Wednesday whimsies

Queijo de Cabra Transmontano:
non-minor-amended PDO

Around the weblogs. Until this Kat met Meera Nair, he was unaware of her copyright law and policy weblog Fair Duty. Well, here it is, and it's definitely worth taking a look at.  Meanwhile, the MARQUES Class 46 European trade mark law blog lists another batch of "non-minor amendments" to EU protected geographical indications and designations of origin. This Kat would love to know how much scrutiny these non-minor amendments receive, what is their cumulative effect, whether the non-minor amendments always extend rather than narrow down the scope of protection and whether anyone is currently doing any research on this phenomenon.  Elsewhere The SPC Blog has just launched its 2013 seminar, which takes place on 2 July in the London office of Olswang LLP (near the Old Nick). Whether you love pharmaceutical patents to the point of extending them, or side with the generic drug industry in aiming to prise them away from patent protection, this is for you.

Turkish academic and katfriend Mehmet Artemel has been busily spreading the word that the International Conference on Managing Intellectual Property in Universities is about to take place, for the third  year in succession.  As before, the venue is the Bogazici University, Istanbul, and the event runs from tomorrow, 23 May, through to 25 May -- so even if you can't magic yourself there in time for the beginning, you might yet make it for the end.  The IPKat has asked Mehmet to let him know if there's anything particularly worth reporting, in which case it will find its way on to one or other of a number of IP weblogs. In the meantime, you can check out the programme here.

Some Indexes attract more
attention than others ...

This Kat has previously praised the Global IP Index, which is coordinated and edited by Taylor Wessing LLP partner and Katfriend Roland Mallinson, not least because some information about how people regard the IP rituals and routines in other countries is always fun, and also because it has an inherent capacity to encourage reforms in those countries that score badly when compared with others.  Each year's Index draws its data, and therefore its appeal, from the survey of IP owners and practitioners, including many readers of this weblog.  To refresh readers' memories, each year's report gives a snapshot assessment of IP regimes around the world and recent developments. In response to requests from practitioners and some government officials, this year's Global IP Index, the fourth, has now expanded the number of countries which it embraces [the 12 newly-listed countries include Switzerland, Ukraine, Indonesia and Thailand].  Says Roland:

"I hope this may appeal to your wider international readership as a result. However, there's still the option of narrowing responses to just a few countries and to answer anonymously if preferred, so it can still be done fairly quickly and painlessly".

If you enjoy sharing your opinions with others, or just enjoying doing online surveys, the link is here.

The MARQUES Workshops on trade mark coexistence agreements (or 'prior rights' agreements, if you prefer) are filling up nicely.  The first, in English, takes place in Rotterdam on 18 June (details here); the second, in German, will be held in Munich a day later (details here). If they work out as well as is hoped, with luck there will be more of them in the future, spread across other European cities.  But wouldn't it be grand to tell your grandchildren that you were there for the very first one ...?

Did celebrated artist 
Jackson Pollock start out
by designing infographics?

If you love brands and like to savour the occasional infographic, you will probably appreciate this one which has been brought to the attention of the IPKat by Exeter, England-based law firm Stephens Scown Solicitors. It contains some fascinating data relating to UK trade mark filings in 2011.  For example, did you know that three of the five top companies filing UK trade mark applications have names that end with the letter 'o'?  [Merpel adds: can you name them?].  Also, Welsh applicants file three times as many applications as those from Northern Ireland, and the Scots file twice as many as the Welsh -- but if you add Northern Ireland, Wales and Scotland together you get only around as many applications as appear to come from East Anglia.  So now you know ..

Speedypats can be okay -- if handled with care

Will it all be plain sailing for speedypats?

Little over a month ago ("Coming soon: Speedypats", here), this Kat reported on the proposal in the United Kingdom to grant superfast national patents in just 90 days.  He expressed some anxiety as to whether this was the right thing to do in terms of both theory and practice and, speculating as to how schemes for accelerated examination were working in the US and beyond, he asked his friends at Patexia for their view.  Here, Patexia's Daniel Porter tells us what he thinks:

"Speedypat machinery

As every kat knows, grooming quality patents takes time. In recent years a glut of patent applications has left IP offices worldwide in a near-catatonic state. Here in America typical inventors expect to wait several years to get get a patent issued; a delay that many recognize as possibly undermining the goal of promoting rapid, competitive innovation. The United States Patent and Trademark Office (USPTO), like the United Kingdom Intellectual Property Office (UKIPO) and corresponding agencies elsewhere in the world, is trying hard to get its system up to scratch. These attempts have been no walk in the park for those involved and, for this reason alone, last month's UKIPO consultation considering 90-day-or-less prosecution (on which, see discussion here) piqued my curiosity.

My initial reaction ("can they really do a good job of examining a patent in 90 days?") was more disbelief than curiosity. I was surprised to find that the consultation laid out a plausible scenario and timeline for such expeditious examination. My curiosity turned instead to the effects on patent quality and the purported benefits for SMEs, the economy, and innovation. This led me to investigate the details of the proposed acceleration service more closely. What does this mean for the mechanics of search and examination to those with fur in the game? Are these speedypats really the cat's whiskers?

Approaching acceleration

Many intellectual property offices around the world already offer expedited examination. Some of these programmes succeed in reducing examination times to less than a year, but the 90-day speedypats programme is unique in its alacritous ambitions. In my estimation, the superfast program's success will depend upon even more carefully navigating many of the same issues facing existing acceleration programmes.

The two most prominent USPTO acceleration schemes are known as "prioritized examination" and "accelerated examination." Prioritized (also known as "Track One") examination is the newer of the two programs, effectively allowing 10,000 applicants to request the opportunity to pay a little extra (currently US$ 4,000 -- or US$ 2,000 for a small entity) and skip their inventions to the "front of the line." Prioritized examination doesn't mean faster examination, but instead a quicker route to get to the examination stage.

