Posts by: Vibeke Warberg Rohde | (8) posts

Adopting a stricter view on ethics?

The everyday work of an IP attorney may seem to amount largely to pencil pushing, but it does in fact involve a surprisingly large number of decisions, where moral issues have to be considered. For instance, can I take on this new client without risking to step on existing clients’ toes?

Events of the last weeks testify that such issues affect everybody in the IP business, also those at the very top.

First, we heard that the renowned Judge Randall Rader from the US Court of Appeals for the Federal Circuit (CAFC) had left his post as head of the CAFC. According to his own words the reason was that he had “crossed lines established for the purpose of maintaining a judicial process whose integrity must remain beyond question”. It appears that Judge Rader’s communication with attorneys appearing before his court had been a bit too friendly.

A few days later it came out that the Chairman of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) had taken the consequence of the decision in case R19/12. A series of tasks previously handled by the Chairman in his capacity as Vice-President of Directorate General 3 will be taken over by the President of the EPO and the Chairman will no longer be part of the President’s Management Committee.

The question at hand in R19/12 was whether the Chairman could reasonably be suspected of partiality due to his position on the Management Committee, where he could influence the work of the EPO divisions, whose decisions could later be appealed to the EBA. In a configuration without the Chairman the EBA decided that the suspicion of partiality was in fact legitimate.

Is it merely a coincidence that these stories turn up so soon after each other? Or is this a new wave of Puritanism sweeping over the IP community?

Vibeke Warberg Rohde, European Patent Attorney

Don’t bring your invention on vacation!

This week a Swedish inventor was forced to realize that it is not smart to bring you invention when going to Denmark on vacation. Particularly not when the invention involves a large battery and a lot of wires attached to a car and when planning to park in a public garage.

The trip resulted in a major bomb scare, where the surrounding buildings were evacuated and got the undivided attention of the entire press in the middle of the “silly season”.

According to Danish media the unfortunate inventor has explained that the car is a proto-type on the battery-powered car of tomorrow, which recharges when driving, and that he has been working on the invention for about a year. If intending to apply for a patent for his invention, as is very common with this type of ideas, the poor man may, however, have created other problems for himself than just having his vacation spoiled. Due to the extreme amount of publicity he may not be able to live up to the requirement that invention cannot have been made available to the public by means of a written or oral description, by use, or in any other way prior to the filing of a patent application.

In conclusion, if you must test your invention during vacation, spend the vacation in a more sparsely populated place than Copenhagen, or at least were it is not going to be scrutinized by traffic wardens.

More info here

Vibeke Warberg Rohde, European Patent Attorney

Kim Garsdal Nielsen, European Patent Attorney

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Chinese focus on IP

Recently representatives of Awapatent participated in the China Intellectual Property Focus 2012 conference in Shanghai. Our participation is a part of our effort to make Awapatent’s name known in China, but we also believe that it is important to contribute to the growing IP awareness in China. Accordingly, Mikael Bergstrand from our Malmö office gave a speech on how to draft a patent application, which will be successful outside China, and we were also among the conference sponsors. Other speakers focused on how to put patents and trademarks to practical use, so that they are not “just documents hanging on the wall for decoration” as one speaker put it, and shared their IP litigation experiences. It may safely be concluded that there is a great interest in expanding the protection of Chinese innovation to other countries and in becoming better at making innovations profitable by licensing and selling IP rigths. 

Sign above the entrance to Beijing's Silk Market

The increased focus on IP in China is reflected in many ways. During this trip, which started in Beijing, the most surprising example was the banner shown on the photo. It was hanging at the entrance to the Silk Market, which is notoriously known as one of the places, where you may come across surprisingly cheap “Rolex” watches or maybe even an iPhone6. Though some vendors had apparently entered via another entrance and not seen the banner, it is clear that the IP situation in China is improving rapidly, not least due to a push from Chinese companies beginning to realize the importance of being able to protect their own innovations.

Future trips to China will most certainly reveal many other thought-provoking displays of IP awareness and we will make sure to share them with you!

Vibeke Warberg Rohde, European Patent Attorney

Awapatent at the 4th China IP Counsel Conference 2012

On 22-23 May 2012 representatives from Awapatent participated in the 4th China IP Counsel Conference held in Shanghai. The program was very interesting with many different angles on IP, particularly on how to protect your IP in the best possible way.

A representative from the Chinese Intellectual Property Office (SIPO) opened with a speech about the Patent Prosecution Highway (PPH), a topic which raised many questions from the audience. Then it was time for our contribution: Maria Stenbäck explaining how to draft a patent application, which at the same time meets the requirements set by patent authorities in the USA, Europe and China but without becoming too expensive. Not an easy task!

The following break showed that the Chinese are very interested in hearing news from other areas of the IP world and the networking area was very busy.

Chinese speakers from large companies and research institutes then presented topics varying from how to protect your trade secrets to examples of how IP strategies can be used to improve business. It was obvious that a lot is happening in the Chinese IP community.

During the final panel discussion we noted that the frustration sometimes felt by European companies trying to enforce IP rights in China is shared by Chinese companies, but that they experience that things are changing for the better.

Indeed a very exciting visit to China and we hope to be able to participate in future conferences here in Shanghai. 

Maria Stenbäck from Awapatent speaking at the 4th China IP Counsel Conference in Shanghai.

Vibeke Warberg Rohde, European Patent Attorney
Claus Marcussen, Attorney at Law 
Maria Stenbäck, European Patent Attorney

EU patent to pave Europe’s way out of crisis

On 12 October 2011 the European Commission presented a so-called “Roadmap for stability and growth” outlining the response that they believe is needed to get Europe out of the current economic crisis. The roadmap includes five areas of action, four of which relate to financial and economic issues, including of course the problems currently encountered by Greece and the other Euro countries.

