Tag:  “awapatent”  | (20) posts

UK inches towards UPC ratification

There was a sigh of relief at the end of November when the UK announced that it would proceed with the ratification process to implement the UPC in spite of Brexit.  This renewed the hope that the UPC will come in to force in 2017 as planned.  Whilst this was good news, what did it actually mean for the timescales and where is the UK currently in its legislative process to ratify the UPC?

In order to look forwards, it may be helpful to take a look back to see what the UK has already done to ratify the UPC.  They were, in fact, fairly advanced in the ratification process before the result of the EU referendum put a spanner in the works.

In May 2014, the UK Parliament passed the Intellectual Property Act 2014.  This Act amended the Patents Act 1977 by inserting new sections 88A and 88B in order to introduce the concept of the UPC into the legislation.  These new sections provided that the Secretary of State may make orders to give effect to the UPC Agreement and that such orders must be presented to both Houses of Parliament (the House of Commons and the House of Lords) for approval before they are passed. The UPC was also designated as an “International Organisation” under UK law which allows it to be granted certain privileges, immunities and exemptions if required.

Following on from this Act, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 was laid before Parliament in March 2016.  This order makes various amendments to the Patents Act 1977 in order to clarify the difference between a unitary patent and a European patent and applies and disapplies various provisions of the Patents Act 1977 (as appropriate) to unitary patents.  It is worth noting that this order was debated in the Houses of Parliament in March when confidence was still fairly high that the UK would remain in the EU.  Hansard (the record of parliamentary debates) shows that the House of Commons approved it in just 16 minutes and the House of Lords took only 24 minutes!

Since the UK’s announcement that it will continue to ratify the UPC Agreement, it has shown some progress by signing the Protocol on the Privileges and Immunities of the Unified Patent Court on 14 December 2016.  However, in order to implement this Protocol in the UK, it will need to lay a further order before Parliament for approval.  This order is currently being drafted but no draft has been published and there is no news on when it will be laid before Parliament.  I think what we can expect, when the time comes for the parliamentary debate, is that it will definitely not be as brief as it was for the last order.  What should be a fairly straight forward procedural approval may turn into a wider discussion on the UK’s role in the UPC, how it can function once the UK leaves the EU and whether the ratification should continue.

The UK also needs to deposit its instrument of ratification of the UPC Agreement with the General Secretariat of the Council of the European Union in order to formally ratify.  This will be prepared by the Foreign and Commonwealth Office but should be merely a formal step which will be done once the relevant secondary legislation has been passed.

There is still a lot of uncertainty surrounding Brexit, particularly with the ongoing Supreme Court appeal as to whether Parliament should be consulted before Article 50 is triggered.  The judgement is due this month and may give some clarity on the timing for Article 50.  As the UK is progressing with ratification of the UPC, membership is now likely to be one of the points of negotiation on departure from the EU.

Alicia Kim, Associate

Danish designer barred from using own name as trademark

About a year ago the Danish Commercial and Maritime Court gave their decision in a case between Topbrands and the Danish designer Benedikte Utzon. You can read about it here.

In short, the court found that Benedikte Utzon could no longer use her name as a trademark in any commercial activities within jewellery, leather goods and apparel, as Topbrands had bought the trademark rights to the brand Benedikte Utzon after her bankruptcy in 2012.

Benedikte Utzon appealed the case to the Danish Supreme court as she found that there were several untouched issues, and that the case is a matter of principle.

The Supreme Court states in their decision, that the term good marketing practice entails that commercial use of one’s own name must be in a way, that it is not unfair, improper and damaging in relation to the owner of the trademark. Moreover, the Court states, that a person that has used his own name as a trademark, and assigned this trademark to a third party, the principle of good marketing practice entails that he is then prevented from using his own name as a trademark for those types of goods, for which the trademark is registered.

Further, the Court refers to the preparatory works of the legislation, from which it follows that if a business owner has used his own name as a trademark in a way that it to the public appears as a trademark rather than a personal name, and then assigns the trademark to a third party, without any reservations as to the future use of the name, he then precludes himself from using his own name as a trademark for those types of goods as covered by the trademark.