Merpel never did quite get the idea of electronic filing

Accelerated examination, on the other hand, aims to reduce examination time itself by requiring more up-front information as well as increased responsiveness from the applicant. The required "accelerated examination support document" and "pre-examination search document" burden the applicant with the task of locating prior art and to differentiate the claimed invention from earlier innovations with a high degree of specificity. Accelerated examination also requires that applicants make use of the electronic filing systems; they are restricted to a shorter turnaround for responses to office actions and must be available for a phone interview with the examiner. Prioritized examination is more expensive than accelerated examination, though paradoxically many recognize the latter (which requires substantially more preparation) as resulting in stronger, more strategic claims. Both services limit the number of claims per application.

Existing UKIPO acceleration services (reasons-based acceleration, combined search and acceleration, early publication) are in effect similar to these USPTO services. There is more than one way to skin the accelerated-examination cat, though, and notable procedural differences exist. Where the IPO typically performs the search and examination stages separately, USPTO examiners perform a prior art search in conjunction with their examination. Where the IPO publishes applications after a preliminary search, the USPTO publishes most unaccelerated applications before reaching an examiner for the first time (they categorically publish all applications 18 months after filing.) Where acceleration with the USPTO is more costly than normal filing, IPO acceleration comes at no extra charge, but may require the applicant to demonstrate a good reason.

Both offices also offer acceleration of international applications, leveraging the time and resources spent by foreign patent offices.

The UKIPO superfast acceleration seems modelled as a condensed copycat version of the combined search and examination (CSE) process. After an initial search and examination the application undergoes a first amendment and re-examination stage, followed by publication for public comment and a second amendment and re-examination stage. Superfast patents will cost up to £4,000 on top of regular application fees, will require applicants file online, and could establish tight deadlines forcing applicants to respond with cat-like reflexes.

Significant question marks remain surrounding how to guarantee thorough prior art search and public review. Solutions could include revisiting prior art search more than once throughout the application process, and even after patent grant (possibly resulting in revocation). The current standard period for public review is three months. The consultation hints that the IPO is considering a reduced timeframe, and seeks public comment on the utility of this review.

What to expect

So the cat's out of the bag. Superfast processing seems possible in practice--an extreme case of similar acceleration schemes available in the UK and elsewhere. Questions remain about overcrowding, patent validity, patent value, innovation diffusion, and the effects on economic growth. Right now, the best we can do is guess based on the information available.

The first empirical analysis of patent acceleration seems to be a recent report by the International Centre for Trade and Sustainable Development (ICTSD). Its goal was to investigate patent acceleration for environmentally helpful technologies as a climate change initiative. The report focuses on 5,000 "green" patents in seven countries. In addition to concluding that these services do in fact result in reduced examination time, the study found through citation analysis that accelerated patents were more effectively disseminated than their unaccelerated counterparts.

The study detailed several other interesting findings as well.

First, participation in acceleration programs was low, but demand still exists for this choice of service (and this demand appears highest in the UK). This highlights a common response to acceleration; that delay in the patenting process is advantageous to many entities hoping to maximize the length of their patent protection. Overcrowding won't likely become an issue. A related concern arose in a previous consultation. Some worried that inexperienced entities without representation may choose accelerated examination when it is not in their business interests. In a similar vein, the ICTSD study found that communication regarding the advantages and disadvantages of these services could improve substantially.

Finally, accelerated green patents are more valuable than their unaccelerated counterparts. This value does not likely stem from the shorter time scales, but instead from the more careful invention selection and scrutiny encouraged by many acceleration programmes.

I remain skeptical that such a short time frame for patent prosecution can guarantee effective examination and prevent the hasty issue of applications that will be invalid when examined more carefully. The IPO will need to construct with care its rules surrounding public review and prior art search, possibly requiring additional prior art search before application filing similar to the USPTO's accelerated examination. Whether superfast processing will benefit small-to-medium and the economy more generally remains unclear. But it will help some, while improving technological diffusion and reducing patent pendency, so the IPO seems wise to at least offer the choice".

Thanks, Daniel, for your survey and for your thoughts, which this Kat very much appreciates.

Huawei: the Duesseldorf court presumes to ask

The Court of Justice of the European Union (CJEU) has been asked to consider some questions of vital importance to our understanding of how patent monopolies and standard-essential proprietary technologies fit in with the European Union's omnipowerful rules on competition and antitrust in Case C-170/13 Huawei Technologies. As the UK's Intellectual Property Office (IPO) succinctly summarises the underlying dispute, it concerns "a request for a preliminary ruling in a case concerning the abuse of dominant market position in the field of mobile communications technology". The questions referred for a preliminary ruling are:

1. Does the proprietor of a standard-essential patent who informs a standardisation body that he is willing to grant any third party a licence on fair, reasonable and non-discriminatory terms abuse his dominant market position if he brings an action for an injunction against a patent infringer although the infringer has declared that he is willing to negotiate concerning such a licence? [Says the IPKat, there's a good case for saying that, theoretically, this is a question that can be answered 'always', 'sometimes' or 'never' -- but the reality is, in his opinion, that what constitutes an abuse of a dominant position is a question of fact rather than a question of law. He wonders if the question could have been better drafted]

Or

Is an abuse of the dominant market position to be presumed only where the infringer has submitted to the proprietor of a standard-essential patent an acceptable, unconditional offer to conclude a licensing agreement which the patentee cannot refuse without unfairly impeding the infringer or breaching the prohibition of discrimination, and the infringer fulfils his contractual obligations for acts of use already performed in anticipation of the licence to be granted? [This Kat wonders how helpful such a presumption would be in practice where an injunction is sought, particularly in any field of fast-moving technological advance, since it depends on proof of so many variables. It might provide some measure of comfort where after-the-event relief is sought though]

2. If abuse of a dominant market position is already to be presumed as a consequence of the infringer's willingness to negotiate:

Does Article 102 TFEU [for which see full text below] lay down particular qualitative and/or time requirements in relation to the willingness to negotiate? [No. There's nothing laid down in Article 102 ... ] In particular, can willingness to negotiate be presumed where the patent infringer has merely stated (orally) in a general way that that he is prepared to enter into negotiations, or must the infringer already have entered into negotiations by, for example, submitting specific conditions upon which he is prepared to conclude a licensing agreement? [This Kat wonders why the referring court -- the Dusseldorf Regional Court, Germany -- is so keen to break down the fact-finding tasks into presumptions. It's a dangerous and slippery slope, particularly if, for example, the CJEU considers that such presumptions exist on these facts but it's not clear whether and, if so, to what extent, they might apply in other fields of technology in which essential standards practice is less well established]

3. If the submission of an acceptable, unconditional offer to conclude a licensing agreement is a prerequisite for abuse of a dominant market position:

Does Article 102 TFEU lay down particular qualitative and/or time requirements in relation to that offer? Must the offer contain all the provisions which are normally included in licensing agreements in the field of technology in question? In particular, may the offer be made subject to the condition that the standard-essential patent is actually used and/or is shown to be valid? [What's the betting that the CJEU will not engage this question at the level of detail at which it is asked, and will simply say that this is a matter for the referring court to resolve?]

4. If the fulfilment of the infringer's obligations arising from the licence that is to be granted is a prerequisite for the abuse of a dominant market position:

Does Article 102 TFEU lay down particular requirements with regard to those acts of fulfilment? Is the infringer particularly required to render an account for past acts of use and/or to pay royalties? May an obligation to pay royalties be discharged, if necessary, by depositing a security? [Ditto]

5. Do the conditions under which the abuse of a dominant position by the proprietor of a standard-essential patent is to be presumed apply also to an action on the ground of other claims (for rendering of accounts, recall of products, damages) arising from a patent infringement? [This presumes that there is such a presumption ...]

It's not so long since the IPKat praised the UK IPO for finally managing to give people enough time to enable them to make comments on the questions referred so that they could email Policy at the UK IPO and help the UK government decide whether it wished to make representations in the proceedings before the CJEU.  However, the request for comment on this case was emailed on 21 May (ie yesterday), asking for comments by today.  Fortunately, the IPO has now atoned for this folly and given a fresh deadline of 29 May for the receipt of comments.

How to pronounce Huawei here and here
How to pronounce Haway/Howay here and here

*************************************************

Text of Article 102

(ex Article 82 TEC)

Any abuse by one or more undertakings of a dominant position within the internal market or in a substantial part of it shall be prohibited as incompatible with the internal market in so far as it may affect trade between Member States.

Such abuse may, in particular, consist in:

(a) directly or indirectly imposing unfair purchase or selling prices or other unfair trading conditions;

(b) limiting production, markets or technical development to the prejudice of consumers;

(c) applying dissimilar conditions to equivalent transactions with other trading parties, thereby placing them at a competitive disadvantage;

(d) making the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.

Copyright and performance: reflections on a complex relationship

Although this Kat has recently been living with a spotty connection, which almost cut him off the blogosphere for a week, he noticed that Professor Rebecca Tushnet published a new article on 'Performance Anxiety: Copyright Embodied and Disembodied'. According to the abstract,

The primary economic and cultural significance of copyright today comes from works and rights that weren’t contemplated by the Framers of the Constitution’s Copyright Clause. Performance - both as protected work and as right - is where much of copyright’s expansion has had its greatest impact, as new technologies have made it possible to fix performances in records and films and as cultural change has propelled recorded music and audiovisual works to the forefront of the copyright industries. Yet copyright has never fully conceptualized performance, and this has led to persistent confusion about what copyright protects.

(c) Stephen Moorer

The author explains that performance, whose protection is usually justified either in relation to the presence of a technical element (the camera operator's choice of a shooting angle, the sound engineer's choice of a particular level), or of a creative one (the creative actions of the performers), 'is now the prototype for all works'. A play or score allows for a practically infinite set of performances; copyright, which expanded 'beyond exact copying to substantial similarity and derivative works', similarly covers an almost infinite set of potential variations. However, performance remained in the background, while copyright law focused on text and 'performance rights', and mainly dealt, in the digital era, with 'pure reproductions'. The article identifies several key issues in the relationship between performance and copyright: (1) how to identify the 'creative element' that makes a work of performance original and protectable, (2) who should be deemed its author and how to deal with joint authorship, and (3) how to assess infringement in this context. Let's briefly look at Professor Tushnet's view on each of these issues.

Creativity and fluidity
The author observes that plays and scripts, although meant to be performed, are protected as works, and that only certain performances are protected under US law (e.g. performances of a musical work or play, fixed in sound or audiovisual recordings). The protection of movies and other audiovisual works raises the possibility of recognising a separate protection for the dramatic work thereby depicted. Copyright law, however, 'has often ignored the fluidity of creativity, especially when it comes to works that are performed'. Contrary to literary works, performance is 'less fixed and predictable', as it is based on interaction between performers, which produces a unique interpretation of the underlying plot. According to the paper, this fluidity 'is inherent in any work under modern copyright law', and the boundaries of a work only emerge through comparison with other similar works:

Every copyrighted work is therefore like the script for a play: it is a blueprint, but not just for one particular instantiation. Rather, the blueprint can have a potentially infinite series of variations. All works are surrounded by possible derivative and infringing variants, most unrealized. However, as copyright’s scope expanded, the conception of a work of art, paradoxically, hardened.

Professor Tushnet describes the sacralization process that focused on a 'single canonical performance as the embodiment of a work', explaining that a static work raises fewer legal concerns than a changeable performance. To underline how performance may affect, and change, the meaning of the underlying work, she provides an exhaustive list of examples, ranging from Tina Fey's parody of Sarah Palin, to Jimi Hendrix's performance of The Star-Splanged Banner. The trasnformativeness of performance may not be widely recognized yet, but sensitivity towards it appears to be on the rise. The author cites the recent case of Keeling v New Rock Theater Prods as an example of this enhanced sensitivity, but warns that ' [i]f we don’t have a good vocabulary for explaining how meaningful performance is, it should come as no surprise that we don’t even know how to give credit to performers'.

