For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 30 November 2009

eBay told: "pay €1.7million" in LVMH dispute

The Guardian has just reported ("Illegal perfume sales cost eBay £1.5m in fines") that a Parisian court has ordered eBay to pay more than £1.5m for breaching an injunction that banned its users from trading in goods made by French luxury conglomerate Louis Vuitton.


Right: vintage 1950s Max Factor Sophisti-Cat perfume

The court has apparently ascertained that the online auction host had not done enough to prevent the trade of goods made by LVMH, which owns brands such as Louis Vuitton, Moet Hennessy, Givenchy and Christian Dior. The article adds:
"The auction website had been banned from letting such sales take place following a 2008 court case [This ruling, translated into English, will appear in the February 2010 issue of the European Trade Mark Reports, unless the IPKat can get its release accelerated] but the court found that there had since been more than 1,300 incidents in which users advertised cosmetics and perfume made by the company.

LVMH said the award was a victory in its fight to retain the right to "selective distribution" - control over which outlets are able to sell its goods.

"This decision constitutes an important step in the fight against unlawful practices," said the company. "Selective distribution ensures the security and quality of products for consumers. It generates numerous jobs and contributes to the ongoing worldwide success of European luxury goods brands." [Selective distribution is one of those areas where the tectonic plates of IP protection and competition policy grind against each other]

In the belief that its high-value brands will be hurt if they can be resold online, LVMH has been waging an ongoing battle against internet retailers such as eBay for several years.

Last year it registered a significant victory in which the auction website was ordered to pay £30m in damages.

That ruling took place after it emerged that fake goods using LVMH's brands were being sold on eBay, but the ruling extended to preventing the sale of any of the company's goods on the site - regardless of whether they were pirated or not.

In a statement, eBay said the fine was "disproportionate" and that it would be appealing the decision in higher courts, since it believes that the injunction constitutes an unfair restriction of trade.

"Today's outcome hurts consumers by preventing them from buying and selling authentic items online," said Alex von Schirmeister, the general manager of eBay in France. "The injunction is an abuse of 'selective distribution'. It effectively enforces restrictive distribution contracts, which is anti-competitive."

The French conglomerate has also taken action against Google, which it says is acting illegally by selling search advertising using the company's trade marks". [Despite some rumours to the contrary, there is still no evidence that the Court of Justice of the European Communities, which is currently considering a number of questions arising out of this dispute, will give its ruling before the end of the year.]
What's not clear to the IPKat is whether the decision represents a triumph for Louis Vuitton because of its outcome or a disappointment for luxury brand owners given the relatively small size of the award in contrast to the turnover in deals involving luxury goods. The Kat is however sure that the saga will not stop at this point: both in terms of profits and principles there's far too much at stake. Merpel says, on behalf of all cats I'm thinking of bringing a class action against all the perfume manufacturers who make perfume out of cats.

See also reports from the BBC, Times Online, Bloomberg
Art for Cats online auction here

Monday miscellany

Now that the Canon Mystery Case (see earlier posts here and here) is no longer so mysterious (thanks, once again, to all the IPKat's readers), there's another mystery. A well-informed source tells the Kat that there's another reference to the Court of Justice of the European Communities involving Canon: it's down on the list as Case C-449/09 and there is no sign yet of any documentation. Could this be the same Bulgarian case returning to Luxembourg in a less manifestly inadmissible manner? Are any of this blog's readers perchance involved in it? Do tell, please ...!



Toshiko Takenaka's publishers, Edward Elgar Publishing, are donating a copy of her book, Patent Law and Theory: a Handbook of Contemporary Research, to be raffled for the benefit of one of those fortunate enough to attend her seminar on Tuesday 8 December (details here, if you'd like to attend). IPKat team member Jeremy is fond of this book, which even with the online discount costs £175.50, since he contributed a little chapter to it.


The ever-enthusiastic Emir Aly Crowne-Mohammed, Assistant Professor at the University of Windsor and a bit of a blogger himself, is also Co-Chair of the Harold G. Fox Moot. It is in this capacity that he writes to ask the IPKat to spread the word. On 19 and 20 February the Moot will be upon us all. Although it takes place in Toronto, there is no doubt that this great Canadian tradition, now in its second year, will make itself felt wherever IP is argued about. For full details be sure to click here. The IPKat very much enjoyed the mooting in which he participated, and hopes that all readers within this moot's catchment area will give it their fullest support.

Right: Harold G. Fox, in one of his lighter moments ...


Usually when the IPKat receives a free book in his post, it's because someone wants him to say something nice about it -- which he generally does. Sometimes, though, he receives a book which is a complete surprise to him. One such book, received and greatly enjoyed last year, was The Lives of Ants by Laurent Keller and Elizabeth Gordon. Another, arriving last week and definitely too heavy to carry back to the post office, is OUP's Media Libel Law 2009-10: Reports from all 50 States, the Federal Courts of Appeals, US Territories, Canada and England. This mighty tome, weighing rather more than a small grandchild, has been compiled by the Media Law Resource Center, Inc, and the grim news is that, if you read four pages a day, the next edition is likely to be out before you finish this one. Says the IPKat, who knows little about libel except how to do it. says "Buy it!"

New Draft EPO Guidelines


The EPO have just released a draft version of the Guidelines for Examination, to be implemented from 1 April 2010. This is when the Administrative Council decisions CA/D 2/09 and 3/09 come into force, making changes to the EPC that will change the way applicants have to deal with unity of invention and the final dates for filing divisional applications.


