For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 26 May 2015

A call for financial transparency from the European Patent Office

Having been returned to blogging duty, Merpel has turned her attention to the finances of the European Patent Office.  She wrote about this last year, examining the 2013 financial report of the EPO, and concluded that it was not possible to establish with any confidence, or in any degree of detail, what the true financial position actually is.

It still doesn't add up ...
In the meantime, Merpel has been considering the revised proposal for renewal fees for the Unitary Patent from the European Patent Office, reported by the IPKat here.  These proposals are striking, in that they consider in some detail in Annex 3 the effect of various renewal fee proposals for the Unitary Patent, taken together with some assumptions about the level of uptake of the Unitary Patent - happily referred to as "penetration" - that is, the proportion of European patents for which unitary effect is expected to be requested, upon the renewal fee income of the EPO.

However, the Unitary Patent Regulation states in Article 12(1) that the level of renewal fees should be
" ... sufficient, together with the fees to be paid to the European Patent Organisation during the pre-grant stage, to ensure a balanced budget of the European Patent Organisation".
It does not state that the level of renewal fees should be sufficient to maintain a specified level of renewal fee income compared with the current situation. Article 42 of the European Patent Convention provides in similar terms that "The budget of the Organisation shall be balanced."

Now, "balanced" is a concept that requires to look at both the income and the outgoings of the EPO. Merpel is given to understand that the EPO generates an operating budget surplus year on year of the order of hundreds of millions of Euros: €281m in 2011, €311m  in 2012, €338m in 2013 and €364m in 2014.  Now these numbers may not be entirely accurate, and Merpel realises that it depends what accounting rules are used to process and report the numbers.  These figures are however hard to reconcile with the published accounts of the EPO.

The big imponderable seems to be the Pensions Reserve Fund.  This is the money that the EPO puts aside to fund the retirement pensions of employees, once it can no longer afford to pay them out of current income which, Merpel understands, is currently the case.  How much money the EPO needs to squirrel away depends on actuarial assumptions on the future pensions liability, and on the expected returns on the assets that already exist -- which are enormous at over €6 billion.  Merpel, who much prefers chasing squirrels to squirrelling anything away, cannot disentangle all of this.

But the point is that she should not have to.  If the EPO is supposed to present a balanced budget to justify the renewal fees that it wants, then it should explain openly and clearly to the European Union and to EPO users what its budgetary constraints actually are.  No explanation of why the proposed renewal fees levels are needed has emanated from the EPO.

This lack of financial transparency makes it also impossible to judge the obsessive message repeatedly coming from the EPO that there needs to be a huge leap in efficiency and productivity.  This increased productivity is being enforced by escalating production targets for examiners, directives to refuse various categories of leave, having non-examining project work done in extra time remunerated by bonuses (reported here), applying more stringent conditions to part-time working, and implementing regressive sick leave provisions (reported here).  But nowhere is the EPO explaining why this leap in production is needed.  Why not?

If transparency is good enough for
cats, it's surely enough for the EPO
And while she is on the subject of transparency, Merpel would also criticise the lack of transparency over the development of the renewal fee proposals.  Why has the EPO not published its two proposals itself, but instead left them to be found hosted by bloggers and law firms?  The same goes for the submissions in response to the proposals.  Merpel is aware of submissions from the IPO, BusinessEurope, the EPI, Eurochambres and member states (and there may be others).  Merpel has not seen any of them published; the Kluwer blog says that it has seen two of them and reports excerpts, but why are they not published where they can be readily accessed by the very many people who are concerned about the matter?  The section of the EPO's website dealing with the Unitary Patent is remarkably sparse given the EPO's pivotal role in the system, as the entity that both grants the European patent and registers its unitary effect.

If the EPO is arguing financial necessity both for its internal reforms to career structure to increase productivity, and for the level of renewal fees, then only a clear exposition of its financial position will suffice for the users and others affected by the European patent system.

So, what do we want?  Transparency about the EPO finances and the effect of Unitary Patent renewal fees on this.  And we would like it now, please.

3D printing and the law: three recent studies and some recommendations

3D Cherries ...
If you think that Bournemouth is just a rather old-fashioned traditional British seaside town, it's time to think again.  Not only has the local football team ("the Cherries") secured promotion to English football's Premier League next season, which means that it will have the thrill of playing the likes of Manchester United, Arsenal, Tottenham Hotspur and Chelsea at least twice before being relegated, but its local university has also hosted some useful thinking on the subject of 3D printing -- a topic that will be on everyone's minds long after the football team's exploits have faded into the past.  The following information, supplied by Dinusha Mendis (referenced below), explains:
3D Printing: some research results from the UK

Centre for Intellectual Property Policy and Management (CIPPM) researchers Dinusha Mendis and Davide Secchi, together with Phil Reeves (Stratasys, formerly Econolyst), recently published three reports on the intellectual property implications of 3D printing resulting from a project commissioned by the UK Intellectual Property Office (UKIPO). Dinusha (CIPPM Co-Director) led the project for the UKIPO and  all three Reports can be accessed here. 