(Joint) authorship
'[C]ontroversies over performance works', the paper notes, 'make up a large share of disputes over joint authorship in the U.S. system'. The courts' tendency to award authorship to a single person (motivated by the fact that joint authors share equally in the rights to a work, and can license the work non exclusively without the consent of the other authors) 'often leads to dismissiveness regarding the real creative contributions of others involved in bringing a work of performance to its audience'.

Kats are real performers!

The author recognises that economic reasons explain the focus on the doctrine of 'work made for hire', and that compensation for performers is usually expected to come from direct payment for their work, rather than from royalties. However, '[t]he ideology of creativity as the foundation of authorship suggests that (some) performers should count as authors'. Although contracts usually address the issues of authorship, through a 'work made for hire' clause, identifying the author remains important for many purposes. The inherent limitations of the test for joint authorship applied by US courts (which look at the specific intent to share authorship, and at customary roles), contribute to 'freezing notions of authorship and discounting the contributions of people who play vital roles in the form and content of the final work but who didn’t write scripts for it'. This flow could threaten copyright’s legitimacy, denying protection to creative contributions (the paper examines these issues in the context of some well-known cases, including the 'Innocence of Muslim' video, on which the IPKat commented here).

A plausible solution, according to the author, is to openly identify 'specific roles eligible for joint authorship treatment ..., making explicit judgments about manageability rather than implicit judgments about value'. On the other hand, instead, an overall reform of the system, through the allocation of interests proportionally to the contributions, or by partitioning copyright into smaller parcels, recognising 'microworks', would probably have an overall negative impact on the protection of authors' rights and third parties.

Performance as infringement

'Infringement inquiries', examined in the last part of the article, 'also raise difficult questions about how to compare distinct media, particularly when one medium includes a performance element and the other doesn’t'. The comparison requires a high level of abstraction, which calls for an appreciation of the inherent differences between the media (for example, literary analysis should not be applied to a movie). Professor Tushnet notes that courts have generally taken these aspects into account, when comparing movies with texts ('recognizing that film’s narrative techniques generally involve completely different kinds of expression than written texts') or with photos (the former being a 'wholly dissimilar and dynamic medium'), and when dealing with videogames (reasoning that 'infringement had to be evaluated in the context of the experience of gameplay rather than simply looking at screenshots'). Similarly, according to this study, jurors exhibit a high sensitivity towards performance, when comparing musical works.

Citing Newton v Diamond (where a court was confronted with the difficulties inherent to the distinction between performance elements and sound recording, and allocated the former to the latter), the author exhibits a cautious approach towards the shift away from written scores, in the context of musical works. 'More generally', she explains, 'careful consideration of performance elements in infringement claims may require courts to go beyond the terms with which they are familiar - plot and melody primary among them - and consider narrative techniques, rhythm, and other features that may affect similarity judgments'. Thus, courts 'should be skeptical about performance-based or cross-genre infringement', as the comparison of works and the identification of the contributions of performance elements represent key difficulties in this process.

Focusing one's sights on invalid dependent claims

Here are the conclusions from a recent case in the Patents Court (the last two paragraphs of the judgment with some explanatory notes added by the IPKat for context).

228. As appears from my treatment of the issues above, I have concluded that Leica's challenges to the validity of the Patent fail [these challenges mainly being novelty and inventive step attacks on claim 1, as well as some sufficiency and added subject-matter issues]. I have also found that Leica's riflescopes infringe the Patent.

229. It may be that the findings that I have made demonstrate the obviousness of claim 3 of the Patent [this being a conventional dependent claim,” as claimed in claim 1 or 2”] from the IOR riflescope, but I will hear further argument on that point and also as to the consequences of my other findings, the relief to be granted, and as to costs.

The IPKat’s whiskers started to twitch reading these conclusions. His understanding is that conventionally, a dependent claim can save a patent where the independent claim lacks novelty or inventive step, but the opposite is rarely true. In other words, it is unusual for a dependent claim to be anticipated or obvious, while the independent claim basks in the warm glow of novelty and inventive step.

The judgment in which this finding was made is Swarovski-Optik v Leica Camera [2013] EWHC 1227 (Pat) and it runs to 229 paragraphs over 76 closely spaced pages. To be fair, about a third of the 76 pages are accounted for by a full translation of this German-language EP(UK) patent specification, and some lengthy quotations from the case law.

The IPKat believes this to be the first patent case to be decided by Mr Justice Vos in his capacity as a Nominated Judge of the Patents Court. It may also be his last, given his elevation to the Court of Appeal in March 2013. He is not entirely a stranger to the field of IP though, having decided a couple of trade mark and passing-off cases, notably United Air Lines Inc v United Airways Limited (discussed here), and Lady Gaga v Moshi Monsters (discussed here).

Unconventional dependent claims 

Back to the IPKat’s twitchiness. One can conceive of unconventional claims which are framed to appear dependent but in fact are not, e.g.

1. A room having walls, a ceiling, and a floor, and characterised by a light bulb within the room which is powered to provide illumination.

2. A room according to claim 1, in which there is no light bulb, and illumination is provided by a transparent window in the walls, floor or ceiling.

Patent attorneys are trained not to write claims in this way, but perhaps such cases could slip through the cracks once in a while. Faced with such a claim, one would expect judicial criticism of the claim’s clarity: how can the room of claim 2 be “according to claim 1” and yet omit the light bulb which is essential to claim 1? In construing claim 2 one would probably have to notionally rewrite it as a separate independent claim, sans lightbulb. Either way, it’s unusual and would normally occupy a good deal of reasoned comment if its validity were impugned.

The claims in Swarovski

A conventional riflescope. A distant, unthreatening animal (not shown) to the left, is rendered large, nearby and threatening to the eyeball on the right. Quick! Shoot it!