The IPKat has not yet had chance to read through all 594 pages of the Guidelines, but noticed in flicking through them the following new passages that may be of interest to his readers. This is an example of how the EPO sees the new rules on divisionals working in practice:
"1.1.1.4 Second- and subsequent-generation divisional applications
Voluntary division (Rule 36(1)(a))
For the filing of second-generation divisional applications (i.e. divisional applications based on an earlier application which is itself also a divisional), the event which starts the period for voluntary division is the first communication in respect of the earliest application for which a communication has been issued. This is determined as illustrated by the following example:
Example 1
- EP1 is the original European application,
- EP2 is a divisional application based on EP1 and
- EP3 is a divisional application based on EP2.
Where a first communication (see IV, 1.1.1.2) has already been issued for EP1 when EP3 is filed (this is the usual situation), the period for voluntary division of EP2 (by the filing of EP3) is calculated from the date of notification of this first communication in respect of EP1.
However, all that is required is that EP2 is still pending when EP3 is filed; EP1 does not need to be pending. This is because EP1 is the earliest application in respect of which a first communication has been issued (used to calculate the period for voluntary division), but it is not the earlier application which has been divided (this is EP2), and it is the earlier application (EP2) which must be pending according to
Rule 36(1).
If no first communication has been issued for either EP1 or EP2 when EP3 is filed, the divisional is filed in time according to Rule 36(1), provided that EP2 is still pending.
Voluntary division in branched families of divisional applications
In cases where there are two divisional applications each derived from the same earlier (parent) application, the periods for voluntary division of the two divisional applications are calculated independently:
Example 2
- EP1 is the original European application,
- EP2a is a divisional application based on EP1 and
- EP2b is a divisional application based on EP1.
In example 2, the period for voluntary division of EP2a is calculated with reference to the appropriate communication issued in respect of EP1 or EP2a (as indicated under example 1 above) but not EP2b.
Likewise, the period for voluntary division of EP2b is calculated with reference to the appropriate communication issued in respect of EP1 or EP2b but not EP2a. These cases are treated in the same way as example 1 above, but ignoring any divisional applications which are not in a direct line from the divisional being filed to the earliest application.
Mandatory division (Rule 36(1)(b))
In example 1, the period for mandatory division of EP2 (by filing EP3) is calculated from the first communication in examination raising a specific objection of lack of unity for the first time in respect of EP2 (EP2 being the immediate parent application - see IV, 1.1.1.3)."
The IPKat thanks the EPO for making the new rules so clear and easy to follow. He is now sure that there will be no problems at all come 1 October 2010.

Tufty wonders how the EPO will be forcing applicants to file those divisionals that the EPO considers to be mandatory. Aren't all divisional applications voluntary?

More long division here. More legal obfuscation here.

Teva v Merck - not a sight for sore eyes

Article 123(2) of the European Patent Convention states, "A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed". The same rule also applies to UK patents under section 76 of the Patents Act 1977 (implemented in a "cack-handed way", according to Jacob LJ here). The basic rule for both is that no amendments can be validly made which would allow something to be claimed (or even described) that was not clearly also there when the application was filed.


The above issue, among several others, arose recently in the case of Teva v Merck, a judgment of Mr Justice Floyd from last week and available from BAILII here. Teva applied for revocation of Merck's EP(UK) patent 0509752, relating to "Ophthalmic compositions comprising combinations of a carbonic anhydrase inhibitor and a beta-adrenergic antagonist", an eye drop formulation for the treatment of glaucoma. After the usual extensive analysis, Floyd J found that the patent was invalid for being obvious over an earlier scientific article in light of the skilled person's common general knowledge (see PatLit here for more).

What the IPKat found more interesting, however, was the argument over added matter relating to one of the claims of the patent. The claim as granted covered a method for making the eye drop formulation, and included a final step of "adjusting the pH of the composition obtained to 5.0-6.0 by the addition of a suitable reagant". This feature was not in the claims as-filed but was added during prosecution, imported from one of 33 examples in the specification, which were whittled down to only 10 in the granted version. Although several of the examples had the step of adjusting pH, none had the range 5-6 together with the composition being claimed. As Floyd J put it, "Once the claim is limited to the specific co-formulation of dorzolamide and timolol, there is no basis for the disclosure of a process for making a co-formulation by adjusting to a pH other than 5.5 to 6.0" (para 70).

Merck tried to correct this by further limiting the claim to the range 5.5-6.0, but this range was only specified in another example that related to a composition that did not fit with the rest of the claim, because it had some further features not in the claim. The amendment by itself would therefore amount to "an impermissible intermediate generalisation" (para 72). Floyd J found that the claim was invalid for added matter, and the amendment could not be allowed.

The IPKat thinks that this is a good example of a case where everything was thrown in to the application at the outset (33 examples seems like a lot), but where not enough thought went into ways in which the different examples could be linked together. In this case, putting in claims to different pH ranges probably would not have saved the patent from being invalid for other reasons. It could however have easily been more important, given the very small differences that often make all the difference, particularly in pharma patents.

That Mystery Canon Case: more information

The IPKat continues to receive correspondence concerning Case C-181/09 Canon Kabushiki Kaisha v IPN Bulgaria OOD, a reference for a preliminary ruling on European trade mark law from the Sofiyski gradski sad (Bulgaria) which the Court of Justice of the European Communities (Fifth Chamber) declared to be "manifestly inadmissible". Since the Court's Order was only in French and Bulgarian, the IPKat summoned the help of his readers. He has now received more than 40 responses, a new record.


The IPKat's good friend Ventsi Stoilov has produced an entire English translation (here). For those who don't have time to read it, Simon Roberts offers a succinct explanation:
"This action concerns goods being exported from Bulgaria to Serbia. The Bulgarian Court wanted to know whether Art5.3(c) of the trade mark directive, which concerns the export or import of articles bearing "the mark", applies only to goods coming from the rightholder -- or does it apply to any goods bearing the mark?
The manifest inadmissibility seems to have arisen because the Bulgarian Court referred only the question, with no explanation of why they needed the question answered and with no explanation of the facts of the case. Such a referral is inadmissible at least in part, because other states are not then able effectively to comment on the referred question".
The IPKat's fellow Class 46 blogger Edith Van den Eede explains the mechanism of references for prelimary rulings:
"The ruling refers inter alia to the teaching of Telemarsicabruzzo and Others (1993, C-320/90, par. 6), stating that the need to provide an interpretation of Community law which will be of use to the national court makes it necessary that the referring court should define at the very least, explain the factual circumstances on which those questions are based.

The Court also stresses that it is important for the referring court to set out the precise reasons why it was unsure as to the interpretation of Community law and why it considered it necessary to refer questions to the Court for a preliminary ruling. It is essential that the national court should give at the very least some explanation of the reasons for the choice of the Community provisions which it requires to be interpreted and on the link it establishes between those provisions and the national legislation applicable to the dispute.

Therefore, the order for reference must be sufficiently complete and must contain all the relevant information not only to allow the Court to answer but also to permit the governments of the Member States and other parties entitled to submit observations in accordance with article 20 ECJ’s Statute ...".
Emil Markov adds an Bulgarian perspective:
"Sofia City Court just sent the judges'' entire file to Luxembourg and added a reference containing the question only. You've learned already about the lack of factual briefing and the missing legal context or reasoning for the question, and of the lack of any connection to the applicable national law. ...