In 2012 the Big Innovation Centre Report, Three Dimensional Policy: Why Britain needs a policy framework for 3D Printing, provided a number of recommendations, one of which was to review the IP implications of 3D printing. In 2013, the UKIPO highlighted the lack of empirical evidence relating to 3D printing and the difficulty in determining whether this emerging technology will have an impact on IP laws.  The aim of the current project was therefore to respond to this limited research.  In doing so, the Studies adopted a legal, quantitative and qualitative approach.

The Studies

Some platforms are more
popular than others ...
Study I, A Legal and Empirical Study of Online Platforms and an Analysis of User Behaviour (here), explores 17 online platforms dedicated to 3D printing. It provides a legal and empirical overview of how online platforms operate, aiming to give a clearer understanding of ‘how’ the sharing of 3D design files on online sharing platforms happens, together with the parameters for sharing, e.g. terms and conditions, applicable rules and regulations, together with restrictions and bounds that apply to user behaviour and file-sharing.  It evaluates the extent of this phenomenon among users, including factor such as price, downloads, licences, type of physical objects which are shared, as well as the implications for IP law – especially for sharing and the copyright implications relating to software.  As such, Study I presents new findings on the current status of 3D printing relating to online platforms.

The potential for printing
3D spare parts is immense
Study II, The Current Status and Impact of 3D Printing Within the Industrial Sector: An Analysis of Six Case Studies (here), explores the status, impact and adoption of 3D printing in the Replacement Parts, Customised Goods and High Value Small Status Goods Industries. To map the impact of 3D printing technology on the UK’s economic and legal landscape, Study II presents six case studies which consider the current and future consequence of 3D printing.  The first two address issues relating to Replacement Parts and consider how 3D printing will affect the supply of aftermarket parts to the consumer.  Two case studies on Customised Goods address how 3D printing enables unique products to be tailored to consumers’ needs, and the IP challenges that arise from this. The final two case studies, on High Value Small Status Goods, looks at the impact of 3D printing on consumer products that have a low functional purpose, such as collectible figurines or sculptures.

The third publication, an Executive Summary (here), brings together the findings and conclusions from the two Studies and provides recommendations.

The Studies conclude that there is no urgency to legislate at present as 3D printing is not yet a mass phenomenon, warning that a premature call for legislative and judicial action could stifle the public interest in “fostering creativity and innovation and the right of manufacturers and content creators to protect their livelihoods”.

However, as 3D printing continues to grow, it is important to address the IP issues arising in this area in order to cultivate a climate better suited to tackling impending IP issues more successfully, and in a manner which takes into account the interests of all stakeholders. As such, the Studies make some important recommendations to Government, the Industry and Intermediaries (online platforms) about how to regulate 3D printing without resorting to legislation.

Recommendations and conclusions

Recommendations to Government include the setting up of a Working Group to review the technology and its IP status, particularly in relation to the software (Computer-Aided Design (CAD) Files) and the traceability of spare parts. The Reports also suggest that the Government should adopt a ‘wait-and-see’ approach.

The cartridge ran out half
through the print job ...
The Studies conclude that 65% of users engaged in the activities of 3D printing on online platforms do not take licences with regard to their work, leaving their creations vulnerable and open to infringement while losing the ability to claim authorship. The Study therefore recommends that online platforms provide more awareness and understanding of the different types of licences. The Study suggests that this aim can be achieved by explaining the nuances relating to each licence in clear and simple language, rather than simply ‘encouraging’ the user to adopt a particular type of licence. Further, online platforms can assign the most appropriate licence as a default with ‘opt-out’ as an option.

Finally, in relation to Industry, the Study recommends the adoption of new business models and provides a number of suggestions in this regard. The Reports also suggest the licensing of CAD files more widely, thereby opening up doors to a range of outlets selling 3D CAD files. This will avoid locking the manufacturer into an agreement through a system such as a ‘one-stop-shop’ for (spare) parts. Although a one-stop-shop may take away the costs of manufacture, transportation and storage while reducing potential infringement of IP laws, it can lead to a monopoly-situation, which should be avoided.