Claim 3 in Swarovski v Leica is not some sort of mutant claim which deletes or replaces a feature of the independent claim. It actually looks entirely conventional. The claims were directed to riflescopes which normally have an objective lens at one end, an eyepiece lens at the other end, and in between these one finds a system of internal lenses (labelled as the field lens and movable zoom relay lens elements in the diagram above) which magnify the image and turn it the right way up. On either side of the internal lens arrangement there are two positions where the object being viewed is in focus, these positions being “image planes”.

In the invention of claim 1, paraphrasing somewhat, an additional negative lens (coloured orange in the second diagram below) was provided to improve the image seen through the eyepiece. An important question of construction of claim 1 focused on (sorry) where this new lens was positioned, relative to the image plane 10 nearest the eyepiece 5.

The claimed riflescope with the extra lens shown in orange. What mattered was the position of this lens relative to the image plane (10)

In other words, did claim 1 require the lens 10 to be on the objective side of the image plane 10 (i.e. to the left, as shown above), or could it be on the eyepiece side (right) of that plane? The broader construction would have left the claims more vulnerable to attack based on the prior art and Leica argued for that interpretation.

Construction of the claims

Claim 1 did not mention the relative positions of the lens and the image plane, but it required that the new additional lens had to be “integrated in” the system of inverting, zoom lenses, and “disposed on the end of the inverting system facing the eyepiece”. The judge held that on its proper construction, this meant that the lens had to be

“at the end of the inverting system, but still as part of it [optically, if not mechanically], some way to the objective side of [the] second intermediate image [10]”.

Claim 3 seems at first glance to do little more than confirm this interpretation in different words:

3. Telescope or sighting telescope as claimed in claim 1 or 2, characterised in that the optical beam deflecting device [i.e. the negative lens] is disposed on the side of an eyepiece-end image plane (10) of the telescopic device pointing away from the eyepiece (5).

So claim 3 says that the lens is disposed on the side of the intermediate image plane (10) which points away from the eyepiece, i.e. the objective side. Claim 1 is construed by the judge to require this lens being positioned “some way to the objective side of the second intermediate image (10)”. Surprisingly (to this Kat at least), the judge concludes that claim 3 is “an alternative to claim 1”, based on a paragraph in the description which reads:

[0017] It has proved to be of practical advantage if the optical beam deflector device 2 is disposed on the side of the inverting system 1 facing towards the eyepiece 5. It is also advantageous if it is positioned on the side of the eyepiece-end image plane 10 facing away from the eyepiece 5. [The first sentence is essentially parroting an integer of claim 1; the second sentence is parroting claim 3]

Specifically, the judge found, that “claim 3 broadly mirrors the words used in the last sentence of paragraph 17, and is, as it seems to be, envisaging a different position closer to the second intermediate image than claim 1, but not on it [the image plane] or on the eyepiece side of it.”

Even after several readings this Kat is not entirely sure he follows the construction of claim 3, but his best interpretation of the judgment is that while claim 1 requires the negative lens to be “some way” from the image plane on the objective side, claim 3 also puts the lens on the objective side, but much closer to the image plane than the “some way” inferred from the construction given to claim 1. Confused yet? The IPKat certainly is, on the grounds that the exercise of construing the claims should lead to greater clarity rather than less, and if the scope of claim 1 hinges on the meaning of “some way from”, it is difficult to see how this allows the parties to understand what the boundaries of the claim are.

The conclusion that claim 3 is an alternative to claim 1 does not get a great deal of discussion in the judgment, and certainly is not presented as a surprising or unconventional interpretation (unless the IPKat has missed some nuance of the judgment).

The IPKat suspects and indeed hopes he is missing something crucial, and will be grateful to any readers who can provide their own thoughts on the construction given to claims 1 and 3.

Prior use and "normal usage"

There is more to this judgment than just this unusual issue of construction. Another finding which caused the IPKat to pause in his tracks was found in a discussion of prior use. The prior rifle scope had a negative lens (as in the invention) which normally was located to the right of the image plane, i.e. on the eyepiece side of it, rather than on the objective side as claim 1 was held to require. Interestingly, evidence was given that in some situations, such as when focusing on a close target with high zoom, the negative lens would inevitably be located slightly to the left of the image plane (in the position of claim 3 perhaps). The judge gave little weight to the fact that the prior use could be in this configuration, because one would not normally keep the lens in that configuration for hunting, and thus “in normal usage” the lens would be on the opposite side of the image plane, and outside the scope of the claims. It was not clear from the judgment if it was alleged (or disputed) that the prior art scope had, before the priority date, in fact been placed into the anticipatory configuration, and if so, whether that could be safely ignored because it was not normal usage.

What happens next? According to the final paragraph, the judge has yet to hear the parties on the claim 3 issue, or on the form of order to be made, but the IPKat will keep readers posted. In the meantime, please do add a comment if you make it through this longish judgment and come to a firm conclusion on how claims 1 and 3 have been construed.

Quibbling over minutiae? Or has something been overlooked? Concerns over UK implementation of the UPC Agreement and Unitary Patent

This Kat has previously posted a couple of concerns about the implications of some details of the unitary patent and the Unified Patent Court Agreement - see here and here.

Now this moggy is concerned about the UK ratification of this legislation.  He has been reading the recently published Intellectual Property Bill, and now he has just seen the interesting comments from Alan Johnson posted by blogmeister Jeremy below.  But this does not address a further issue that has been in the mind of this feline. It may, prods Merpel, be a small matter, but we are now at the stage where most of the large matters have been raised, and the small matters too require attention.

The Bill gives (at Clause 16) the Secretary of State power to make provisions that are needed to give effect to the UPC Agreement (subject to the safeguard that any draft order must be laid before and approved by each House of Parliament). However, there is no power in the Bill to make any order in relation to the Unitary Patent.

