The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 31 October 2008

Friday frissons

Don't forget to check out the events listed in the IPKat's superbly-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page. The number of events currently listed is 34. FREE events are listed in an environmentally friendly green.

That Google Book Agreement? The IPKat mentioned it in brief, but American scholar, gentleman and fellow-blogger C. E. Petit is keeping a far closer eye on it via his weblog, Scrivener's Error.

News has been brought to the IPKat's sensitive ears that Yahoo!, the somewhat-left-behind US online search engine, is engaged in “meaningful” due diligence about a possible combination with Time Warner internet unit AOL, but that a deal is not imminent. The Kat is overjoyed to see the words "meaningful" and "due diligence" in such close proximity, but wonders what other sort there is.

Companies object to use of trade marks in films

The IPKat read with bemusement a piece in today's Times describing how Mercedez Benz and the makers of a popular unnamed fizzy drink 'meant to unite the world' insisted that their trade marks be removed from scenes in the film Slumdog Millionaire. The film, the latest by British director Danny Boyle (who sounded off about the issue at the film's premier last night), tells the story of a boy from Bombay's slums who reaches the final of the Indian version of Who Wants to be a Millionaire. The companies are alleged to have thought that their brands would be sullied in shown in the setting of the slums. The film makers were forced to spend thousands of pounds blanking out the logos in scenes were the stars were shown drinking fizzy drinks on a rubbish dump and where a Mercedez car, driven by a gangster, was shown in the slum. According to Boyle:

“We wanted to use a Mercedes because . . . this guy, this gangster would drive a Mercedes . . . but if you use Mercedes then clearly you have to get permission, and we asked for their permission and they refused it.”

Could Boyle have just gone ahead and used the trade marks, the IPKat wonders? The use might lead to unsavoury associations, bringing with it a risk of tarnishment, but is it trade mark use, and is trade mark use even needed? (We've had lots of cases about this, but the answer still isn't clear, and perhaps the answer is different for Art.5(2) anyway). This underlines the accute need for clear guidance from the ECJ on the issue for once and for all. Life would be rather difficult if trade mark owners can use their marks to stop real products being shown in films, or even just in films which are not to their liking. Actually, the outcome in this situation could have been worse - at least the companies don't seem to have argued that their product shapes are trade marks, the use of which they can control. Merpel notes with a degree of regret that it wasn't the association with a gangster that annoyed Mercedez, but rather the association with a slum.

The warning shot

The current issue of the UK Intellectual Property Office's Insight newsletter carries a feature entitled "The Warning Shot". This turns out to be a piece by Eversheds technology partner Simon Crossley on how to write warning letter to a would-be infringer. Simon writes, in relevant part:

"... Most of the time, an infringer will cave in once you have sent them a letter. For between £1,000 and £2,000, you are providing them with an easy way out of the mess into which they have got themselves. You might even ask them to pay your legal fees. [the IPKat notes that this is frequently demanded of even incidental infringers, for example those who find themselves in the middle of a supply chain -- who are asked to give undertakings not to infringe again, when they are scarcely in a position to verify whether goods are genuine or not, and who are only too happy not to infringe but don't see why they should have to pay the other side's costs when they willingly comply with all their other requests and the first they heard about the infringement was when they got the other side's solicitor's letter].

So what is the formula for putting together a letter that warns any trespassers off your rights? To emerge as the winner in any pre-trial correspondence, use these basic rules: watch your market; collect the evidence; write a careful letter; and then extract a promise from them to stop [these are necessary conditions for emerging as a winner, but not sufficient ones. You also need an addressee who is sensible, cooperative and risk-averse -- and in the case of the UK a postal system that is capable of getting your letter to the addressee].

Watch the market

You might as well forget about your IP, if you ignore what everyone else is doing in your market and let the unscrupulous trample on your rights. In the same way as you watch your competitors’ marketing strategy and product development, you should think about whether anyone is misusing your rights, swiping your inventions or lifting your software.

If they are sticking your brand on a product, that is easy to point out. In a complex piece of technology, it can be harder to prove that your IP is being abused. But without proof, you are not going to get any sort of remedy [good point: assertions of bad faith, angry criticisms of another's business practices and working on a good hunch are no substitutes for some sort of real evidence].

Go steady with the allegation

Once you have a case and evidence to prove it, then you might think all you have to do is write the infringer a letter, setting out your allegation. The difficulty is that in England, like most jurisdictions, there are laws to say that you cannot make unjustified threats against third parties. [this is a snare for lawyers as well as their clients, since they may be liable for threats made on their clients' behalf. Also, while many jurisdictions have laws against unjustified threats, they don't all have them in their IP laws -- they be lurking elsewhere in civil or procedural codes].