Even so ..., the question is not entirely dull. Somehow it goes beyond Silhouette etc. Said Gulmann, J. then: 'Art. 7(1) of Directive 89/104 cannot be interpreted as meaning that the proprietor of a trade mark is entitled, on the basis of that provision alone, to obtain an order restraining a third party from using his trade mark for products which have been put on the market outside the European Economic Area under that mark by the proprietor or with his consent.' Now the new question might be interpreted as follows: Can this proprietor restrain a third party from importing products which have been put on the market outside the EEA under that mark by the proprietor or with his consent according to Art. 5(3)(c) of Directive 89/104? Does Art. 5 (3)(c) prohibit import of goods under a sign identical or similar (...etc.) to this mark only (under counterfeiting signs only)?".
The IPKat once again thanks everyone who has written to him. He says, it has been a pleasure to learn from you all.

Sunday, 29 November 2009

BGH: misleading use of the symbol ® - the "Thermoroll" case

In a notable decision of 26 February 2009 (case reference I ZR 219/0 “Thermoroll”) - which was only recently published in its entirety - the German Federal Supreme Court (BGH) decided that it is “significantly misleading” and consequently an unfair commercial practice under section 5 German Unfair Competition Act, if someone uses a trade mark in conjunction with the ® symbol without being the owner or licensee of the mark or without being otherwise authorised. Things may be judged differently only if the unauthorised user is the proprietor mark of a trade mark that is similar to the trade mark that was used together with ® symbol and use of the mark amounts to “genuine use” of the registered mark under Article 26 (3) German Trade Mark Act.

The facts of the case are a rather complicated and may be simplified as follow: both parties, the claimant and the defendant, were companies active in the field of curtains and blinds and involved in a dispute over the use of the mark Thermoroll. To make things even more complicated, the mark Thermoroll was a registered trade mark which, inter alia, covered blinds, curtains, but which was owned by third party that was not involved in the court case. The claimant, however, was the owner of a trade mark registration for the similar mark Termorol [IPKat: minus the “h” and with one “l” only] but had [for valid reasons which we will not mention since they would confuse matters further] used advertising material that included the sign Thermoroll together with the symbol ® before February 2006 even though it (the claimant) was only licensed to use Thermoroll from February 2006 onwards. The defendant filed counterclaims for information and damages against the claimant arguing that that the use of the mark Thermoroll in combination with the ® symbol constituted misleading advertising under section 5 of the German Unfair Competition Act.

The Higher Regional Court of Karlsruhe, the court of appeal, had decided in favour of the claimant and had taken the view that the slight differences in the spelling of the marks (Thermoroll v Termorol) were not significant enough to mislead consumers and so fell out of the ambit of the Unfair Competition Act.

On further appeal, the BGH disagreed with the Karlsruhe court and decided that the claimant’s unauthorised use of the mark “Thermoroll®” before 16 February 2006 constituted misleading advertising. The fact that the claimant had been authorised to use the similar mark “Termorol”, which was registered for identical goods, did not change that its use of the “Thermoroll” mark was misleading.

The court held that the use of a trade mark used together with the ® symbol suggested two things to the relevant consumers: firstly, the existence of a registered trade mark spelled exactly as used in the advertising and secondly, that the advertiser was authorised to use this mark in its advertisement, either as trade mark owner or licensee.

The court took the view that use of a third party trade mark which not merely “insignificantly” differed from the advertiser’s own trade mark was caught as an unfair practice under unfair competition law. The differences between both marks could only be considered as insignificant if the mark used merely differed in elements which did “not alter the distinctive character of the mark in the form in which it was registered” as stipulated by Article 26 (3) German Trade Mark Act. Article 26 (3) German Trade Mark Act relates to “genuine use” of a trade mark.

Applying these principles, the court decided that use of “Thermoroll” did not constitute genuine use of “Termorol” mark under Article 26 (3) German Trade Mark Act due to the aural and conceptual differences between both marks and due to the fact that the relevant consumer would associate prefix “Therm-” with heat. Consequently, the differences between he marks altered the distinctive character of the registered mark and had therefore crossed the threshold of an “insignificant alteration”.

Given the claimant itself had considered the “Thermoroll®” mark as very important and had expected that its use would have a positive effect on consumers, it had obtained a competitive advantage by implying to be authorised to use the third party trade mark. The court found that the relevant consumers had been mislead and had taken a purchasing decision that they would otherwise not have taken. The court emphasised that it was a main purpose of prohibiting misleading practices to prevent competitors from using false information in the course of trade.


IPKat comment: the BGH provides us with some food for thought. The “take home” point appears to be that advertisers should make sure to use the mark as registered when using it in combination the ® symbol. Otherwise, in cases where the use of the similar mark crosses the threshold of an “insignificant” alteration, there is a genuine risk of falling within the ambit of Unfair Competition Law. In other words: using the ® symbol in combination with a registered trade mark in the course of one’s business (i.e. in advertising) without being authorised to use the mark will be seen as significantly misleading and consequently constitute an unfair commercial practice under the German Unfair Competition Act.

This Kat would be very interested in our readers’ views.


  • The decision can be accessed by clicking here.
  • Cat shower curtains (as the one depcited on the left above), can be purchased via http://www.showerail.com/ where the picture has been taken from.

Letter from AmeriKat

Giving thanks for one’s blessings can sometimes be a difficult feat - one that the AmeriKat was struggling with, this Thanksgiving. Thanksgiving took place this past Thursday, and on every fourth Thursday of November, to commemorate the Pilgrims of Plymouth Colony celebrating their survival of a brutal winter. The modern celebration is one where Americans watch Macy’s Thanksgiving Parade or football, eat copious amounts of cornbread, turkey, cranberry sauce and pumpkin pie, and give thanks to the good things in their life. Besides the obvious go-to of being thankful for her family, friends and health, the AmeriKat was struggling for something more thoughtful to thank. However, a couple of weekends ago in a crowded bar a friend quizzed her: “What is your ideal area of law to practice in?” Without hesitation or deviation she replied, “What I do now! I would not want to do anything else but intellectual property and media law.” The AmeriKat is thankful for being involved in an area of law that constantly provides her with the intellectual challenge and whimsy that only intellectual property law can. Because really, reading a case about beer is far more exciting than reading a case about share acquisitions, isn’t it?!

With US courts and lawyers on recess during the Thanksgiving holiday, not too many noteworthy events have occurred in US IP litigation this week, but the AmeriKat has compiled the best bits from the past week.

Warner Music and Sony drop XM Radio suit

The exception to the generally slow IP week in the US, however, was the decision of District Judge Lewis Kaplan in Famous Music LLC v XM Satellite Radio Inc in the Southern District of New York. Last Tuesday, District Judge Kaplan allowed Warner Music Group and Sony Corporation (only two of the 26 claimants) to drop their copyright infringement lawsuit against XM Satellite radio. Neither party cited any reasons. The suit had been brought by the claimants against XM due to XM’s portable Pioneer Inno satellite receiver which permitted users to record and permanently store songs in a library held on the device. XM previously settled related suits with Universal Music Group and Warner Music Group. According to Bloomberg, neither lawyer for either of the parties returned a call for comment.