Monday, 25 May 2015

Monday miscellany

Forthcoming events.  Do please remember to check out the IPKat's Forthcoming Events list for lectures, seminars, conferences and other opportunities to get out and about, meet people and use IP as a perfect ice-breaker for those otherwise stressful conversations with strangers.  The page is here, at your disposal. Enjoy!

On the subject of forthcoming events, the IPKat never misses a chance to rub noses with other Kats of note, so his tail started twitching when he heard that the IP Ball 2015 has been announced: its theme is a celebration of the 150th anniversary of Alice in Wonderland.  What Kat would turn down the chance to party with the Cheshire Kat himself? Happening on 18 July 2015, in support of Great Ormond Street Hospital, with a drinks reception at 6 pm, a three-course dinner at 7 pm, and music and madness to follow, this Kat can't wait to don his DJ [though he may have to, since he'd have to diet for about three months to have a chance of squeezing into it] and share a milk bottle with the King of Grin himself. Tickets are £105 per person or £100 for CIPA student members.  Just email with your name, your guest's name and your CIPA student number (if applicable) to get your claws on them.  Deadline for purchase is 5 July 2015, which leaves you plenty of time to primp and preen so as to be the most beautiful Kat at the ball! For more information visit  

From respected IP scholar and Katfriend Jacques de Werra (Law School, University of Geneva) comes news of an exciting international conference which he is organizing on June 17 and 18 on "Jurisdiction & Dispute Resolution in the Internet Era: Governance and Good Practices". This is part of the programme of the Internet l@w summer school). Though the footprint of the full programme runs wider than just IP, there is plenty for the IP purist to enjoy, such as jurisdiction in internet-related IP cases and FRAND patent disputes. For further details, just click through to the conference website here. Online registration can be achieved by clicking here.

Mei Eden: the Hebrew version
of the logo has the rainbow
running from right to left
Around the weblogs 1. Writing on the IP Factor weblog, the eponymous Michael Factor diverts his attention from patents to a fascinating piece of litigation in which the French custodians of the geographical indication Champagne won a major victory in Israel against Mei Eden, a local producer of mineral water which was marketed under the slogan "Nature's Champagne". The bottom line, it seems, is that you may not be able to to improve on nature, but you can at least get legal relief against it. Another compellingly fascinating post can be found on The IP Breakdown and it's by Rick Sanders. The title is "MCA Explainer: Why Chilling Effects Can Display Takedown Notices Complete with Pirate URLs" and, if you think the title's long, you should only see the blogpost which is virtually of law journal length. For all that, it reflects on the operation of Chilling Effects, for good or ill, and asks some uncomfortable questions about the world of DMCA takedown notices.  Returning from Barcelona, where he attended the the inaugural meeting of BioLawEurope, IP Draughts' mastermind Mark Anderson penned "You can’t always get what you want (from your lawyer)", reminds us there is a difference between "networking", which is a genteel euphemism for marketing oneself to total strangers, and creating a network, that is to say a grouping of like-minded practitioners who recognise their limitations and the ability of each to enhance the professional services of the others.

Around the weblogs 2. In "Of Copyright and Spiders", the 1709 Blog's Andy Johnstone explains why UK copyright could not be used as a basis for restraining the release of certain of Prince Charles's letters to the public, here. On the same weblog, one-time guest Kat Marie-Andrée Weiss asks the surprising question "Is Peggy Guggenheim’s Collection a Work of Art Protected by French Copyright?" and, remaining in France, Asim Singh ponders the prospects of a new approach to conflicts between pre-existing works and derivative works. Moving to the IP Finance blog, Keith Mallinson returns to one of his favourite subjects -- FRAND licences and the free market -- in "Masterminds Discuss Fair Play, Equitable Rewards and Market Success in Patents and Standards".

Never too late: if you missed the IPKat last week ...

Here, thanks to the unstinting efforts of our noble friend Alberto Bellan, the Kats are proud to present to you the 47th weekly round-up of the previous week's substantive Katposts. For those readers who have been experiencing a late May or Early Summer public holiday, this service is, we hope, both useful and logical, and should help you fill the knowledge gap with a minimum of inconvenience and discomfort.  Anyway, here's what Alberto has to say about those posts you might have missed:

David reports that Nicolas Sarkozy's party UMP has resolved to rename itself "Les Républicains". In response, other citizens of la République française seem to have taken legal action claiming "violation of the Constitution and the 1883 Paris Convention". Très chic.

* Hassan hassle? CJEU asked to rule on effect of non-registration of Community trade mark transaction

Is a non-registered licensee of a registered Community trade mark allowed to start infringement action against a registered licensee or against a non-registered infringer? Confused? Then read this post by Jeremy's for a quick comment on this brand-new reference to the Court of Justice of the European Union (CJEU).