... So when drafting a letter, take care in alleging any infringement, otherwise you can easily fall foul of the law yourself.

Cease and desist

Once you have checked the status of your opponent, you can usually write your letter. In a page or two of plain English, say: here are my rights, here is what you are doing and here is why you are infringing, so stop it or I will take action against you in the courts. Alternatively, ask the infringer to sign an undertaking to prove that they will never use your rights again.

"Cease and desist" [Merpel says, this seems a bit repetitious to me. Can you desist without ceasing?], a request to halt an activity or face legal action, is normally your goal. You might also ask for any stocks of the offending products to be destroyed or sent to you. Sometimes, you might ask for damages, although you are unlikely to get too far - typically, a court decides any award.

If you are warning off traders, then your lawyer will probably produce a standard format document for you to fill in. In more complicated cases, you will collect the evidence, and let your lawyer put a framework round it.

The response

Once your opponents see that you have collected the evidence and are taking advice, they will normally back down, although you may have to negotiate the terms.

Or they might reply by saying you are claiming rights that are far too broad and they are not doing anything wrong. That’s when you get into a fight and court proceedings begin.

The response to sending a letter depends on the identity of the infringer. In the UK and Europe, these types of letters are taken seriously. In the USA, they are less afraid. Any response might be felt to weaken their case. They will wait to see if you sue. Then they know you are serious. Such an approach is more usual in electronics and software. In life sciences, letters are taken more seriously. [US correspondence also seems to be driven by a paranioa about discovery in subsequent proceedings, and many Americans are ultra-cautious about not writing anything that they wouldn't want seen in court]

Letters remain a voluntary course of action - they do not force the other party to do anything. However, courts prefer you try to settle before going to trial. So, in any action that you take against an infringer, a letter is almost always the opening ploy".

The IPKat thinks that initiatives like this are a brilliant idea. The UK IPO is not only providing official information for users of the IP system but is fulfilling a didactic role, raising the awareness of IP owners as to how the dynamics of the system operate once IP rights are used/abused in the market place. Merpel says, I'm waiting for the next issue, which is sure to carry advice on "How to respond to a warning letter".

Goliath can't appeal against little David decision

According to the House of Lords' Minutes of Proceedings this week, the highest appellate court in the United Kingdom has refused Big Pictures (UK) Limited leave to appeal against the Court of Appeal's decision in its controversial dispute with little David Murray, better known as the son of Harry Potter author J K Rowling. Earlier this year the Court of Appeal (as noted by the IPKat here in "Now you can buy milk without being shot", allowing David's appeal) refused to strike out an action brought on behalf of the child, considering that it was at least arguable that David had a reasonable expectation of privacy and that the balance between Articles 8 and 10 of the European Convention on Human Rights should be struck in his favour. The trial on the merits of his claim has yet to take place.

Thursday, 30 October 2008

"Murdoch most foul!", cries Atari

From the suddenly controversial and risque BBC, via the IPKat's friend Birgit Clark, comes this little piece, "Games firms 'catching' non-gamers". It's a story about computer games companies which are accusing innocent people of file-sharing as they crack down on real pirates. This has emerged from an investigation conducted by consumer magazine Which? after it was contacted by Scottish couple, Gill and Ken Murdoch, who had been accused of sharing the game Race07 by makers Atari. The Murdochs said they had never played a computer game in their lives. The case was dropped, but Which? estimates that hundreds of others [What others, wonders the IPKat--Murdochs? Scotsmen? Married couples?] are in a similar situation.

Computer game businesses, desperate to clamp down on illicit file-sharers, are monitoring peer-to-peer sharing networks such as Gnutella, BitTorrent,and eDonkey. Atari appointed law firm Davenport Lyons to prosecute illegal file-sharers; that firm engaged anti-piracy experts Logistep, which tracks down illegal file-sharers via their IP addresses. The Murdochs apparently received a letter giving them the chance to pay £500 compensation or face a court case.

IP lawyer Michael Coyle (Lawdit) is reported as saying that more people are being wrongly identified as file-sharers. He mentions 70 cases of people who claim to be wrongly accused of piracy: "Some of them are senior citizens who don't know what a game is, let alone the software that allows them to be shared". It seems that the problem most commonly occurs when a pirate steals someone else's network connection by "piggybacking" on an unsecured wireless network. As Coyle observes: "There is no section of the Copyright Act which makes you secure your network although it is commonsense to do so". The Murdochs' case is mysterious, though, since they have no wireless network that anyone else can have hijacked. The BBC article continues on a truly depressing note, whether you are a computer games company or a Murdoch: "

Firms that facilitate file sharing, such as Pirate Bay, have been undermining efforts by anti-piracy investigators to track down file sharers. Pirate Bay makes no secret of the fact that it inserts the random IP addresses of users, some of who may not even know what file sharing is, to the list of people downloading files, leading investigators up a virtual garden path".