The Supreme Court has now given their decision in the case, and confirms the decision from the Commercial and Maritime Court. Moreover, the court finds that Benedikte Utzon has already infringed Topbrand’s trademark rights and she is ordered to pay 250,000 DKK in damages.

Benedikte has now changed her name to Dicte Utzon, and has pronounced, that she is considering taking the case to the European Court of Human Rights given that she is now barred from using her birth name ever in her work as a designer.

As an IP professional it is always interesting to follow such borderline cases and see where the Supreme Court draws the line, even as in this matter the preparatory works of the law is actually rather clear on this issue. But we now know for sure, that you can wind up in a situation, where you are actually prevented from using our own name. It will be interesting to see the outcome of the case if Benedikte Utzon, now Dicte Utzon decides to take it further.

Maria Dam Jensen, Legal Counsel

Referral to the Enlarged Board of Appeal regarding negative features in a claim (i.e. disclaimers).

The use of undisclosed disclaimers in a filed application has been practiced since the start of the EPC (European Patent Convention) and was codified in G 1/03. According to this decision, three exceptions[i] from the general principle (a patent or patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed (Art. 123(2)) were established.

In a second decision, the EBA (Enlarged Board of Appeal) in G 2/10 had to deal with disclosed disclaimers, i.e. disclaimers that formed part of the original application. The EBA decided that ‘the test to be applied is whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed’. The test is sometimes referred to as the ‘Gold Standard’.

Since G 1/03 relates to undisclosed disclaimers and G 2/10 relates to disclosed disclaimers, they should complement each other. However, the comments in G 2/10 give the referring board in T 437/14 reason to believe that the Gold Standard should apply in addition to the exceptions or even as the sole standard. Therefore, the EBA will have the opportunity to revisit the disclaimer issue for the third time and hopefully finally resolve it.

After the G 2/10 decision, the various boards have struggled to deal with the two tests. In some decisions only the exceptions in G 1/03 are applied, while in other decisions different ways to accommodate the Gold Standard in the exceptions of G 1/03 have been explored. When the Gold Standard was applied strictly (as in T 748/09) the board did not allow the disclaimer. However, when the Gold Standard is applied in a modified form the disclaimers stand a better chance. In at least two instances (T 1870/08 and T2018/08) different modified Gold Standards are applied. Therefore, the EBA has the opportunity to determine the modified standards for disclaimers in the event the exceptions of G 1/03 apply in addition to the Gold Standard of G 2/10.


 

[i] The three exceptions relate to disclaimers not disclosed in the application as filed and introduced in a claim in order to

  • restore novelty by delimiting the claim against the state of the of the art disclosed in a European patent application filed prior but published after the relevant date (Art. 54(3) and (4) EPC),
  • restore novelty by delimiting a claim against an accidental anticipation, i.e. an anticipation so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention, and
  • disclaim subject-matter excluded from patentability for non-technical reasons.

Torben Raven Rasmussen, Partner – European Patent Attorney

EPO gets Stricter on Requirements for Recording Assignments

The EPO is going to take a stricter approach for recording an assignment of EP applications. Up until now the EPO has accepted assignment documents evidencing a transfer that had only been signed by the Assignor.

Recordal of assignment is governed by Article 72 EPC which states that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”

The November 15 edition of the “Guidelines for Examination” (at E-XII-3) states that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

The above-mentioned section of the EPO Guidelines for Examination has been revised, and the above wording deleted, to be replaced with “Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer” at new section E-XIII-3.

The new Guidelines for Examination will enter into force on 1st November 2016. Registration of transfers already recorded will not be affected by this change.

Thus, the EPO are getting stricter in following the requirements of Article 72 EPC, and now require that the signatures of both the Assignee(s) as well as the Assignor(s) must appear on the assignment document when recording a transfer.