* A test-drive for the Unified Patent Court: Part IV

Bristows' Alan Johnson and Alexandria Palamountain have already delighted the IPKat's patent-litigating readership with three earlier reports regarding the magical world of the Unified Patent Court (UPC) system, given a reality check [here,  here  and  here].  Now it's time for the fourth.

* Horological Horror Show for Swatch, while Panavision has a Ball

Valentina reports on the General Court of the European Union's decision in Case C-71/14, which saw the well-known SWATCH trade mark opposing to a mark application for 'SWATCHBALL'.

* A "transcendental moment" for "a very positive spirit", be it whiskey or Tequila

Jeremy breaks the news of radical developmeny concerning the Lisbon treaty on appellations of origin and geographical indications. 

* EPO revises proposals for renewal fees for Unitary Patents -- but does it really make any difference?

Merpel and the Kats are great fans of the debate upon the level of renewal fees for the Unitary Patent [see, eg, here]. Also, they feel so lucky to have many Katfriends at hand, helping them to follow the intricate sequence of proposals on that matter. This time, Darren hosts a post by Bernard McDonald, technical assisant at Gill, Jennings & Every, who reports on the issuance of the revised proposal.

* Colourless Copaxone in the clear: Teva's synthesis patents held to be (mostly) valid

The never-ending litigation between Synthon and Teva over Copaxone (glatiramer acetate) has already given us interesting and striking decisions from the Patents Court  [also here], the Court of Appeal in England, and also the US Supreme Court The parties have been back in court to fight over other patents, resulting in the decision Synthon B.V. v Teva Pharmaceutical Industries Ltd [2015] EWHC 1395 (Pat), which came out last week and which Darren reports in timely fashion.

* When functionality cuts deep, it can be hard to handle: Yoshida appeal dismissed

Valentina's back again to pen on General Court's decision in Joined Cases C337/12 P to C340/12 P Pi-Design AG, Bodum France SAS and Bodum Logistics A/S v OHIM, Yoshida Metal Industry Co. Ltd [on which see the IPKat's earlier post here]a trade mark dispute concerning a Community trade mark resembling a knife-handle.

* Do you value an invitation to the UPC court fees consultation event?

"CIPA, The IP Federation and the IPO will be hosting awareness-raising events for individuals and businesses to gain a better understanding the background of the UPC consultation, the details of the various elements contained within it and how best to get your views across", Annsley reports. 

* Disturbing news from Eponia: staff union under fire

Merpel has been having a quiet May, but has been rudely awoken from her frolics in the amiable grass of Lincoln's Inn Fields (her preferred place for Spring gambolling) by disturbing news from the European Patent Office.

* Does a patent professional need to raise the trade secret option with the client?

To what extent does an attorney who is engaged in patent matters have any duty or obligation to raise the trade secret option to a client and to counsel how the client might behave to protect is trade secret? If the patent professional is a licensed patent attorney but not a licensed lawyer, is he/she prohibited from providing legal advice on the trade secret aspects of a client’s invention? Delicious food for thought, kindly provided by our Neil.

* When the biter gets bit: Cross-undertakings in damages

The question of how a court will calculate damages upon lifting an interim injunction, when a cross-undertaking has been given by a right holder when obtaining that injunction, is a very relevant factor to the holder of an IP right. Right on these points, Katfriends in Wragge Lawrence Graham & Co., Paul Inman and Ailsa Carter, have summarised last week's decision from the Court of Appeal in AstraZeneca AB & Another v KRKA dd Novo Mesto & Another [2015] EWCA Civ 484.

* F1 ends up in hot water - no similarity to F1H2O

In Case T-55/13 the General Court of the European Union deals with Formula One Licensing BV's opposition against Idea Marketing SA’s Community trade mark application for 'F1H2O'. Valentina tells all.



Never too late 46 [week ending on Sunday 17 May] – Whyte & MacKay Ltd v Origin Wine UK Ltd and Dolce Co Invest Inc | "Three aspects of information: Current issues in trade secrets, client confidentiality and privilege" -- a new event | CJEU upon distribution right in Dimensione Direct Sales srl and Michele Labianca v Knoll International SpA| UK Supreme Court on Mere reputation and passing-off | 14 million kat-thanks | Actual confusion at INTA | Italy's twist on UP Package | Moral authorship over promotional spot in Italy.