Another great Scottish mystery here ... and a great Scottish disaster here


Although he is famed and feted throughout Europe for his lack of linguistic skill, the IPKat still managed to work out what was happening in Case T-140/06, a ruling of the Court of First Instance in September 2007 in which the Court, in a decision recorded solely in French, dismissed the appeal of Philip Morris Products SA against OHIM's persistent refusal to register as a Community trade mark the three-dimensional shape depicted above. This, for those of you who might otherwise have no clue as to what it is, is a representation of a cigarette packet (or "Forme d’un paquet de cigarettes", as the French so eloquently put it), which Philip Morris wanted to register in respect of, er, cigarettes in Class 34. Philip Morris was also "condamnée aux dépens", which presumably didn't bankrupt them because their next step was to appeal to the European Court of Justice (ECJ). According to the appellants:

"... the Court of First Instance infringed Articles 4 and 7(1)(b) of Council Regulation ... 40/94 ... first, [it] based its assessment on a bias against the category of marks in which the mark applied for falls. In finding that consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or of the shape of their packaging, the Court of First Instance made a factual finding which has no scientific foundation whatsoever and misconstrues the human perception of signs in general, and of shapes in particular.

Second, ... the Court of First Instance carried out an incorrect legal analysis of the relevant public's perception of the mark. That error arises, on the one hand, from the fact that the Court envisaged use of the mark only through its incorporation into a packet of cigarettes, although the shape of packaging for a given product can be perceived by the public in a multitude of other forms, such as graphic or three-dimensional representations of the mark in advertising material. The error of assessment arises, on the other hand, from the fact that the Court of First Instance reduced the concept of a mark to its part which is perceptible by a prospective purchaser at the moment immediately prior to his purchase, whilst the public concerned by a mark is composed of all those who may be faced with it in the course of normal use of the mark, which occurs both during the advertising of the product before it has been purchased and during use or consumption of the product after it has been purchased.

The appellant claims, thirdly and lastly, that the grounds of the judgment under appeal are contradictory".
This week the Curia website published the Order, made by the ECJ in June, dismissing the appeal. The IPKat's not surprised that the appeal was dismissed, but he is surprised that it took so long for information concerning the Order to be posted on the Curia website. The operative part of the Order consisted of just 11 words, three of which were "Philip Morris SA". Other traders with similar types of mark may be kept in suspense for ages, awaiting news of pending appeals before deciding on their own advertising, marketing and trade mark portfolio strategy. Merpel says, I'd have liked to hear the arguments based on bias: this is an allegation that is usually made against individual applicants or nationalities, rather than classes of the Nice Classification. Tufty, making a rare comment on a trade mark topic, adds: I had to read the second ground of appeal several times before I could convince myself that I couldn't understand a word of it.

If you want to know more about cigarette packets, try:
Up In Smoke here
Cigarette Packet Collectors Club of Great Britain here
Collecting Cigarette Packets from All Over the World here

Wednesday, 29 October 2008

More on that referral

The IPKat recently reported the EPO president's referral of a number of questions to the Enlarged Board relating to patentablity of computer-implemented inventions (for want of a better term).  This prompted an unusual (for this blog at least) number of comments from the IPKat's very knowledgeable (though sometimes rather argumentative) readership.  Much of the commentary relates to the, by now very familiar, arguments about whether computer software is a suitable subject for a patent.  

The referral has, of course, been widely reported elsewhere, even in the pages of the New York Times.  It is widely assumed, even by some apparently knowledgeable legal types (see here), as well as most commenters here, that the referral will result in some kind of clarification of the law.  One observant IPKat commenter, however, (as well as other knowledgeable legal types here) has pointed out that there is a good chance the referral will be thrown out by the Enlarged Board instead of being even considered in detail, on the grounds that it doesn't comply with the requirement of Article 112(1)(b).  The last time this happened was in 1995, when the Enlarged Board decided that there was no conflict in the case law on patentability of plant and animal varieties (G 3/95). The provision in question reads:
(1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:
(b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.
The last time that questions on the subject of software patents were proposed (by Lord Justice Jacob, after his decision in Aerotel in October 2006), the then President replied that there was "insufficient legal basis for a referral under Article 112(1)(b) EPC. Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage." (reported by the IPKat here).