European “Wise Men” to take on Google Books

According to French Culture Minister Frederic Mitterand, EU ministers in Brussels last Friday agreed to create a committee of “wise men” to establish a plan to challenge Google Books. In an interview with Journal du Dimanche, Mitterand stated that the digitization of books should not be left to private companies and it was for the newly formed committee to “bring together national views and draw up a joint position.” According to Reuters, Mitterand also stated that:

"For my part, there isn't any anti-Americanism. Nevertheless, I believe America isn't a monolith, and different opinions must be expressed. That's why I don't want the State to surrender before the markets…It's not up to this or that private group to decide policy on an issue as important as the digitization of our global heritage. I'm not going to leave this decision up to simple laisser-faire."
Maybe it is the translation, but the AmeriKat is quick to point out that there is in fact a distinction between Google Inc. and the US, which is a country. She is concerned that if such imprecise language continues there will be a PR frenzy of Europe v America in the Google Book saga – a battle that the US will be destined to lose if equated solely with Google’s stated position.

Muscle Ad in Mag invalidates patent

Two weeks ago, the US Court of Appeals for the Federal Circuit upheld an Eastern District of Texas decision in Iovate Health Science Inc v Bio-Engineered Supplements & Nutrition Inc that a muscle magazine advertisement about a body-building supplement published before the critical date rendered seven of the claims obvious and therefore the patent was invalid. Circuit Judge Alan Lourie held that the advertisements in Flex magazine in June 1995 and 1996 anticipated the 1998 formal patent application in that the person skilled in the art would be able practice the invention by reference to the exact amounts of known ingredients as listed in the advertisements. The defendant’s attorney, Phillip Segrest Jr. of Husch Blackwell Sanders, stated that he was not aware of other Federal Circuit rulings involving advertisements. For more information please see this article in the National Law Journal.

Nokia v Apple – With FRANDS like these who needs enemies?

Further to this recent AmeriKat letter regarding Nokia’s patent infringement suit against Apple, American Litigation Daily reports that it will be law firms Alston & Bird versus Wilmer Cutler Pickering Hale and Door for claimants and defendants respectively in the potentially mammoth trial.

Bellagio in trade mark bust-up

A city known for its whimsy is Las Vegas, Nevada. Known as the Entertainment Capital of the World, Las Vegas is home to casinos, resorts and the most famous of Las Vegas hotels, the Bellagio. The Bellagio is owned by MGM Mirage, the second largest gaming corporation in the world. Last Monday, Bellagio filed a lawsuit against Bellagio Limousines of Toronto for trade mark infringement and dilution, unfair competition and cybersquatting. Bellagio alleges that the defendants have take unfair advantage of their marks which “have become distinctive and famous” worldwide for hotel and casino resort services including limousine services. The defendant’s registered their domain name in July 2008 which offered limousine services in Canada and the US and included images of the famous hotel and its equally famous water fountains. The claim seeks an injunction restricting further use of Bellagio’s trade marks and the transfer of the disputed domain name. For more information please see this article in the Las Vegas Sun.

USPTO and India Unite

Following the signing of a Memorandum of Understanding for the cooperation on intellectual property rights protection and enforcement between the USPTO and India’s Department of Industrial Policy and Promotion (DIPP), the USPTO announced last Monday that the Government of India has granted USPTO’s patent examiners access to TKDL - a digital database containing a library of information of traditional Indian knowledge. The TKDL is to aid the US and India in preventing the misappropriation of traditional knowledge by way of issuance of patents. Sharon Barner, the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the USPTO stated:
“The USPTO has long been concerned about attempts to patent traditional knowledge, not only because it my result in an incorrectly granted patent, but because it removes knowledge from the public domain.”
The USPTO examiners already use several databases and tools in their examination to prevent patenting of existing traditional knowledge. TKDL was developed by India’s Council of Scientific and Industrial Research (CSIR) and the Department of Ayurveda, Yoga & Naturopathy, Unani, Siddha and Homeopathy (AYUSH). The database includes over 200,000 traditional medicine formulations to a tune of around 30 million pages.

Saturday, 28 November 2009

Manchester misleads on patents

The IPKat's inbox has been swamped with emails from readers complaining about the Manchester Manifesto. To get some idea of what they've been complaining about, you might want to start with this article, "How science is shackled by intellectual property: Ownership rights pose a real danger to scientific progress for the public good", published in The Guardian on Thursday and written by John Sulston, Sarah Chan and Professor John Harris.


Right: The IPKat is glad that IP folk's view of Manchester (right) isn't as grim as the Manifesto's view of IP
It reads in relevant part as follows:
"The idea of ownership is ubiquitous. ... However, there is a profound problem when it comes to so-called intellectual property (IP) – which requires a strong lead from government, and for which independent advice has never been more urgently required. ...

The myth is that IP rights are as important as our rights in castles, cars and corn oil. IP is supposedly intended to encourage inventors and the investment needed to bring their products to the clinic and marketplace. In reality, patents often suppress invention rather than promote it: drugs are "evergreened" when patents are on the verge of running out – companies buy up the patents of potential rivals in order to prevent them being turned into products. Moreover, the prices charged, especially for pharmaceuticals, are often grossly in excess of those required to cover costs and make reasonable profits.

IP rights are beginning to permeate every area of scientific endeavour. Even in universities, science and innovation, which have already been paid for out of the public purse, are privatised and resold to the public via patents acquired by commercial interests. The drive to commercialise science has overtaken not only applied research but also "blue-skies" research, such that even the pure quest for knowledge is subverted by the need for profit.

For example, it is estimated that some 20% of individual human genes have been patented already or have been filed for patenting. As a result, research on certain genes is largely restricted to the companies that hold the patents, and tests involving them are marketed at prohibitive prices. We believe that this poses a very real danger to the development of science for the public good.

The fruits of science and innovation have nourished our society and economy for years, but nations unable to navigate our regulatory system are often excluded, as are vulnerable individuals. We need to consider how to balance the needs of science as an industry with the plight of those who desperately need the products of science.

Clearly it is vitally important that we continue to protect science and enable it to flourish. Science and the many benefits that science has produced have played a crucial part in our history and produced vast improvements to human welfare. It would be remiss if we failed to recognise the importance of science as an industry and investment in research to national and regional economic development; but against these economic concerns (individual, corporate and national) an overriding consideration must be the interests of the public and of humanity present and future. Science as an industry may be booming, but the benefits of science need to be more efficiently and more cheaply placed in the service of the public.