According to the new guidelines it is however still possible to provide the following other evidences of the transfer: “Any kind of written evidence suitable for proving the transfer is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer”.

In view of the above change, we should advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignors(s) as well as the signature(s) of the Assignees(s). Also, to avoid problems with the recordal of assignment at the EPO it is important to ensure printed names and capacity as signatory for both parties in the transfer document.

Although it may seem that the EPO is going belt and braces with this stricter approach it is important to remember the that once a transfer has been duly entered in the European Patent Register, the registration cannot be undone. In case of any doubt, proceedings may have to be stayed until the identity of the legitimate applicant/proprietor has been established.

 

Helle Friis Svenstrup, member of Awapatent’s EPC specialist team

European Patent Office: New PPH agreements on the way

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the AWAPATENT IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing for requesting accelerated examination at one participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, European patent applicants have been offered the possibility of speeding up and simplifying the examination. Namely, effective as of 1 October 2016, the EPO (European Patent Office) and the Superintendence of Industry and Commerce of Colombia have launched a new PPH agreement. The agreement applies to both national and PCT work products. The EPO’s notification of entry into force can be found here.

Furthermore, the EPO has just announced the signing of three new PPH agreements with the IP offices in Russia, Malaysia and the Philippines. These three PPH agreements will, according to the EPO, enter into force during 2017. The announcement may be found here. The AWAPATENT IP Blog will inform its readers of the actual dates of the entry into force.

Finally, it is worth mentioning that the Chilean and Moroccan IP offices also have joined the PPH network. The Chilean IP office has together with the Mexican, Colombian and Peruvian IP offices signed mutual PPH agreements. The Moroccan IP office has signed a PPH agreement with the Spanish patent office. This makes the grand total of IP offices, participating in the PPH network, 41.

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

The value of design patents

It is a perfectly clear, crisp morning as I make my way from Washington DC’s Union Station, through a clean and perfectly trimmed Senate Park, to the white neoclassical palace that houses the United States Supreme Court. The wide pavement and massive stairs leading to the building’s entrance is filled with journalists, photographers and television crews gearing up alongside hundreds of gathered spectators. Inside, the Supreme Court is in session, hearing its first design patent case in 120 years.

What sparks such an unusual interest in the hearing of an IP case is the fact that this is one of the final chapters in the ultimate “super heavyweight” patent rumble, between the largest corporation in the US, Apple and the by far largest South Korean corporation, Samsung. This lengthy dispute has all the components necessary to attract the public’s eye: it concerns a category of products that basically everyone of us is using (on average 40 times per day), the design patents concerned are understandable and the patents cover the iconic design of the game changing iPhone.

The question that the Supreme Court agreed to hear is not that of infringement, which has already been settled in a final decision by the Court of Appeal for the Federal Circuit (CAFC). Instead, the court is reviewing the size of the damages, and in further detail, the relevance of a century old piece of legislation stating that the infringer in a design patent “shall be liable to the owner to the extent of his total profit”. This in practice means all profit generated by the infringing Samsung Smartphones (article of manufacture), and it is this wording that made the CAFC affirm the $400 million in damages awarded to Apple.

Samsung, as well as several academics, argue that a statement made by the US congress in 1887 that “it is the design that sells the article” (forming the basis for the above wording in the legislation), does not apply to complex products such as the iPhone. On the other side, Apple’s Chief Litigation Officer Noreen Krall, who by the way hired me to my first job in the IP industry, argues the opposite and stated that Apple’s “designers and engineers are distinguished by their originality” and that Apple “firmly believe that strong design patent protection spurs creativity and innovation”.

Knowing how dedicated Apple fans can be, and how much value the Apple customer places in the look and feel of the products, I am inclined to agree with Noreen and Apple. In many instances, I believe that originality and design are features that actually may trump the function of Apples products.

The Supreme Court’s decision is expected in early 2017. Whatever the outcome will be, i.e. if the Supreme Court confirms the principle of the “total profit” or chooses to interpret the law as meaning “total profit” attributed to the specific parts of the “article of manufacture” covered by the patent, the ruling will have a considerable impact on how the IP world views and values design patents.