The IPKat would like to know how the situation has changed since March 2007 to make such a referral admissible now, when it apparently wasn't before.  The case law cited by Ms Brimelow is all from before 2007 (the most recent one being T 424/03, from February 2006, which is alleged to be inconsistent with T 1173/97), so where are all the recent conflicting (or 'diverging') decisions? Do the decisions even diverge, or are they merely developments of the case law?  After reviewing the questions and their support in some detail, this Kat is of the opinion that the referral is not admissible and the questions cannot therefore be answered, at least not via this route.  The big question then becomes how will the Enlarged Board choose to let Ms Brimelow down, and how will the anti-patent lobbyists react when this happens?

As a public service, the IPKat will attempt to provide answers to each of the questions (with translations provided by an anonymous patent attorney):

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
Translation: Were we right to allow so-called 'media' claims?

The referral cites decisions T 424/03 (Microsoft/Clipboard Formats I) and T 1173/97 (Computer Program Product/IBM), which are alleged to be 'diverging' because, while T 424/03 placed emphasis on the way a computer program was claimed, T 1173/97 placed emphasis on the function of the computer program.  This argument is quite clearly wrong.  Not only does T 424/03 expressly approve the previous decision of T 1179/97 (so cannot therefore be said to be in conflict with it), but the emphasis on the way the program was claimed in T 424/03, i.e. in the form of a program on a carrier, was only in respect of overcoming the first 'technical character' hurdle specified by T 258/03 (Auction Method/Hitachi). This is all clear from point 5.3 of the reasons in T 424/03:
"Claim 5 is directed to a computer-readable medium having computer-executable instructions (i.e. a computer program) on it to cause the computer system to perform the claimed method. The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier (see decision T 258/03 - Auction method/Hitachi cited above). Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data processing (see T 1173/97 - Computer program product/IBM; OJ EPO 1999, 609). The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter."
There is therefore no divergence in the approach taken in T 424/03 with respect to the way in which computer programs can be validly claimed. T 1173/97 further clarifies this at point 13:
"Finally, as has become clear from the above, the Board notes that it does not agree with the interpretation by the examining division of Article 52(2) and (3) EPC with reference to the Guidelines, C-IV, 2.3 (page 38 of the December 1994 edition) from which they concluded that a computer program claimed by itself or as a
record on a carrier is not patentable.
In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run.
"Running on a computer" means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1.
"Loaded into a computer" means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim 1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14.
Furthermore, the Board is of the opinion that with regard to the exclusions under Article 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier (following decision T 163/85, OJ 1990, 379, "Colour television signal/BBC", as cited above)."
The answer to question 1, which can be determined from either of the cited decisions, is neither yes or no, but that it does not matter what form the computer program is claimed, provided the program has the potential for causing a 'further technical effect'. 

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?
Translation: Were we right to effectively move the assessment of exclusion from patentability from Article 52 to Article 56 (inventive step)?

Yes, but only to the extent that the 'technical character' test is passed by having a physical article in the claim (see Hitachi).  The patentability test is instead assessed under Article 56, with features of the claimed invention that do not contribute to the technical character not considered as part of the solution to the technical problem.  Otherwise, the simple (but incomplete) answer is no.

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

See answer to 2(a).

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?
Translation: Can a technical effect exist in just a programmed computer or must it act on some physical entity?

No - see T 208/84 (Vicom).

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

Not applicable (see above).  If the computer is unspecified, this might be an issue of sufficiency or of added subject matter, but not of patentability under A52 or A56. 

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

Yes - see Vicom again. It does not matter that the implementation is on a 'general purpose' computer, provided the effect provided goes beyond the normal interactions between software and hardware.

4.(a) Does the activity of programming a computer necessarily involve technical considerations?
Translation: Can a technical effect exist in just a computer program, or must it act on some other physical entity?

Yes - 'technical character', as defined by T 258/03, can involve something as simple as pencil and paper. Programming involves at least this, so is therefore inherently technical. This does not, however, mean that the result of the program possesses the further technical effect required for patentability.

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

No - see answer above.

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

Not applicable - see above.

In summary it seems that, once question 1 is answered, all the others simply fall away, leaving nothing to be decided that has not already been established by many Boards of Appeal decisions.  In the IPKat's view, these questions are very poorly drafted and seem to result from a very obvious (deliberate?) misreading of the case law of the EPO Boards of Appeal.  He has no doubt that, provided the Enlarged Board follow the meaning of Article 112, they will have little hesitation in refusing the referral. 