This is of particular concern in the developing world, where drugs that are routinely available in high-income countries are unaffordable or inaccessible, and treatments for diseases of the poor are simply not being developed due to lack of a viable market. Existing inequities in knowledge capital make developing nations hostage to more technologically advanced countries for their basic health and development needs, and restrict the participation in research that would allow them to redress this imbalance.

For science to continue to flourish, it is necessary that the knowledge it generates be made freely and widely available. IP rights have the tendency to stifle access to knowledge and the free exchange of ideas that is essential to science. So, far from stimulating innovation and the dissemination of the benefits of science, IP all too often hampers scientific progress and restricts access to its products.

The Manchester Manifesto, produced by an interdisciplinary and international group of experts and published today, explores these problems and points the way to future solutions that will more effectively protect science, innovation and the public good. It calls on all interested parties to find better ways of delivering the fruits of science where they are most needed".
The Manchester Manifesto can be accessed here.

The following day, acting with a remarkable degree of alacrity, the Chartered Institute of Patent Attorneys (CIPA) responded as follows:
" ... CIPA has welcomed ‘Who owns science?’, the Manifesto published by Manchester University on Thursday 26 November, but has criticised the authors’ views on patents as ‘ill-informed and misleading’.

CIPA’s vice-president Alasdair Poore praised Manchester University for its attempt to stimulate debate about how science is used for the benefit of humanity. ... “Nobody would challenge their laudable aim of making ‘a difference in the real world as to how science is used, and hence to build a better future for Humanity’. However, some of the authors’ comments on intellectual property ownership – patents in particular – are ill-informed and misleading.

“Contrary to what is stated in the report, ... IP rights do not ‘have the tendency to stifle access to knowledge and the free exchange of ideas that is essential to science’. Publication and knowledge-sharing is at the heart of the IP system. Not only is there a vast amount of scientific and technical information available from patent databases around the world, but the majority of it is not available from any other source.”

The Manchester report criticises the patent system on a number of counts, all of which CIPA repudiates:

• Patents can't be used to prevent a product coming onto the market - if demand for a product is not met on ‘reasonable terms’ then, subject to certain safeguards, anyone can apply to the IPO for a compulsory licence under the patent. The competition authorities can also take action if patents are abused.

• Patents do not prevent universities from carrying out research - acts done for ‘experimental purposes’ don't infringe.

• Patents enable research bodies like Manchester University to earn a fair return from technical applications of their work, so that money can be ploughed back into further research. Manchester has its own technical transfer operation which depends on patents for its success.

• The alternative to patenting university research is that big business would get a free ride - they could use the work of universities to make profits for themselves.

• Publication of patent applications is automatic. The applicant has no choice in the matter if he wants to get a patent. Claims that the IP system inhibits knowledge-sharing are just wrong.

CIPA also accuses one of the report’s signatories, Joseph Stiglitz, of continuing to mislead the public in his claims that human genes and other life forms can be patented. “Back in 2006,” says Alasdair Poore, “CIPA wrote a letter to the New Scientist, correcting Stiglitz’s claims that plants or foodstuffs, such as turmeric and Basmati rice, were being patented. This new report is making similarly misleading claims about human genes, stating ‘some 20 per cent of individual human genes have been patented already or have been filed for patenting.’ That is not true. We said it in 2006 and it’s still true in 2009: no patent system in the world allows that. Patents are granted only to inventions that are not previously known: no innovation, no patent.”

According to CIPA, the Manchester Manifesto also repeats misleading views about access to pharmaceuticals in the developing world, alleging that the global intellectual property regime denies poor people access to drugs. “Without an effective patent system, who would have made the necessary investment to discover and manufacture those drugs?” asks Alasdair Poore. “It’s politics and economics that block access to drugs for the world’s poor, not the IP system.”".
The IPKat feels that the patent professions are perfectly capable of defending themselves, but he wishes that they only had to to so when the attack was properly based.

Friday, 27 November 2009

"Stealing a march": now we know the Bud Questions

On 20 October the Court of Appeal, England and Wales, decided that in order to resolve one of the more curious disputes between the American and Czech versions of Budweiser for hegemony over all things Bud (see IPKat note here on that decision) it was necessary to refer to the Court of Justice of the European Communities a number of questions relating to the meaning of the concept of acquiescence within the context of Article 9(1)(a) of the trade mark directive.

Right: Budweis, the home of the Czech Republic's greatest export -- beer litigation


At the time, the questions favoured by the Court were these:
"1. What is meant by “acquiesced” in Article 9(1) and in particular:

(a) can the proprietor of a trade mark be held to have acquiesced in a long and well-established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it?
(b) is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

2. When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

3. Does Art 4(1)(a) apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?".
In the event, having heard submissions and given further thought to the matter, the Court of Appeal has drafted the following questions for that preliminary ruling:
"1. What is meant by “acquiesced” in Article 9(1) [that's the same as before] ... and in particular:

(a) is "acquiesced" a community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use) [this is new -- and it's a real killer since it exposes the partial and inadequate nature of existing harmonisation provisions as well as the risk of leaving a legal vacuum which might just be filling by a ruling of IP amateurs]

(b) if "acquiesced" is a community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well- established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it? [If this question has to be answered, the IPKat predicts a Delphic response along the lines of "it's up to the referring court to apply its own law to the facts".]

(c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

2. When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

3. Does Art 4(1)(a) of Council Directive 89/104/EEC apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?".

Friday fantasies

The IPKat can hardly believe how quickly Friday has come around again. Well, before you disappear for a weekend of unrelieved leisure, don't forget to check out all the events listed in the IPKat's side bar.


First, the IPKat would like to say a huge thank-you to all his readers who responded to the request for information concerning the Mysterious Canon case, referred from Bulgaria to the European Court of Justice for a preliminary ruling but deemed "manifestly inadmissible" by a very rude court.


Right: overwhelmed by the response, the IPKat peeps out from under his paperwork to see if it's safe to come out yet ...
Initially he replied to every email received, but the volume of helpful responses eventually got the better of him so please, if you wrote in but didn't get a personal response, please accept this as the Kat's thanks. A special mention should also go to Ventsi Stoilov who is, so far as the Kat can tell, the only Bulgarian to respond.


IP transaction guru and blogger Neil Wilkof is teaming up with Robert Anderson to hold a seminar, "Protection of trade and other secrets: a property right, equitable right or contractual obligation? Does it matter?" The date: Monday 14 December; the venue: Lovells LLP's London office. CPD points and mince pies available. For full details click here. To attend, email Sarah Turner here.