Joacim Lydén, Awapatent Partner and temporary US Correspondent

Early certainty and PCT direct – a visit by the EPO

Have you ever dreamt of having a fast grant of a European patent?

This question was in focus at a well-attended breakfast seminar held by Awapatent in cooperation with a group of Examiners from the European Patent Office (EPO).

Under the project “Early Certainty”, the EPO is currently trying to reduce their backlog when it comes to search, examination, and oppositions. The EPO has set a goal stating that searches should be performed within 6 months of filing, examination should be concluded within 12 months from the start of the examination procedure, and oppositions should be concluded within 15 months.

By recruiting new examiners and focusing on their core business, the EPO has already managed to reach the goal when it comes to searches, but for examination and oppositions the goal is still further down the road.

Another interesting project launched by the EPO is PCT direct, which is available for PCT applications claiming priority from a previous application searched by the EPO. In brief, the applicant may, when filing the PCT application, also file informal comments regarding the written opinion of the previous application. These informal comments are then taken into account by the Examiner when preparing the written opinion of the PCT application. This improves the chances of having a positive first written opinion issued for the PCT application which, together with PPH requests, may lead to faster grants outside Europe.

I welcome the EPO’s attempts to speed up the procedure. However, I can also see that the ambitious goals set up for examination puts a pressure on the Examiners to quickly come to a decision, and we may expect that the average number of office actions per case will go down. I have already seen a tendency that the EPO summons to oral proceedings early in the proceedings, such as immediately after the first office action.

Sofia Åberg, European Patent Attorney and member of Awapatent’s EPC specialist team

IP Law – How hard can it be?

My trainee colleagues and I are now in the final stage of our first 5-week theory period. So many new impressions, new colleagues and new information have opened up for us, revealing an exciting new world of IP law.

When I first applied for the Trainee program, I had very little knowledge of the many facets of IP law and of how many different competencies I would need. Not only do you need to have technical ingenuity, but also an eye for the small details and the bigger picture, quick thinking and excellent people skills.

Even though we have been here only for a short while, all of these sides have already been put to the test, and to answer my own question: Yes, IP law is hard!

It involves a whole new way of thinking where the questions, unlike in many of my university courses, do not have any clear answers. Where each word have to be given careful consideration and every choice have longtime consequences. But it is also a great mystery that only my skills and I can solve. Together we embark on this great new adventure, in which I already feel a bit like a detective. Whether it is finding the perfect word for a specific sentence (who knew that consists of and comprises could mean so different things?), defining the essential feature of a new invention or discovering the specific detail that will make my office action response irrefutable.

I am positive that IP law and all of us trainees have a great future ahead of us. And dear IP law, you did not have me at hello, but you had me at Michael Jacksons Method and means for creating anti-gravity illusions patent.

Bianca Bothmann, Associate

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

Ideal conditions to learn about the world of IP

The first theory period of the trainee programme is coming to an end. It has been intensive weeks filled with lectures, but also with social activities such as the annual crayfish party at the Gothenburg office. Since the trainee programme started in the beginning of September we have visited Awapatent’s offices  in Malmö, Gothenburg, Stockholm and, most recently, the office in Linköping on a one-day-trip from Stockholm.

After many years at university I thought I finally had finished school once and for all. Now, only two years later, I am finding myself back in the class room again, learning quite different things from what I have been studying before. The IP world is new for most of us and for sure there is much to learn. We will have several years of hard work and studies ahead of us. However, as trainees we are given ideal conditions for succeeding with this task since, in my opinion, being a trainee must be the best way of starting a new job. Quite fast you get an overview of both the field which you will work within as well as of the company, and not to forget, you meet a lot of colleagues from the different offices.

During these first weeks, time has flown as it usually does when you have fun and a lot of things to do. I am now looking forward to the weeks at the home office to get some time to practice what we have learnt so far.

Elin Carlegrim, Associate