Ten zeros still add up to zero, as Corus seeks killer point in vain

On 7 February, in a decision that quite bypassed the normally vigilant IPKat, Judge Michael Fysh QC (Patents County Court) held that Qual-Chem's killing slag patent was valid and infringed.

Right: Not all slag is so unglamorous -- here's a Spruce Green Slag Cat Iridised, 1998

Today, in Corus UK Ltd v Qual-Chem Ltd [2008] EWCA Civ 1177, the Court of Appeal for England and Wales has dismissed Corus's appeal in respect of which, it said:

"Neither side suggests that this case involves our having to decide any question of legal principle",
which presumably is why it needs a team of three appellate lawyers to hear it. Anyway, leading the decision of the Court (Lord Justice Pill, Lord Justice Scott Baker and Lord Justice Jacob), Jacob LJ had this to say:
"Although Corus pleaded many more points originally, the Judge had to deal with what, by my count, were no less than 10 discrete points or sub-points. The taking of many points is often the mark of a party which does not feel it has a single "killer". So it proved before the Judge who rejected all of them".
Even though the IPKat often struggles with patent decisions, he is dismayed to find one here which is so devoid of legal controversy. For many of us it's the law that provides the incentive to read the judgments since it's of general applicability to patent disputes, while the recitations of fact and their significance are not only demandingly technical but tend to be case-specific and therefore rarely worth remembering for the future. Let's have cases with more law and fewer facts, please! Merpel says, there's too much talk of killing here, bearing in mind that the patent in question is for "killing slag".

There's a note on the earlier decision in the Kilburn & Strode newsletter here.

Bad reproduction of logo = bad defence, rules CA

Every so often the IPKat reads an appeal against conviction for criminal trade mark infringement that he just knows is going to be hopeless. R v Boulter [2008] EWCA Crim 2375, a decision of the Court of Appeal, Criminal Division, England and Wales, was always going to be one such decision.

The police seized from Boulter a haul of 1,640 DVDs of feature films, 457 DVDs of porno and 232 CDs which bore on the packaging copies of logos of EMI and what the court described as "other companies of similar repute". Boulter, having pleaded guilty to 19 counts of unauthorised use of a trade mark contrary to the Trade Marks Act 1994 s.92(1)(c), applied for leave to appeal against his conviction, arguing that the material bearing the trade marks was of such poor quality that there was no likelihood of the public being deceived or confused. Lest you imagine that it was the quality of the reproduction of the films and music that was poor, the Kat must explain: it was the reproduction of the logos themselves that was of poor quality.

No doubt stifling their giggles and putting on suitably solemn faces, the Court (Lord JusticeToulson, Mr Justice Griffith Williams J and The Recorder of Winchester) dismissed the application. What they said, in a judgment delivered by Toulson LJ, was this:

* In the case of an alleged infringement under section 10(2) of the Trade Marks 1994 Act (similar marks/goods, similar marks/same goods or same marks/similar goods) giving rise to criminal liability under section 92, a likelihood of confusion had to be proved -- but no likelihood of confusion need be proved for liability under section 10(1) (same marks/same goods).

* This was a section 10(1) case and the trade marks, however badly they may have been copied, were identical to those registered by the various victims. Since the marks were identical and the goods in Boulter's possession in the course of his trade were identical to the goods for which those trade marks were registered, liability resulted.

* Parliament could not be taken to have intended that, where there was straightforward counterfeiting of goods and of a registered trade mark, a defendant could escape liability by showing that the quality was so poor that it would not give rise to any risk of confusion. This would provide a let-out for the counterfeiter who sold his wares as "genuine fakes".

* Boulter was seeking to raise a novel defence that, even though this was a straight counterfeiting case and there was no question of the mark being used for descriptive purposes, the fact that the quality of the counterfeiting was so poor as not to be likely to cause confusion amounted potentially to a defence. There was simply no foundation for such a defence.

The IPKat is delighted to see that the Court of Appeal has managed to reach the right result even without his assistance. Merpel's a little anxious, though. She feels that the well-advised counterfeiter will now see an advantage in making sufficient small changes in the counterfeit mark to require the court to conclude that it is merely highly similar, so that it will be necessary for the prosecution to go through the inconvenience of establishing a likelihood of confusion before they can obtain a conviction.

Patent revocations in Germany

The IPKat has received a notice from his friends at the 24IP Law Group concerning an interesting legislative proposal. According to 24IP:

"The German Government has placed before the Bundestag (Parliament) a draft bill which will bring major changes to simplify and modernize patent revocation proceedings.