Around the weblogs. The IP Finance weblog team has just been strengthened by the arrival of tax expert and author Anne Fairpo. A pupil barrister at Atlas Chambers, having previously been a solicitor for more years than she cares to recall, an is a corporate tax advocate and adviser, specialising in technology-based business and international tax planning and transactions.


TMView. A test version of OHIM's TMview, providing free access to more than 5 million trade marks, is attracting favourable comment from people who have been playing with it over the past week or so. This new service is designed to search, free of charge, the databases of existing trade marks held by OHIM, WIPO, and the UK, Czech, Italian, Benelux, Portuguese and Danish IP Offices -- simultaneously. Trade mark data from eight other European IP Offices should be available between the end of 2009 and early 2010, promises OHIM, with the prospect of more later. You can play with it too, here.


Thanks are due to ...
* Edwina Baddeley, for this link to the sad (unless you're Apple) demise of iPodRip as a descriptor/brand name for what has since become iRip;
* Robin Fry (Beachcroft), for his firm's press release on the UK's Digital Economy Bill which contains the delightful line: "There will be consternation in Soho and confusion in Shoreditch" -- a vivid bit of prose to liven up the drab world of IP press releases;
* Annsley the AmeriKat for this eloquent use of YouTube as a medium for the written word, by an author who has some reservations regarding Lord Mandelson's current proposals.

Same shape, different colour, different trade mark: Dutch court blesses interoperable toy bricks

From the IPKat's much valued friend and scholar Dirk Visser (Klos Morel Vos & Schaap; Professor of Intellectual Property Law at Leiden University) comes news of last week's decision of the Hoge Raad -- the Dutch Supreme Court -- in Case LJN BJ6999, Lego Nederland B.V. c.s v Mega Brands Inc c.s. In this decision the court upheld the decision by the Court of Appeal of ’s-Hertogenbosch that the 'fit-alike' building blocks manufactured by Mega Brands are not slavish imitation of Lego bricks.


According to the courts, there is a need for standardisation (compatiblility and interchangeability) which in this instance justified the imitation. There is however a caveat: the lawful imitator is still under an obligation to avoid confusion as much as possible. The use of other colours and the application of a trade mark other than LEGO are however enough to avoid confusion in this case.

The IPKat says thanks to Dirk and wonders how long some countries will be allowed to keep their 'slavish imitation' remedies in the wake of increasing pressure to ensure that the same activities -- in the absence of specific and identifiable IP rights -- are either permitted or prohibited across all 27 European Union Member States. Merpel says, building with these little bricks is great fun, but have you ever tried pulling them apart again when all you've got are paws?

You can read the entire judgment in the original Dutch here, or lovingly translated into English here.

Incredible Lego creations here
Coping with Lego addiction here
Swallowed Lego pieces here, here and here

IP and the knowledge economy again

Having attended yesterday's little meeting on the new UK initiative to find out about how IP works before trying to legislate policy for it (see earlier post here), the IPKat can now tell his readers a little bit about what transpired.

In short, SABIP's chairman Joly Dixon, summarised the plot. We Brits are now going to deepen our knowledge of how IP works within the economy and make up for the fact that we have little hard evidence as to precisely how IP affects its owners, users and the various markets in which it is engaged or exploited. Since this is a very big task [says the IPKat, it's not much easier than creating a sort of industrial and economic Domesday Book for our current time], the responsible approach is for SABIP and the IPO to cooperate with other bodies in the funding, setting up and carrying out a research agenda that will establish at least a firm framework within which policy may be framed. NESTA and the ESRC were mentioned in this context, as well as the OECD. Joly emphasized that it was important to be multidisciplinary [Great, says Merpel, so long as we can keep the economists in a minority ...] and forward-looking [i.e. cut all the historical stuff and see where we are now. A good idea]. He called for a two-way dialogue [er, is there any other sort?] between stake-holders and policy-makers, though the IPKat wasn't sure whether this dialogue was to come (i) before the research, (ii) simultaneously with it, (iii) following its conclusion or (iv) any combination of the above.


Roger Burt (IP Federation) then gave an industry view. His vocabulary was to the Kat's liking: "fun", "safeguard" and "academic freedom" ... Supporting and complementing Joly's address Roger called for contributors to the dialogue not to use emotive language: "describe what you see; you are expert witnesses, not barristers". He also offered the appealing prospect of "informed scenario building", which the Kat takes to mean projecting real facts into plausible hypothetical situations in order to see what happens [Isn't this what game theory does? If so, the Kat will be well pleased, since game theory takes both self-interest and altruism into account in a manner in which economic predictions based on historical market analysis generally don't] .

Last to speak was the man we were all waiting for -- quite literally, since he was half an hour late [the Kat discovered that the official Civil Service terminology for describing half an hour is "5 minutes"] -- was the Minister for Higher Education, Innovation and Tottenham Hotspurs, David Lammy. The Minister did quite a plausible imitation of a busy politician with a hectic schedule who was making his first tentative acquaintance with the text of a speech that had been carefully prepared for him by his staff, but he handled the ordeal well. It is difficult not to warm to the Minister. For one thing, his heart is in the right place: he places the emphasis on giving the various stakeholders what they need and/or want, and he strikes a genuinely positive note as a person who cares about the IP sector and wants to see it flourish in the right mix of market conditions and legal controls. The Minister pointed out how important IP is to the UK economy, and reminded us how good we are at generating and exploiting it. Four of last year's most successful albums -- including the top one -- were British, he told us. Then, obviously scenting danger, he swiftly left the room together with his aides before the IPKat could ask him the killer question: "Can you name that album ...?"

So was this little gathering a success? The IPKat thinks so. Sitting the invitees around tables rather than in formal rows helped generate much constructive discussion before the event and a good deal of card-swapping. The content of the presentations was interesting, relevant, well-delivered and left the audience with a sense of something constructive and valuable stirring. These are of course early days, but the Kat says, "so far, so good".

Thursday, 26 November 2009

Virgin Media boxes safe (for now)


It seems a very long time since the IPKat noted here of the impending battle between the (then Murdoch-owned) Gemstar and Virgin Media. The battle itself took place earlier this year over an astonishing 13 days at the High Court. This has now culminated in a very long judgment from Mr Justice Mann in the Patents Court that was delivered earlier today and has just been made available here.


As the judgment is so long, the IPKat will leave providing a detailed summary until later, but for now notes that all three of Gemstar's patents (see the IPKat's previous post for details) relating to electronic programme guides were found by Mann J to be invalid for lack of novelty or inventive step, and therefore not infringed. Two of them were also found, for good measure, to be unpatentable for relating to computer programs or presentations of information as such (or, if you prefer, lacking a "technical contribution"). For those of a suitable frame of mind, there is yet more extensive Aerotel-type analysis of what constitutes patentable subject matter at paragraph 33 onwards. Others, however, may prefer to wait until the Enlarged Board make their decision, which might just arrive in time for this case to be decided all over again at the Court of Appeal.