Nevertheless, Article 4(2) of the Regulation creating the Unitary Patent requires Member States to make arrangements to remove the national effect of a European patent once it has unitary effect.  It states:

The participating Member States shall take the necessary measures to ensure that, where the unitary effect of a European patent has been registered and extends to their territory, that European patent is deemed not to have taken effect as a national patent in their territory on the date of publication of the mention of the grant in the European Patent Bulletin.

The IPKat can see no such proposed measures in the Bill.  And he cannot see how the UPC and the Regulation can properly come into effect without such arrangements having been made.

"But EU Regulations have direct effect" the IPKat hears his readers cry. That may indeed be true, but surely a Regulation requiring Member States to perform an activity to then has to be followed by the Member States performing the required activity -  in this case, making changes to their national law. Alternatively  if the UK does not introduce any such measure, does it mean that a Unitary Patent will keep its national effect in the UK, in additional to its trans-EU-(minus a few countries)-effect?

Merpel suggests that it is possible that the Government is planning a further Bill, but it seems to the IPKat  hardly likely that HMG is intending to make parliamentary time for the passing of two separate intellectual property Bills when one would clearly do. Can it be that the terms of the Regulation have not been properly considered? Or is there something that your humble servant has missed?

As usual, dear readers, at this point the IPKat turns over to you for the wisdom of the crowd.

Monday miscellany

New blog on the block. The IPKat was delighted to learn from his former colleague, Katonomist Nicola Searle, that the UK's Intellectual Property Office (IPO) is today launching IPO Facto, a research blog for the IPO's economics team. Merpel always gets this feeling that economists blogging about intellectual property rights is like atheists blogging about deities, but the IPKat is sure that much interesting material will emerge from this exercise and wishes it every good fortune.

For some folk, the problem of what to wear
at garden parties is an intractable one ...

Time to come to the aid of the party.  What is there to compare, in the great social whirl that characterises life in our time of recession, with the English garden party?  Well, the season for garden-partying is upon us, bearing in mind the changeable nature of the local weather conditions, this is good news for manufacturers of umbrellas as well as for purveyors of sparkling wines. But even if it rains there won't be many drips among the sparkling personalities who populate the AIPPI UK annual garden party. The date: 27 June 2013, 6 to 8.30 pm, Middle Temple Gardens. "A veritable bargain at £25 per person", says Merpel, who has never been known in her entire life to pay for anything ...  Details and registration here.

3 August 2013 is a big day for anyone involved in the protection of innovations in or arising from Saudi Arabia.  According to a media release from the World Intellectual Property Organization, Saudi Arabia is acceding both to the Patent Law Treaty and to the Patent Cooperation Treaty (PCT) -- which now boasts no fewer than 147 cooperating states. The map on the right, explains the IPKat, shows PCT nations in dark blue and the rest of the world in pale blue.  Merpel's relieved to hear this: from the chilly colours she thought it was something to do with the next Ice Age.

Around the weblogs. "The folly of crowds in contract drafting" is Mark Anderson's latest post on IP Draughts, this being "inspired by the words of Neil Wilkof, who recently posted an excellent article on the IPKat blog with the title: The IP Lawyer’s Nightmare: “But Everyone Else Does It”. Thanks Mark, the admiration's mutual!  More admiration goes to the Afro-IP weblog where recent posts from new team members Caroline Ncube (here) and Isaac Rutenberg (here), together with the ever-active Kingsley Egbuonu (here), are doing so much to show how much IP means to Africa, and vice versa.

Hatching Europe's Unified Patent Court: who will pay for the chickens and eggs?

Imminent patent reform "delayed".  Only three months after (most of) Europe's finest attached their signatures to the Unified Patent Court (UPC) proposal, the official view on the likely start date has slipped by a year from early 2014 to early 2015, says Alan Johnson, IP partner at Bristows, whose own best-guess "not before" estimate has itself been put back a year to early 2016. According to Alan:

Unlike a cake, ratification
can't be delivered on a plate

“First, the timetable for UK ratification is now clearer, it being recalled that the UK is one of the three mandatory countries who must ratify for the UPC (and unitary patents) to come into existence. The new Intellectual Property Bill [click here for the Bill, here for the Intellectual Property Office's Bill page] contains a new section for the Patents Act which aims at starting the ratification process. The plan is that this section will enable the Secretary of State to take a power to enable the UK law to be made UPC-compliant by the passage of a Statutory Instrument (SI) implementing further (as yet undrafted) changes to the Patents Act. Then once the SI is approved by Parliament, the Foreign Office will seek separate Parliamentary approval for the UPC Treaty itself via a “command paper”. It is not likely that the SI will be approved until summer 2014, and the command paper will not be presented until April or May 2015. If one then adds four months, as required by the UPC agreement, this means an earliest start date of autumn 2015, even allowing for no slippage in current planning, and even if all other ratifications have been completed by then. 

What‘s more, the April/May 2015 date for laying the command paper before Parliament is suspiciously adjacent to the time the next General Election is anticipated [the previous election being held in May 2010, both parties to the ruling coalition promising that Parliament would run for a full five-year term], and raises the question as to whether there is a connection here: will ratification in fact be stood over until the next Parliament? Does the Government (or at least one coalition partner in it) have in mind the potential for a UK in/out referendum in the next Parliament? 

Ready to cleave?

There are also two, more mundane possible reasons for this leisurely timetable. The Government may have in mind the complicating effect of the Scottish independence referendum with its potential to cleave the UK [there being uncertainty as to whether Scotland would remain part of the EU or, as seems more likely, would have to apply for membership]. There is also the second Spanish legal challenge to the legality of the new regime to be decided, where the decision may be expected in early 2015. Again, is there a connection? Is the plan to await that outcome of the Scots' referendum and the Spanish challenge decision?"

But there's more to come and it's a chicken-and-egg conundrum: the UPC can’t exist until it has been ratified. Alan continues:

Life as a model for IPKat weblog
illustrations can be so embarrassing ...