It is a basic principle of German law that the patent infringement courts may not decide the validity ... of a patent. Separate revocation proceedings must be filed in the German Federal Patent Court in Munich. The infringement courts may only suspend infringement proceedings if the request for revocation ... is considered to have an overwhelming chance of success. An application for revocation ... can be made at any time, even if the three month deadline for filing an Opposition to the grant of the patent has expired.

The bill provides that the current revocation proceedings should become better structured and more transparent to users. The general principles of German Civil Court Procedure will be followed more strictly. The Court will be obliged to indicate to the parties their preliminary views on the merits of the case at an early stage and will subsequently allow the parties to file additional submissions. Further arguments will not be considered once the parties have filed these submissions.

The amendments should also speed up the appeal proceedings which are held in front of the German Federal Court of Justice in Karlsruhe. The Appeal Court will only decide on points of law in the future. It cannot engage in further fact finding, except when this is deemed “to be indispensable for ensuring that the lower court has found the true facts of the case”.

The legal provisions on the appeal proceedings will continue to be found in the German Patent Act, rather than in the German Code of Civil Procedure. Appeals will still be available as a matter of right –- there will be no need to file for leave to appeal. However, the general codes of practice of the German civil courts will become important .... The arguments presented in the initial filing of the claim will become more important and the proceedings will be more compact. This is an excellent development, since infringement courts currently often suspend infringement proceedings for several years pending a decision on the validity of the
patent [says the IPKat: the Germans aren't the only nation to suffer this inconvenience. Look at the horrible case law on stays of UK actions pending EPO revocation proceedings].

Unfortunately the draft bill does not contain a proposed timetable for revocation proceedings. The bill will also not change the current situation in which decisions made during revocation proceedings will not bind the infringement courts and vice versa [Why not? Is it because it isn't as big a problem in practice as it is in theory? Can any German reader explain?]. However, we can expect a reduction of the duration of revocation proceedings because patent infringers will not be able to substantially delay decisions in the future by stretching out revocation cases. This should make it harder for an infringer to continue infringing without impunity for long periods of time".

Tuesday, 28 October 2008

Google Book War: now peace breaks out

The IPKat thanks his trusty friend Kristof Neefs (Laga, Belgium) for drawing his attention to a press release today from Google, headed "Authors, Publishers, and Google Reach Landmark Settlement: Copyright Accord Would Make Millions More Books Available Online". The press release reads, in relevant part:

"The Authors Guild, the Association of American Publishers (AAP), and Google today announced a groundbreaking settlement agreement on behalf of a broad class of authors and publishers worldwide that would expand online access to millions of in-copyright books and other written materials in the U.S. from the collections of a number of major U.S. libraries participating in Google Book Search. The agreement, reached after two years of negotiations, would resolve a class-action lawsuit brought by book authors and the Authors Guild, as well as a separate lawsuit filed by five large publishers as representatives of the AAP’s membership. The class action [the IPKat wonders, should this read 'agreement'?] is subject to approval by the U.S. District Court for the Southern District of New York.

The agreement promises to benefit readers and researchers, and enhance the ability of authors and publishers to distribute their content in digital form, by significantly expanding online access to works through Google Book Search, an ambitious effort to make millions of books searchable via the Web. The agreement acknowledges the rights and interests of copyright owners, provides an efficient means for them to control how their intellectual property is accessed online and enables them to receive compensation for online access to their works [The Kat thought this was impossible. If the Guild, the AAP and Google can manage this, perhaps they'd like to tackle global warming, the credit crisis and Madonna's divorce settlement too].

If approved by the court, the agreement would provide:

More Access to Out-of-Print Books – Generating greater exposure for millions of in-copyright works, including hard-to-find out-of-print books, by enabling readers in the U.S. to search these works and preview them online [more access to hyphens too, it appears ...];

Additional Ways to Purchase Copyrighted Books – Building off publishers’ and authors’ current efforts and further expanding the electronic market for copyrighted books in the U.S., by offering users the ability to purchase online access to many in-copyright books [any prizes for predicting the impact of this on Amazon's business?];

Institutional Subscriptions to Millions of Books Online – Offering a means for U.S. colleges, universities and other organizations to obtain subscriptions for online access to collections from some of the world’s most renowned libraries [what about non-US institutions, distance learning institutions etc?];

Free Access From U.S. Libraries – Providing free, full-text, online viewing of millions of out-of-print books at designated computers in U.S. public and university libraries; and

Compensation to Authors and Publishers and Control Over Access to Their Works – Distributing payments earned from online access provided by Google and, prospectively, from similar programs that may be established by other providers [this looks like a sop to those worried about lack competition], or through a newly created independent, not-for-profit Book Rights Registry that will also locate rightsholders, collect and maintain accurate rightsholder information, and provide a way for rightsholders to request inclusion in or exclusion from the project.