Never too late 45 [week ending on Sunday 10 May] – INTA 2015 and the Kat | IP and Competition Law | Sky v Skype | CJEU v Spain| Digital Single Market Strategy | IPCom v HTC | European Qualifying Examination appealed | UPC fees | CJEU and 3-D marks | EPO Oral Proceedings.

Never too late 44  [week ending on Sunday 3 May] – Forgotten principles and histories, and the role of complexity in patent law | King's College copyright distance learning Course | Spain, Berne, and the non-discrimination principle | Novartis v Focus, Actavis, Teva | SUEPO keeps demonstrating | Popcorn's blocking injunction | Unprecedented pre-action disclosure application in Arnoldian Big Bus  v Ticketogo | World IP Day | EPO's sick leave policy compared | Google wants your patent | "BE HAPPY" trade mark | UK Green Party's Manifesto on copyright law.

Never too late 43 [week ending on Sunday 26 April] – C5's annual Pharmaceutical Patent Term Extensions Forum | UPC: patent attorney and client discuss | CJEU’s 2014 report | PUMA v PUDEL | Leaked Digital Single Market Strategy | Again, the EU Patent Package and alleged dangers| EU TM reform | Is Svensson’s new public ok? | OHIM’s rebranding | LV’s pattern as trade mark | EPO and trade unions | Patent and first-mover advantage | Libraries’ right to digitise their collection in Germany.

The purpose of appeal in the patent system: dissenting opinions, oversight and law-making

This article is mostly about appeal procedures at the European Patent Office (EPO). For those readers who are not familiar with how the EPO organises itself, here is a simplified structure:

First Instance: Examining Divisions and Opposition Divisions.

Second Instance: Boards of Appeal which deal with appeals from the First Instance.

Something terrible needs to have happened
for a Petition for Review to succeed
The Enlarged Board of the EPO decides on referrals from the Boards of Appeal on important points of law. The Enlarged Board also deals with Petitions for Review as discussed below.

Petition for Review is not a third instance

This Kat recently read decision R 5/14 which concerns a Petition for Review. A Petition for Review is a relatively new procedure at the (EPO) in which a party can ask the Enlarged Board to review a decision of a Board of Appeal. However for a Petition to succeed there normally needs to be a fundamental procedural defect, and this happens rarely. In the case of R 5/14 the Petitioner had a long list of complaints against a Board of Appeal, but no real chance of success. In its decision the Enlarged Board said:
'The review procedure is an exceptional means of redress created by the legislator in the amended EPC 2000 with a view to rectifying intolerable procedural violations. It was never intended to operate as a third instance. These principles were established in the first decisions taken on petitions for review (see e.g. R 0001/08 of 15 July 2008, Reasons 2 and 3). The right to be heard does not mean that the Board must accept argumentation; it must merely consider it. Equally, it does not mean that the Board has to allow requests; it simply has to give reasons when refusing them. If the Board's response does not satisfy a party, that is not a procedural violation; it simply means that the Board took a different view of the facts. And that is not a matter for the Enlarged Board.'
This statement is a comment both on the function of Petition for Review and also on the extent to which a Board of Appeal needs to ‘indulge’ a party. It made this Kat wonder about the different functions that the appeal process serves within the patent system.

Different types of appeal procedure

There are two types of appeal procedures. Appeals ‘on the record’ or ‘de novo’. Appeals which are ‘on the record’ consider whether something went wrong in the original decision-making process, and this is what happens in a Petition for Review. In ‘de novo’ appeal there is essentially a re-hearing of a case, and to an extent this is what the Boards of Appeal do.

The way the EPO Boards of Appeal work

In this Kat’s experience EPO Appeal Boards have a better understanding of the case law and the principles behind it compared to Examining and Opposition Divisions. That means Appeal Boards can be flexible in applying case law, going beyond a formulaic approach, presumably due to their years of experience compared to the First Instance.

Having the correct perspective
lets you see the bigger picture
An Appeal Board has before it the decision made at First Instance, and is in essence going to look at the correctness of that decision. Appeal Boards are becoming more reluctant to allow new evidence or claims requests to be filed during the appeal proceedings. Whilst this makes it more difficult for the parties in appeal one can see the logic behind it. Within these constraints Appeal Boards do essentially re-hear a case and will often make decisions on the relevant issues which are different from the First Instance decisions.

As an aside it is interesting to note that whilst Appeal Boards are becoming increasingly strict in allowing new claim requests, the introduction of the Central Limitation Procedure at the EPO has created a means for the claims be amended between First Instance and Second Instance in national court proceedings (here).

What are Boards of Appeal correcting?