“The second reason for there being more delay in the schedule is that it has become apparent that there is a chicken and egg problem with the UPC. It does not exist as a legal entity until four months after the final relevant ratification. Until then it cannot (in particular) hire judges and other staff, nor procure a computer system. But without that having been done, it cannot open for business. The result is that some other legal entity must take on these responsibilities and then effect a handover to the UPC on day one of its existence. This entity, moreover, must commit to paying judicial salaries (and pensions) and to funding the computer procurement (a process likely to take an absolute minimum of 18 months) [Merpel is sure that the Europeans will take a principled stance on this matter, since she regularly hears tales of less fortunate countries where the judges are paid by the litigants ...]. 

But if a legal entity is to be created, who will own and fund it? Will it be the Governments of (say) the UK, France and Germany? How can each state commit to such an undertaking until it knows that its own legislature will, in fact, ratify, still less with the uncertainty of the ratification by the other two (and a further 10 states)? Remember also that the UK has said that it will undertake an economic impact assessment before ratification. If that is required, how could the UK sensibly commit to major expenditure and liability beforehand? Germany (at least) is also likely to want to “do the sums” and be sure of the commitment of other states before getting its cheque book out. 

Does this point to a lengthy period of awaiting the requisite numbers of ratifications, with one (or all) of UK, France and Germany holding back from depositing their instruments of ratification so as to ensure that the UPC does not then start automatically four months later, and these Governments only then committing to the expenditure required?” 

So, looking beyond the mere reality, what does Alan see in terms of principle?

“One can sense that the degree of political commitment to the UPC project has not diminished at all in the last three months [the IPKat has seen a lot less evidence of commitment, but assumes that this is because the battle has been fought and won/lost, so that statements of political commitment have become less necessary], but one can also see that the realisation of how much there is to do, and the financial commitment this will entail, may, at a purely practical level, cause more delay than the Commission envisaged, even privately [It's curious that, a year or so ago. many warnings about how much would have to be done were seen as expressions of obstruction from industry and the professions. Now such expressions must be taken on board]. My sense is that this project will not be derailed. However, there is so much to do, and it needs to be done well - something that has not escaped the notice of those responsible in the UK at least for the practical implementation of this project. Realistically, therefore, we believe that the first half of 2016 is now the date users should have in mind as the earliest likely start date”.

The IPKat wonders how many cycles of chicken and egg production will have taken place before the UPC opens its doors to its first litigant.  Merpel reminds readers that it is unwise to count one's chickens before they have been hatched.

What do readers from other jurisdictions think? Is Alan being pessimistic or realistic?  Do other countries have time-table issues too? Do let us know.

Which came first? The chicken or the egg? Here
Counting chickens before they are hatched here
Ballad of the unhatched chicks here
Playing chicken here

And 12 Points go to ... Ukraine

Uncle Sam, under the authority of 
the USTR, wants you to behave...

Despite what the title might suggest, this post is not about the European's beloved festival of kitsch, where washed-up pop acts from the 90's and overzealous casting stars gather to celebrate some form of "Europan integration". This Kat's attention is not so much attracted by the soft diplomacy of yesterday's Eurovision Song Contest [although there is something intriguing about it] but rather by the harsh rhetorics of U.S. trade policy that we witnessed earlier this month.

We know that Uncle Sam doesn't get tired of flexing his muscles; and that he has a passion for lists, particularly for black ones. One of his favourite is the yearly Special 301 Report, where all IP rough states that deny "adequate and effective protection of intellectual property” or “fair and equitable market access for U.S. firms that rely on intellectual property" are pilloried. The Report distinguishes between bad states, which are placed on a "priority watch list", and evil states, which are classified as  "priority foreign countries" (PFC). In the post-TRIPS world, only three countries have experienced the honour of that status: China in 1996, Paraguay in 1998 and Ukraine from 2001 until 2005. The Ukraine has been spared for the past eight years (it has been on the watch list since then), but Uncle Sam's patience is wearing thin. In the 2013 Special 301 Report (see here), our eastern neighbours have once again been awarded with the highest distinction from Washington: a PFC classification.

According to this year's Report, the downgrading of Ukraine is the "cumulation of several years of growing concern over widespread IP theft, including the growing entrenchement of IPR infringement that is facilitated by government actors". The Report criticizes

(1) the unfair, nontransparent administration of the system governing collecting societies, which are responsible for collecting and distributing royalties to U.S. and other rights holders;
(2) the widespread and admitted use of pirated software by Ukrainian Government agencies;
(3) the persistent failure to implement an effective system to combat online piracy, including the lack of transparent and predictable provisions on intermediary liability and liability for third parties that facilitate piracy, limitations on such liability for Internet Service Providers (ISPs), and enforcement of takedown notices for infringing online content.

As a consequence of Ukraine's PFC designation, the U.S. Trade Representative has 30 days to initiate an investigation with respect to the contested acts, policies and practices (see 19 USC §2242). Possible remedies include the suspension of benefits of trade agreement concessions, the imposition of duties or other import restrictions and the suspension of the Generalized System of Preferences (GSP), which grants preferential treatment to developing countries (see 19 USC §2411).

The Special 301 Report is not just another example of the United States' devotion to rigorous IP protection, both at home and abroad. It raises a more fundamental question about the relationship between Section 301, which authorizes the U.S. Trade Representative to sanction other countries for an act, policy, or practice which either "violates, or is inconsistent with, the provisions of, or otherwise denies benefits to the United States under, any trade agreement", or, "is unjustifiable and burdens or restricts United States commerce" (see 19 USC §2411), and the autonomy of international trade law. Inspired by a recent post by Katfriend Sean Flynn, this Kat has been wondering whether such unilateralism is compatible with WTO law. According to Art. 23 of the Dispute Settlement Understanding, "Members seeking the redress of a violation of TRIPS obligations shall have recourse to, and abide by, the rules and procedures if that understanding. They shall not make a determination to the effect that a violation has occurred, except through recourse to WTO dispute settlement". Although [or perhaps precisely because, says Merpel] the complaints against Ukraine do not seem to be directly related to a violation of the TRIPS Agreement, but rather to a lack of TRIPS-plus protection, they leave a bitter aftertaste. Unilateral threats to suspend concessions or other obligations under GATT as a sanction for allegedly "inadequate and ineffective" IP protection disrupt the very stability and equilibrium which multilateral dispute resolution is meant to foster.