Under the agreement, Google will make payments totaling $125 million [until a few short weeks ago, the IPKat used to think this was a lot of money ...]. The money will be used to establish the Book Rights Registry, to resolve existing claims by authors and publishers and to cover legal fees. The settlement agreement resolves Authors Guild v Google, a class-action suit filed on September 20, 2005 by the Authors Guild and certain authors, and a suit filed on October 19, 2005 by five major publisher-members of the Association of American Publishers: ... . These lawsuits challenged Google’s plan to digitize, search and show snippets of in-copyright books and to share digital copies with libraries without the explicit permission of the copyright owner.

Holders worldwide of U.S. copyrights can register their works with the Book Rights Registry and receive compensation from institutional subscriptions, book sales, ad revenues [do the Kats pick up the scent of AdSense?] and other possible revenue models, as well as a cash payment if their works have already been digitized.

Libraries at the Universities of California, Michigan, Wisconsin, and Stanford have provided input into the settlement and expect to participate in the project, including by making their collections available. Along with a number of other U.S. libraries that currently work with Google, their significant efforts to preserve, maintain and provide access to books have played a critical role in achieving this agreement and, through their anticipated participation, they are furthering such efforts while making books even more accessible to students, researchers and readers in the U.S. It is expected that additional libraries in the U.S. will participate in this project in the future.

Google Book Search users in the United States will be able to enjoy and purchase the products and services offered under the project. Outside the United States, the users’ experience with Google Book Search will be unchanged, unless the offering of such products and services is authorized by the rightsholder of a book.


For more information about this agreement, including information about whether you may be a class member, please visit [when time permits, this may be fun]. Class members include authors (the Author Sub-Class) and publishers (the Publisher Sub-Class), and their heirs and successors, of books and other written works protected by U.S. copyright law.

A teleconference for the media will be held today, Tuesday, October 28, 2008, at 10:30 a.m. Eastern. To participate, reporters in the U.S. should dial 877-340-7913, and reporters internationally should dial 719-325-4845. Please tell the operator you would like to join the “Authors, Publishers and Google” call".

The IPKat says, this seems wonderful -- never has so much reading material been made available to so many readers so swiftly and with so little effort on their own part. Merpel says, some words are missing from this press release. They include orphan, Berne, indemnity, liability, infringe, moral right and damages ...

Feline library here

Licences and non-licences

The IPKat's scholarly and distinguished friend Professor Bob Gomulkiewicz (University of Washington School of Law) is visiting this year at Oxford's Intellectual Property Research Centre, where he is researching the history of intellectual property licensing. If you know of any useful articles, books, papers, or other sources he should be browsing through, Bob will be grateful to learn about them. Possible topics would include early copyright licensing by collective rights organizations, early patent licensing, and early licensing of unregistered trade marks. You can email Bob here.

A few weeks ago the IPKat put out a plea for information concerning "non-asserts". He wrote:
"It sometimes happens, usually when an intellectual property dispute is settled by agreement, that the IP rights owner undertakes not to assert his right against the other party to the agreement. In theory the rights owner merely forbears to sue, but in practice it can be said to be a licence. Does any reader of this blog know of any reported cases -- in any jurisdiction -- which turned on whether the non-assert was characterised as a licence or not?".
After a respectable time the Kat returns to this subject to report on readers' responses, which were quite limited this time round. Several UK readers identified the same case: SAFARI Trade Mark, a 2001 decision of Allan James of the UK IPO. Alas, this was the only bit of case law received from the UK or indeed from any other jurisdiction.
Left: not all consumers find SAFARI an appealing brand concept
Curiously, all of the respondents who suggested this case were trade mark attorneys. Anyway, thanks for taking the time and trouble to write in -- and thanks also to those of you whose correspondence the Kat appreciated receiving.

At last -- "generally elliptical cone shape" interpreted

Now here's another case belatedly noted from last week. It's Ancon Ltd v ACS Stainless Steel Fixings Ltd [2008] EWHC 2489 (Pat) is a Patents Court decision for England and Wales from Mr Justice Patten.