Many patent decisions can go either way. There will be reasonable arguments for and against, but a decision has to be taken for or against the parties. The concept of the ‘Dissenting Opinion’ (though it does not happen at the EPO) reflects this reality of legal decision-making and allows an alternative version of what could have been decided to be recorded in the decision so that it may benefit the development of case law in some way.

Given that patent decisions are often close to the borderline and made on the basis of complex facts and arguments the means to review them thoroughly needs to be available. Inevitably a proportion will be incorrect. Many decisions are improved simply by having a second set of eyes look at them.

In this Kat’s experience a Board that has in front of them a First Instance decision together with the views of the parties about the decision is well placed to focus on the most relevant issues and arrive at the best perspectives. Thankfully, Boards of Appeal are normally prepared to reconsider any issue that needs to be looked at again, and will do so as is needed to arrive at the most correct outcome. This Kat has found the Boards of Appeal to be more probing in their analysis, more appreciative of the subtleties of a case and better able to match the contribution with the appropriate claim scope in comparison with the First Instance.

When the appeal process creates new law and new directions

This Kat is fascinated by the power that the highest courts have in making new law, and really changing things. There are numerous examples of the EPO Enlarged Board doing this, but equally the US Supreme Court (here) and the UK Supreme Court (previously the Law Lords of the House of Lords) have the ability to make substantial changes to case law or to create new principles. The Court of Justice of the European Union (CJEU) also has this role and for example has recently been interpreting what an ‘embryo’ is (here).

It's not always easy to see the
reasoning behind a decision
This Kat believes the UK Supreme Court’s first patent decision was an interesting one in this respect. In Human Genome Sciences Inc. v Eli Lilly and Company [2011] UKSC 51 the Supreme Court reversed the findings of the High Court and Court of Appeal. These lower courts had viewed the invention to be at the level of a ‘research project’ and not yet at the point of being a patentable product. However the Supreme Court felt a much more lenient view was needed, and I believe introduced a more balanced and nuanced view of how a ‘contribution’ gives rise to patentable claim scope. Similarly in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. [2008] UKHL 49 the House of Lords tried to change inventive step case law in the UK to be more in line with EPO thinking.

The correcting guidance of oversight

The US Committee on Oversight and Government Reform (here) keeps an eye on the activities of the US government. Its existence shows that every structure with the power to make decisions needs overseeing. At the EPO the Boards of Appeal have the function of keeping Examining and Opposition Divisions in line, and the Enlarged Board in turn oversees the work of the Appeal Boards. The existence of oversight will in itself improve the performance of the First and Second Instances as they bear in mind the possibility of review of their decisions.

The need for ‘good’ reasoned decisions

As mentioned above the existence of a First Instance decision will help an Appeal Board in its work to possibly come to a more correct view. However I believe a Board is helped if the First Instance decision explains its reasoning as fully as possible. Clearly a decision is most helpful when it can be seen how the relevant Instance came to that view and which principles were followed or developed. In this respect this Kat has pondered whether Mr Justice Arnold’s decision Warner -Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat) is a good one in respect of the interpretation of Swiss style claims (Katpost here). It may have been the correct decision but Mr Justice Arnold does not explain why Swiss style claims are directed to an actual manufacture of a product, rather than representing a legal fiction. Swiss style claims are complex (Katpost here) and ignoring that complexity means the decision has arguably not tackled what it should have done. Had Mr Justice Arnold put his reasoning down on paper it would have allowed a more complex debate to happen than has been the case. Perhaps, though he felt it was always for the Court of Appeal to tackle the crucial issue of what a Swiss style claim really means. However this Kat believes that had Mr Justice Arnold provided more reasoning it would have assisted the appeal process for this case.

Saturday, 23 May 2015

F1 ends up in hot water: no similarity to F1H2O

Among the trade mark cases of this week, in case T-55/13 the General Court dealt with another dispute (following Case C196/11 P, reported by Jeremy here) involving several trade marks of ‘the top class of professional motor racing’, in other words Formula 1.

This time, Formula One Licensing BV opposed Idea Marketing SA’s CTM application for the F1H2O word mark, which sought protection for goods and services in classes 9, 25, 38 and 41, covering in this latter class, among others, ‘sporting and cultural activities’ and ‘direction, management, organization and execution of sporting competitions’.
It based the opposition on its International and UK word trade mark Registrations for the sign F1, and on various International, Community and national figurative trade mark registrations for the F1 and F1 Formula One signs, registered for several goods and services, including among them those in classes 9, 25, 38 and 41 for which the contested application sought protection. Both the Opposition Division and the Board of Appeal rejected Formula One Licensing’s claims grounded on Article 8(1)(b) and Article 8(5) of Regulation 207/2009In particular, the Board of Appeal found that the earlier word marks were visually and phonetically similar to a low degree to the contested application and did not share any conceptual similarity. Basically, the F1H2O sign would be perceived in its entirety and not as composed of the elements ‘F1’ plus ‘H2O’, the latter being water’s chemical formula.

