of the word “image”. The paragraph reads:

  • Works of fine art may be imaged in pictorial form
  1. if they are permanently located outdoors on, or at, a public place
  2. if the purpose is to advertise an exhibition or a sale of the works of fine art but only to the extent necessary for the promotion of the exhibition or the sale or
  3. if they form part of a collection, in catalogues, however not in digital form.

In addition, the District Court requested clarification on whether it matters if the intent is commercial or non-commercial.

In order to interpret the scope of §24, the Supreme Court applied the “three-step test” in Article 5(5) of the InfoSoc Directive, meaning that an exception to the copyright should 1) only be allowed in certain special cases 2) which do not conflict with a normal exploitation of the work or other subject-matter and 3) do not unreasonably prejudice the legitimate interest of the right-holder.

Here the Court found that, for an exception to the copyright to be possible, it should be a clear and precise exception. As for the normal exploitation of the work, the exception must not compete with the artist right to exploit the work of art financially, also considering new technical possibilities. Finally, the restriction should not be an unfair limitation of the artist’s legal interests. Here, a consideration should be made against the interest of the general public.

§24 was introduced as a result of the need of the general public to freely image the surroundings in a city or a landscape. Here, the word “image” was meant to mean paint, draw, photograph or use other techniques in order to show the work of art two-dimensional. Apparently, Wikimedia referred to the fact that in Sweden, works of art in a public place may be part of, or the main focus of, a post card without any need to compensate the artist. However, according to the Supreme Court, this position was originally for practical reasons and since the compensation from the artist’s perspective was of minor economical importance. Therefore, the fact that public works of art is allowed in postcards is of no relevance in this matter.

The Supreme Court pointed out that a use of a work of art in an open database typically is of considerable financial value, either for the database owner or for others who use the database. This value should be the property of the artist. A database of this kind provides for a substantial use of copyright protected works of art without any compensation being paid to the artists. Hence, it is a far more serious restriction of their sole rights than §24 is intended for. The right to use new techniques to exploit a work of art in this way remains with the artist.

The Supreme Court replied to the District Court of Stockholm that §24 only grants the imaging of the work of art. It does not include a right to make the images available to the general public via Internet. Whether or not there is a commercial intent is not relevant.

Some regret the decision with reference to a wish that art in public places should be easy accessible to as many as possible.  As always, there is the complaint that the legal world is at least one step behind the swift technical development of society.

However, the decision is important to the artists and makes it clear that they are in control of their works, not the Internet companies. (more…)

Third strike hits the European Patent Office

Last month, 91% (3,701) of 4062 of European Patent Office (EPO) employees voted for a one day strike to be held on April 7 at the EPO’s offices in Munich, The Hague, Berlin and Vienna. It thus adds to a number of strikes that has hit EPO since former Chairman of the Administrative Council of the EPO, Benoît Battistelli, acceded as President of the EPO in 2010.

During the recent years, tension and discontent has build up internally at the EPO due to Battistelli’s attempt to reform working practices at the EPO. Even worse, mistrust seems to thrive at the EPO and the latest restrictions of the strike regulation is not helping. Furthermore, Battistelli’s management methods have been strongly criticized and culminated in 2014 with the highly controversial suspension of a member of the office’s boards of appeal.

Last month’s thousands of votes in favour of a strike, however, may be a direct result of the disciplinary hearing decided by Battistelli against three representatives of the “Staff Union of the European Patent Office” (SUEPO). The recent decision to let off two and degrade one member of the trade union is based on supposition of leakage of confidential information. The leak was confirmed by an “investigative unit” set up by Battistelli, which included hidden cameras and key-logging software.

Certainly, the strike will cause disruption and delays in various services of the EPO including prosecution of patent applications but it is unlikely that Examiners will disrupt public functions such as Oral Proceedings during the strike. It has been debated whether the internal dispute has a negative effect on the quality of the work as a result of demotivated employees. External user survey and the extended ISO 9001 certification, however, indicate that the quality of services provided by EPO continues to be high.

Helle Friis Svenstrup, Patent Attorney