IP and the knowledge economy: an agenda

In 36 minutes the IPKat will be attending a select gathering to mark the launch, by David Lammy (the UK's Minister of State for Higher Education and Intellectual Property), of a new programme which seeks to define how intellectual property underpins the UK’s Knowledge Economy.

Right: "Now that we've solved the IP and knowledge economy issue", said Teddy, "what about another cup of tea?"

According to the press release,

"... the major international programme and research agenda will investigate issues seen as vital to our economic well being. This report sees the Strategic Advisory Board for Intellectual Property Policy (SABIP) and the Intellectual Property Office (IPO) building on a programme of work defined in June by a Forum of international experts from around the world.

To drive this work forward - as outlined in The Economic Value of Intellectual Property: Research Agenda and Plan of Action - they are establishing a number of national and international partnerships and work to clarify the role of IP in innovation and economic growth has already begun.

David Lammy, said: “Maximising the value of intellectual property is vital to the creative and innovative growth of the UK economy. Globalisation and the digital revolution are making us re-examine the current IP system and opinions are divided on how fair and useful it remains. This new research agenda looks to fill the gaps in our knowledge and provide a better understanding of the impact of IP on innovation and growth of the UK.”

To begin to turn the research agenda into tangible and deliverable research, SABIP and the IPO can also announce:

• That they will partner with the UK Innovation Research Centre (UK~IRC) to deliver focused policy events and fellowships to begin seeding research projects.

• Work with National Endowment for Science, Technology and the Arts (NESTA) and other partners to build on their Innovation Growth Accounting framework to quantify intellectual property rights within the wider economy.

• Conduct value chain analysis to assess how copyright value-chains or networks are affected by digital media and the implications of this for copyright law.

Right: the copyright-value chain is a bit like a daisy chain, but it's made out of copyright-values rather than the traditional British daisy.

Joly Dixon, Chairman of SABIP, said: “SABIP was set up just over a year ago to provide the independent research needed to inform IP-related policy making. And this ambitious but achievable new research agenda will provide the conceptual framework, reliable data, and analysis that has not to-date existed in this field of work. I hope it will encourage others, not only in the UK but around the world, to collaborate with us in this work.

Economic growth is dependent on technological change and wider creativity, both of which are key drivers of innovation. This research agenda aims to generate a better insight into the relationship between intellectual property rights (IPRs) and innovation and how these influence economic growth – information which will provide the robust evidence-base needed to underpin policy-making".

Says the IPKat, there does seem to be a lot of partnering going on. If things carry on at this rate, we might even start to learn something. Merpel says, it's good to see the firm commitment to a "robust evidence-base". Isn't it just such a commitment that has given us the artist's resale right, the three-strikes proposals, and some clear direction on what to do about orphan works ...?

Corporación Habanos S.A. sees its UDRP claim for cohiba.com go up in smoke

Corporación Habanos S.A. failed to obtain the domain name cohiba.com in a recent URDP proceeding against Tobias Pischetsrieder. It is undisputed that the complainant owns more than 800 registrations worldwide for trade marks containing the term COHIBA, which was created in 1966 and first registered in 1969. In Germany (domicile of the respondent) the COHIBA mark was registered in 1985.


The respondent had registered the domain name cohiba.com in 1996 and not used it for any commercial purposes, neither offered to sell it nor placed any advertising on it. He argued that in 1996, when the domain was registered, it was not clear under German law whether the registration and use of a domain name constituted trade mark infringement. Whether COHIBA was a well-known mark in Germany at that time was unclear (he did not dispute that he was aware of the COHIBA brand at the time of registration). There co-existed trade marks with the term COHIBA for different goods. His registration and use of cohiba.com was not in bad faith.

The three-member panel agreed that under the circumstances, the complainant had failed to establish the bad faith of the respondent, and denied the transfer of the domain name. A key element considered was also the 13 year delay before the complainant enforced his rights; while the panel noted that the UDRP did not foresee forfeiture ("Verwirkung"), a long delay between the registration of the domain name at issue and the enforcement of the alleged rights counted against a finding of bad faith (citing The Knot, Inc. v. Ali Aziz, WIPO case No. D2007-1006).

D2009-1041 (in German - the complainant had filed its complaint first in Spanish but was educated that the language of the proceeding is the language of the domain name registration agreement, which in this case was German)

Wednesday, 25 November 2009

Mystery Canon case: can anyone help?

The IPKat wonders if any readers can help him. Information has just been posted on the Curia website concerning Case C-181/09 Canon Kabushiki Kaisha v IPN Bulgaria OOD, a reference for a preliminary ruling from the Sofiyski gradski sad (Bulgaria) lodged on 19 May 2009. This is an intellectual property case, so the IPKat is already deeply fascinated by it. However, today's notice reads:

"By decision of 17 September 2009, the Court of Justice (Fifth Chamber) declared the reference for a preliminary ruling to be manifestly inadmissible".
The Court's Order is only in French and Bulgarian. can anyone tell the IPKat and his readers what this is all about? Merpel also has a question: is there any significance in the reference being "manifestly inadmissible" rather than just the usual sort of inadmissible?

Some recent books

A Defense Of Intellectual Property Rights, by Richard A. Spinello and Maria Bottis, is that rare creature these days -- a book on intellectual property rights that is not predicated by the considerations of economics and the demands of the marketplace. A little unfashionably, the authors argue the case that intellectual property rights are justified on non-economic grounds. Then they get a tiny little bit more fashionable, since they believe that the rationale for this moral justification is primarily inspired by the philosophy of John Locke (in this they are not alone: Lior Zemer has waved the Locke supporters' club banner when justifying his views on authorship in copyright, and Uma Suthersanen too has favoured his approach). Adds the publisher's web-blurb:

"In the process of defending Locke, the authors confront the deconstructionist critique of intellectual property rights and remove the major barriers interfering with a proper understanding of authorial entitlement. The book also familiarizes the reader with the rich historical and legal tradition [the words 'rich historical and legal tradition' depress this Kat: they remind him of all the things the British government has changed for the sake of change in recent years. It's almost as though being a rich tradition is a sort of death warrant] behind intellectual property protection".
Richard Spinello is Associate Research Professor in the Carroll School of Management, Boston College, US; Maria Bottis lectures in the Department of Archive and Library Sciences of the Ionian University, Greece. This combination conjures up images of dynamic management skills blended with patient research lovingly harvested from the dusty vaults of archived materials. At any rate, it works well. Defending IP rights in this cynical age is about as much fun as proving the existence of fairies, but at least these authors have done a credible job of it. Like ants, humans are tireless workers in their various creative activities; unlike ants, they are individuals and the protection of their differences -- and the cultivation of the personal output which distinguishes them from one another -- can itself provide a reason for protection.