Further, while the International Registration for F1 could show no inherent distinctiveness in relation to ‘sporting events or the merchandising thereof’, both the International and UK word mark registrations have a limited distinctive character in connection with the remaining goods and services designated by the CTM application.
Could the use of the F1 sign help acquire a high level of distinctive character? No, said the Board of Appeal, because the reputation could be ascribed only to the figurative elements characterising the earlier figurative marks and not to the element F1 on its own. In any case, there was no similarity between the earlier figurative marks and the opposed application.
It followed that, as for the claim of broader protection based on reputation, the Board of Appeal denied it in respect of the earlier word marks and concluded that the reputation of the earlier figurative marks for certain goods and services could not be relevant as they were not similar to the contested application.
In the appeal to the General Court, Formula One Licensing insisted in two pleas in law respectively entailing the misapplication of Article 8(1)(b) and 8(5) of Regulation 207/2009. The General Court dismissed the action.

First, the General Court observed that the Board of Appeal made no clear reference to the relevant public of the goods and services under comparison. However, the Court deduced that the Board of Appeal endorsed the definition of relevant public as set out by the Opposition Division (i.e. ordinary consumers as well as, in respect of some services in classes 38 and 41, professionals) and it sided with both of them. In any event, the parties did not challenge the finding that the goods and services at issue were identical. Therefor, the likelihood of confusion was excluded in the light of the dissimilarities of all marks involved.

In respect of the earlier word F1 marks, the Court said that the F1H2O application had weak visual and phonetic similarities, as the F1 element was shared by all marks, but they were offset by the conceptual differences between the marks. In that analysis a great importance was given to the fact that the contested application would not be broken down into its F1 and H2O elements. While it would be perceived as a combination of letters and numbers, or as an invented chemical formula, the F1 component did not play an outstanding role either from the visual or phonetic or conceptual point of view. Moreover, the Court agreed with the Board of Appeal’s assessment on the distinctive character of the earlier marks.
Nor were the earlier figurative marks found to be confusingly similar to the contested application, despite a weak phonetic similarity. That was so because the distinctiveness of the earlier figurative marks derived from their figurative elements (and not from the F1 combination), namely that ‘the letter F - is - in capital letters and italics, followed by figure ‘1’ which itself is represented in an original typography with a series of fine horizontal lines that refer to an image of speed’. Where the figurative earlier marks included the additional component ‘Formula 1’, the differences increased as there was no equivalent in the contested application.
The General Court could not apply Article 8(5) either to the word or to the figurative marks: in respect of the former, no proof of reputation was provided by Formula One Licensing; while, in relation to the latter, the General Court excluded that in the mind of the relevant public there was any link between them and the F1H2O CTM application, insofar as it already held that the marks were dissimilar.

Friday, 22 May 2015

When the biter gets bit: Cross-undertakings in damages

The question of how a court will calculate damages upon lifting an interim injunction, when a cross-undertaking has been given by a right holder when obtaining that injunction, is a very relevant factor to the holder of an IP right. It's all very well to get an injunction against an alleged infringer, but how much might it all end up costing if the IP right is invalidated or held not to be infringed?