The last area of action is called “Speeding up stability and growth-enhancing policies” and suggests, amongst others, to accelerate the adoption of the proposed unitary European patent. If the 25 member states, who have indicated their intention to join the unitary patent, all do so the Commission estimates that it would lead to an 80% reduction in costs for companies utilising the system. Together with a series of other initiatives this should not only make life easier for European companies, but also contribute to making Europe more attractive to foreign investors.

Read more about the EU patent in our earlier blog post: A brighter future for the EU patent

The full document adopted by the Commission can be found here.

Vibeke Warberg Rohde, European Patent Attorney, Awapatent

EU survey now open for participation

EU survey now open for participation

Every two years the European Commission conducts a survey in order to identify the most important obstacles met by EU citizens applying for and enforcing intellectual property rights in countries outside the EU.

The 2010 survey is now open and anyone may participate using the online questionnaire found here.

The results of the survey together with data from other sources, such as customs authorities, will be compiled into a report identifying the countries where the problems encountered have reached “worrying proportions and are seriously harming EU right holders”. This will help The Directorate-General for Trade to prioritize its efforts and to identify countries with which the cooperation on IP should be strengthened.

In the last report published in 2009, which was based on the 2008 survey, China once again came out as the highest priority country regarding IPR enforcement, not least because 54% of all suspect goods detained at EU borders at that time originated from China. This was not much of a surprise. But western countries such as Israel, Canada and the U.S.A. were also to be found on the list. Israel and Canada amongst other due to deficiencies regarding pharmaceutical-related IPR issues and the U.S.A. i.a. for disrespecting WTO dispute settlement decisions.

It shall be particularly interesting to see whether the efforts of the Chinese government, which include the enactment of a new patent law and a new trademark law as well as a reform of the court system in IPR related matters, have had enough of an impact for them to hand over the top of the list to somebody else. The fact that in 2009 China’s share of goods seized at EU borders rose to 64% does not promise well.

The survey is open until 31 October and the report may be expected in the fall of 2011.

Vibeke Warberg Rohde, European Patent Attorney, Awapatent

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How to protect your IP rights in Hong Kong

Many people are aware of the important role that Hong Kong plays for trade in Asia, not least as a gateway to the Chinese market, yet few know much about how to go about protecting their intellectual property rights there.

Since 1997 Hong Kong has had its own patent law under which a British or Chinese patent does not automatically guarantee protection. The region’s links to China and the United Kingdom have not been totally severed, however. Hong Kong patent law does make provisions for what are called “standard patents” registered on a quid pro quo basis when a corresponding application has been filed for one of these other areas. In practice, this means that an application must first be filed with the Chinese Patent Office, the UK Patent Office, or the European Patent Office (provided that the application to the EPO designates the UK).

There are two further provisos to granting a Hong Kong standard patent: the request to record must be filed in Hong Kong within 6 months from the publication of the initial patent application, and the request for registration and grant must be filed within six months from the date of grant of the initial patent. There are no problems as regards the language requirements, as it is not necessary to translate the full text of the application. The only requirement is that the title and abstract are available in both English and Chinese at the time the application is filed. It is not necessary to file a translation of a European patent application that has been published in French or German.

A standard patent that provides protection for 20 years may only be granted after the patentee has first applied for patent protection in China or the UK as described above. There is, however, another option; namely what is called a “short-term patent” that can be obtained by filing directly with the Hong Kong Intellectual Property Department. A short-term patent provides protection for just eight years but, on the other hand, it may be granted without the formality of a substantive examination. In this sense, it corresponds more or less to the unexamined utility models known from many European countries.

As a rule, a Hong Kong patent is granted relatively quickly as soon as the formal criteria have been met.

Vibeke Warberg Rohde. European Patent Attorney

New patent law in China

As mentioned on this IP blog on 30 October 2008, a new Chinese patent law has been anticipated for some time. On 27 December the law was finally passed and it will come into force on 1 October 2009. Some of the most important changes seen from a European point of view will be summarized below.

The introduction of “Absolute Novelty” means that prior use, oral presentations and other non-printed publications, which have taken place outside China, may now also be considered when assessing the application. In addition, earlier filed but not yet published applications will now be relevant in the assessment of novelty, regardless of who has filed the application. Under the existing law the applicants own prior applications were disregarded in this respect.

Another important change is that parallel importing will now explicitly be allowed. This means that if the owner of a Chinese patent has sold a product in another country, the buyer can legally import it into China. Moreover, under the new law, the so-called “Bolar exemption” has been implemented and covers both medication and medical apparatuses. These may thus legally be used in experiments with the purpose of achieving a marketing authorization.

For many applicants it is normal practice to apply both for a patent and for a utility model in China. In this way it is possible to benefit both from the swift grant of the utility model and from the good protection achieved with a regular patent. Under the new law the utility model must be abandoned before the patent is granted to avoid double patenting.

Those performing research and development in China will also benefit from the fact that it will no longer be required to file a patent application in China before filing abroad. However, a so-called Secrecy Examination must now be requested, the details of which are not yet in place. Whereas the requirement in the existing law applied to Chinese companies only, the new law applies to all inventions made in China.

Design applications are also covered by the Chinese patent law and it has been decided to allow more than one design in each application on the condition that they are all incorporated in the same product. In return, the application must now contain a brief description of the design.

All in all, the new law will make the situation in China much more like the situation in Europe, and it has clearly been the intention of the legislators to make use of the system easier.

Vibeke Warberg Rohde, European Patent Attorney