Bibliographic details. Date of publication 2009. ix + 218 pp. Hardback. ISBN 978 1 84720 395 3. £59.95 (price with publisher's online discount £53.96). Book's web page here. Rupture factor: small.


Global Pharmaceutical Policy: Ensuring Medicines for Tomorrow’s World, by Frederick M. Abbott (Edward Ball Eminent Scholar Professor of International Law, Florida State University College of Law) and Graham Dukes (External Professor of Drug Policy Studies, Institute of General Practice and Community Health, University of Oslo, Norway).

According to the publisher's web-blurb:

"Pharmaceuticals play a central role in health care throughout the world. The pharmaceutical industry is beset with difficulties as increasing research and development expenditure yields fewer new treatments. Public and private budgets strain under the weight of high prices and limited access. The world’s poor see little effort to address diseases prevalent in less affluent societies, while the world’s wealthy are overusing prescription drugs, risking their health and wasting resources [Alas, it doesn't need a book to support these contentions, which are the 'givens' faced by pharma IP owners, generic manufacturers, policy-makers and patients alike].
As the global economic crisis exacerbates pressure on health care budgets, a new presidential administration in Washington, DC has committed to broad health care reform. These circumstances form the backdrop for this extraordinarily timely examination of the global system for the development, production, distribution and use of medicines. The authors are acknowledged experts in the fields of pharmaceutical law and policy, with many years experience advising governments, multilateral organizations and policy-makers on issues involving innovation, access and use of medicines. Supported by a team of independent scientists, doctors and lawyers, they take an insightful look at the issues surrounding global regulation of the pharmaceutical sector, and offer pragmatic suggestions for reform [To talk of 'global systems' and 'global regulation' is to take a lofty view of the various means, at once complementary and contradictory, that link the development, testing, distribution, sale and use of pharma products in the linked worlds of the rich, the developing and the economically stunted nations].

This book will be of interest to government policy-makers, members of industry, healthcare professionals, teachers, students and lawyers in the fields of public health, intellectual property and international trade".
At the heart of this book lies chapter 4, "The global regulatory environment: quality, safety and efficacy", which summarises and emphasises one of the work's most important points. The traditional notions of consumer protection, based on the presumption in favour of caveat emptor, are entirely inadequate in the field of medicine. This is the message that will remain with the reader when the data, the tables and the analysis have all faded into the background of the reader's consciousness.

Bibliographic details. Publication date 2009. x and 308 pp. Hardback. ISBN 978 1 84844 090 6. Price £ 75 (with publisher's online discount £ 67.50). Book's web page. here. Rupture factor: light.


Intellectual Property Policy Reform: Fostering Innovation and Development, edited by Christopher Arup (Professor of Business Law, Monash University, Australia) and William van Caenegem (Professor of Law, Faculty of Law, Bond University, Australia), contains contributions from not all but at least some of the 'usual suspects': the names of such productive souls as Peter Drahos, William Kingston and Matthew Rimmer are to be found among them.

So what does the publisher say about this text? According to the book's website:
"This state-of-the-art study argues that reforms to intellectual property (IP) should be based on the ways IP is interacting with new technologies, business models, work patterns and social mores. It identifies emerging IP reform proposals and experiments, indicating first how more rigor and independence can be built into the grant of IP rights so that genuine innovations are recognized [but this still leaves the question as to who does the recognising ...].

The original contributions illustrate how IP rights can be utilised, through open source licensing systems and private transfers, to disseminate knowledge. Reforms are recommended. The discussion takes in patents, copyright, trade secrets and relational obligations, considering the design of legislative directives, default principles, administrative practices, contractual terms and license specifications.

Providing contemporary empirical studies and covering public administration, collective and open approaches, and regulation of private transactions, this comprehensive book will prove a stimulating read for academics and students of law, business and management and development studies. Government policy makers and regulators as well as IP managers and advocates will also find much to provoke thought".
Of particular interest to this reader was Part II, dealing with Open Intellectual Property Systems. Matthew Rimmer's contribution on Wikipedia, collective authorship and the politics of knowledge is welcome, since serious contributions to the literature of the wiki from IP authors are in short supply.

Bibliographic details. Published 2009. viii + 324 pp. Hardback 978 1 84844 163 7. £ 79.95 (with publisher's online discount £ 71.96). Book's web page here. Rupture factor: small.

Wednesday whimsies

Happy midweek, everyone! As the count-down to the weekend begins, the Kats remain busy enough, gathering up some choice offerings for you and trying their very best to come up with some fresh insights.


European trade mark organisation MARQUES is now tweeting. You can follow MARQUES on Twitter here.


To follow the progress of the Digital Economy Bill in the United Kingdom, all you have to do is click here. To follow the progress of the British Economy, click here.


Around the blogs. The IPKat has been perusing the busy pages of Securing Innovation, a handsomely-produced confection by ip.com. Its byline is 'Managing Intellectual Property, Patents, Trademarks, and Trade Secrets. Does it? You can decide. In case you missed it, The 1709 Blog has published the questions referred to the European Court of Justice by the Hoge Raad (the Dutch Supreme Court) last Friday on the impact of the Information Society Directive on 'fair compensation' and the 'three-step test' under private copying levies: you can read the questions, and the whole case (in English!) here.


"Who owns the invention, the University or the researcher?" is the title of neat piece of analysis of the recent Full Court of the Federal Court of Australia decision in University of Western Australia v Gray [2009] FCAFC 116 (3 September 2009). The author, Neil Brown QC, is an arbitrator and mediator in Melbourne, Australia. You can read the full text here.


The Penny Drops is the theme of this year's Convergence Survey, researched by London-based law firm Olswang LLP -- where IPKat team member Jeremy is IP consultant -- together with YouGov. According to the data, Apple iPhoners are among the heaviest users of digital content and are also more willing than other consumers to pay for a wide range of types of content. They are heavy users of services such as on-demand TV - not only on their phones but also on other devices, such as the main TV at home. They also demonstrated greater willingness to use micropayments and subscriptions to pay for access to a broad range of content. You can get the full report (all 96 pages of it, with loads of convergence data drawn from extensive interviews with large numbers of users) by just clicking here, or you can read a much shorter note on it on the 1709 Blog here.

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