The IPKat is delighted to provide a guest post from two Katfriends in Wragge Lawrence Graham & Co., Paul Inman and Ailsa Carter, who have summarised a decision from the Court of Appeal yesterday, AstraZeneca AB & Anor v KRKA dd Novo Mesto & Anor [2015] EWCA Civ 484. They write:
The Court of Appeal has confirmed the Patents Court's award of £27million, to Krka and Consilient, in compensation for the delay they incurred to their UK launch of Krka's generic esomeprazole capsules.
The Court of Appeal confirmed the approach taken by Sales J to the assessment of damages payable by AstraZeneca under its cross-undertaking. See Sales J's original judgment here (or the summary on PatLit here).
In 2009, AstraZeneca was granted European Patent number EP (UK) 1 020 461 (the 'Patent'). The claimed protection was in 'Swiss form', to the use of magnesium esomeprazole with a high optical purity in the manufacture of a medicament for the inhibition of gastric acid secretion. The Patent was due to expire in 2014. AstraZeneca enjoyed the monopoly conferred through the production and sale of a tablet formulation of esomeprazole called Nexium.
In September 2010, the defendants, Krka dd Novo Mesto and Consilient Health Ltd, sought to bring to the market an esomeprazole capsule called Emozul, which was in all material respects bioequivalent (i.e. 'generic') to Nexium.
AstraZeneca issued proceedings for infringement of the Patent and sought an interim injunction to restrain marketing of Emozul pending trial. Krka agreed to submit to AstraZeneca's application, on the basis that AstraZeneca gave the usual cross-undertaking in damages, which it duly did.
However, at around the same time, another generic company, Ranbaxy (UK) Ltd, began proceedings in respect of the same patent, challenging its validity. Unusually, a trial took place limited to the issue of infringement and in July 2011, Kitchin J (as he then was) held that Ranbaxy's product did not infringe. Shortly afterwards, the injunction on Krka was lifted.
The declaration of non-infringement awarded to Ranbaxy opened the door to the marketing of generic esomeprazole products by a series of other companies, including Arrow, Mylan and Teva. Krka and Consilient were therefore deprived of their "first mover" advantage. They claimed damages under the cross undertaking given by AstraZeneca, seeking £32 million in respect of their losses.
The law on the calculation of damages under a cross-undertaking 
In his January 2014 judgment, Sales J referred to the judgment of Norris J in Les Laboratoires Servier v Apotex Inc [2008] EWC 2347, [2009] FSR 3 as explaining the general principles to be applied when assessing the damages payable under a cross-undertaking. The Court of Appeal endorsed this.
The Court of Appeal also made clear that where a claimant has obtained interim relief by persuading the court that it would be easier to calculate the defendant's loss than his own, the claimant should not later say that the task of calculating damages was of such extreme complexity that a cautious approach was justified. There should be 'symmetry'. Giving the only reasoned judgment, Lord Justice Kitchin accepted that evidence of 'true comparables' is likely to be of great assistance to the court in assessing what would have happened but for the grant of an injunction.
Calculation of Krka and Consilient's damage 
Key to the finding of the judge at first instance, and the confirmation by the Court of Appeal, was that in the present dispute, the approach to the calculation of damage contended for by the defendants relied upon comparables that were 'more true' to the counterfactual consideration than those relied upon by AstraZeneca.
AstraZeneca contended that the sales of the defendants' Emozul following its actual launch in September 2011 represented what would have been achieved had the launch occurred as originally planned. Since AstraZeneca's Nexium was sold in tablets, prescribing practice would need to have changed in order for the Emozul capsules to be dispensed, so AstraZeneca contended that market penetration would have been relatively modest. They relied on sales data following the actual launch of Emozul and the behaviour of a market for a different drug, Venlalic (an anti-depressant), where a branded generic tablet was launched into a capsule market. So, contended AstraZeneca, the defendants' loss amounted to £3 to £6 million.
The defendants, however, contended that in the absence of "horizon scanning" indicating imminent launch of other generic esomeprazole medicines, and following the defendants' strategy of marketing Emozul to NHS Medicine Managers, Primary Care Trusts (PCTs) would largely have issued guidance recommending a change to prescribing practice in order to make savings on bills of esomeprazole medicines. This would have led to much larger sales of the defendants' medicines. Evidence was given by a total of 16 medicine managers, which the judge considered formed a good representative sample, and whom he considered convincing.
Nevertheless, recognising a tendency of Medicine Managers to exaggerate their success in 'switching' campaigns, he reduced the sum claimed by the defendants by an 'uncertainty discount' of 20%. The consequent award of £27 million was, according to the Court of Appeal, properly founded upon the evidence.
In confirming Sales J's judgment, and endorsing the comments of Norris J in the Servier v Apotex inquiry, the Court of Appeal has made clear that a claimant who obtains interim relief in a process involving a limited consideration of the merits should similarly expect a "liberal assessment" of damages under any cross-undertaking, in the event that it is unsuccessful in its substantive claim.
Further, where any 'wrongful' behaviour is identified in the claimant's enforcement of its patent, restitutionary damages may, potentially, be available.
For several years the courts were relatively sympathetic to requests for interim injunctions in pharmaceutical patent claims, and there seemed relatively little exposure for patentees protecting a monopoly market in a high value pharmaceutical. The law, and the sympathies, have perhaps developed. Patentees can no longer take for granted profits made during the term of interim injunctive relief, irrespective of the outcome of the substantive claim.
More generally, as regards the availability of interim relief against generic pharmaceutical companies where an invention is claimed in Swiss form, the outcome of the appeal of Arnold J's decision in Warner-Lambert v Actavis [2015] EWHC 72 (Pat) is awaited with interest.
Many thanks to both Paul and Ailsa for both the summary and the commentary.

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