Whatever the merit and the outcome of the upcoming Section 301 investigation, our friends from across the pond have once again lived up to their reputation as IP colonialists. Ukraine is probably not the right candidate to step up against the world's largest economy and one of its major trading partners. But there are a few potential PFC candidates on the priority watch list that will be delighted to challenge the aggressive unilateralism in U.S. trade policy.

Friday fantasies

Here's a reminder for readers who quite properly concern themselves with such trivia as whether they are giving (or taking) legal advice that comes from a reliable source.  The Official Journal of the European Union has published on a number of occasions the following Notice to Readers:

Council Regulation (EU) No 216/2013 of 7 March 2013 on the electronic publication of the Official Journal of the European Union 

In accordance with Council Regulation (EU) No 216/2013 of 7 March 2013 on the electronic publication of the Official Journal of the European Union (OJ L 69, 13.3.2013, p. 1), as of 1 July 2013, only the electronic edition of the Official Journal shall be considered authentic and shall have legal effect. 

Where it is not possible to publish the electronic edition of the Official Journal due to
unforeseen and exceptional circumstances, the printed edition shall be authentic and shall
have legal effect in accordance with the terms and conditions set out in Article 3 of
Regulation (EU) No 216/2013.

Bangladesh: do brand owners contribute
to the problem -- and can they help to part
of the solution?

Around the weblogs. Class 46 announces that MARQUES's Rapid Response seminar on the latest EU trade mark reform proposals this coming Monday is now so popular that it's going to be webinared too. The same blog carries a request for feedback on the excellent draft paper on the unitary nature of the Community trade mark presented by Lukasz Zelechowski at the INTA Meeting in Dallas earlier this month.  On the copyright-focused 1709 Blog, John Enser wonders whether the leaked news an expected outbreak of site blocking orders against internet-based copyright infringers is likely to perturb rights holders, while the ever-inspirational Ben Challis takes a look at the latest developments concerning copyright trolls in that vast and increasingly interesting jurisdiction of Canada -- and indeed further south. The fifth Brave New World post in Don McCombie's series for PatLit delves into the mechanics of some of those dull but necessary things that make patent enforcement a reality in the new Europe, such as provisional injunctive relief, freezing of assets and orders preventing the destruction of evidence. Finally, shifting from Europe to Bangladesh, Neil Wilkof treats IP Finance readers to his thoughts on what it means for brand owners to be known to have sourced their high-value products from the factory complex in which so many workers so tragically died.

This Kat is delighted to learn that his friends at Edward Elgar Publishing -- which publishes loads of intellectual property books including the Research Handbooks in Intellectual Property Series (which this Kat edits: see eg here) --  has won the 2013 award for Independent Academic, Educational and Professional Publisher of the Year at the annual industry awards hosted by the Bookseller in London this Monday.  Congratulations, says this Kat, who adds that the folk from Edward Elgar are fun to deal with.

Next Wednesday, 22 May, if you are in London and have nothing better to do (and it may well be that there is nothing better to do), the Competition Law Association holds its second session on procedural rights -- a subject which should be of interest to IP experts too. The full title of the event is "Legal principles for disclosure in the antitrust context" and the speakers are Kassie Smith QC and Eddy de Smijter. The venue is the London office of Arnold & Porter UK LLP, International Financial Centre, 25 Old Broad Street [note for US readers: this street is not named after any old broad ...], London EC2N 1HQ Click here for details.

Professor Hovenkamp
in visionary mode

Spanning two sets of dates (12 to 13 and 18 to 19 June), University College London's Faculty of Law  has a CPD course coming up on "Innovation, Competition Law and IP Rights". This course has been put together by UCL's Centre for Law, Economics and Society and it is taught by Professor Herbert Hovenkamp (University of Iowa). The 16 CPD points come at a price --you have to take 16 hours of tuition in order to get them.  The course analyses the value of competition law in addressing a variety of practices used in innovation-intensive markets. These include the interconnection of networks, ‘duties to deal’, the licensing and distribution of IP rights (standard setting organisations and patent pools) and reverse settlements as adopted by firms active in the manufacturing and delivery of services or non-practising entities, drawing from examples in both EU and US law. You can get further details and register here.  Best of all, if you quote your VIP Katcode of  ipkat2013hovenkamp, you can enjoy a full 10% discount off of the standard ticket price.

If the judges are like this, what
must the enforcers be like?

Tipple Dine with TIPLO? The Intellectual Property Lawyers Organisation (TIPLO) is hosting its next dinner on Tuesday 6 June. The subject? "The Enforcement Directive comes of age, its effect on IP remedies including: Damages after Boehringer II and Hollister, Final injunctive relief, Punitive damages, Blocking injunctions and Publicity orders after Apple v Samsung".   This promises to be a seriously internationally event, since there will be a discussion of the English and Scottish experience led by Mr Justice Birss and Lord Glennie.  Lord Justice Floyd is chairing the event, no doubt to add a touch of sobriety to the proceedings. Further particulars and registration here.

"What's in it for us?"

As if this wasn't enough, the lions and the lambs -- or at any rate their biped equivalents -- are lying down together.  The UK's Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) are commendably holding a joint seminar on "The 2013 Intellectual Property Bill -- What's in it for us [how lovely, says Merpel, to hear that question, so often camouflaged with euphemisms, actually asked directly!] and our clients?"  This is actually an extremely cogent and relevant half-dayer, manned and womanned by a strong team of practitioners drawn from not only the lions and the lambs but also from the ranks of the solicitors. It would be a shame to miss it even though 7 June does look suspiciously like a Friday afternoon. Click here for information, inspiration and registration.