Ancon owned a patent for a channel assembly. Channel assemblies had been used in the construction industry for a long time, typically being comprised of a metal channel, with lugs or restraining anchors, which was cast into the concrete structure of a building. The channel had shaped sides with an open aperture on its face into which the head of a bolt could be inserted. The bolt was moved along the channel to its required position and then turned 90 degrees so as to lock against the internal walls of the channel. This assembly could be used to fix components like brackets on to the structure of the building, to support masonry or some other form of external cladding.

Claim 1 of the patent covered the channel and its shape, together with a bolt head with inclined sides and a "generally elliptical cone shape". Claims 3 and 6 covered the effect of the shape of the head which, when rotated, created a camming action that forced the head against the lips of the channel. The top of the bolt remained generally elliptical despite its truncation and flattened sides, and the bolt as a whole assumed a generally elliptical shape. Even in the case of a variant of the truncated elliptical cone, the two right-angled corners at the base did not interfere with the ellipse at the top and each embodiment retained an identifiable elliptical shape and was generally conical.

Ancon alleged that the patent had been infringed by the ACS 31/21 channel assembly, which was made up of a channel and T-head bolt assembly which was used to provide heavy duty fixings for use in the construction industry. AS denied infringement and counterclaimed for invalidity of the patent for anticipation and obviousness.

The construction of the patent turned principally upon the meaning of the phrase "generally elliptical cone shape", raising the question of how literal or exact that term was intended to be. Ancon said there was nothing in the teaching of the patent that regarded the precise shape of the top surface as of any technical importance for the purposes of the invention; accordingly it was the surfaces against which camming took place that needed to embody the "generally elliptical cone shape". But according to ACS the "generally elliptical cone shape" was a -- and perhaps the -- defining feature of Ancon's channel assembly patent, even when the cone shape at the head was truncated or reduced by the creation of flattened areas and sides. In ACS's view the bolt in its 31/21 channel assembly was neither elliptical nor cone-shaped and did not infringe the claims in the patent. If however the claims in the patent were not to be construed as restricted to generally elliptical cone shaped heads, the teaching in Ancon's patent was already covered by the bolt and channel assemblies described in the prior art and was in any event both obvious and insufficient.

Patten J dismissed both the claim and the counterclaim.

* As to what the claims meant, the court always had to ask what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. Did the patentee, by the use of a particular word or phrase, choose to describe his invention (and so limit his monopoly) according to the strict technical meaning of the term, or did he use it in a more descriptive and therefore less exact way?

* In this case the use of the phrase "generally elliptical cone shape" in the claims determined their scope and there was nothing in claim 1 which allowed the addressee to assume that the claim was not limited to what constituted a 'generally elliptical cone shape'. Anyway, the ACS fixing in its 31/21 assembly was not a generally elliptical cone shape. On this basis there was no infringement.

* The prior art cited by ACS did not emcompass the invention described in Ancon's patent, so the challenge to its validity failed.
The IPKat notes the judge's reliance on, among other decisions, that of the House of Lords in Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd, in which Lord Hoffmann rewrote, clarified or invented the British law on claim construction, depending on how you read the law that came before it. He is a simple Kat who has never felt that a complex test is needed and he mourns the passage of Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 -- a decision that seems to be floating in a sort of precedental limbo, no longer authoritative but still worthy enough to cite. Merpel says she's not sure if the techniques employed in interpreting patent claims are really there to clarify what the patentee means or to hide the means by which the claim's interpreter justifies an intuitive hunch as to how the skilled addressee would understand them.

The IPKat's favourite cone shape here

Monday, 27 October 2008

OHIM oppositions and quality checks: the Kats differ

It's only a short document, but the Office for Harmonisation in the Internal Market (OHIM) "Quality of Decisions Service Standards 2008" -- brought to the IPKat's attention by his friend ITMA Treasurer Chris McLeod (Hammonds) -- makes gripping reading. OHIM, non-Europeans should remember, is the Alicante-based office that administers Europe's Community trade mark system.

Right: Kat fight, or OHIM opposition?

When it comes to the quality of decisions on absolute grounds that comply with OHIM quality criteria, OHIM expects 99% of its decisions to match up to its quality criteria, and in the third quarter the organisation exceed that by scoring a terrific 99.2% compliance rate. At the other end of the scale, 95% of opposition decisions are expected to comply with OHIM quality criteria but only 80.85% do so. To put it another way, virtually one opposition decision out of every five is potentially defective.

The IPKat is very worried about this. Is it a lack of adequate training and supervision, poor staff appointment policy, or what? OHIM's management tier should take a firm grip on this malaise and eradicate its causes, if users are not to lose confidence in OHIM oppositions and rely on (for example) national actions for cancellation instead.

Merpel's not so worried, though. In the first place, she says, oppositions are inherently more complex than absolute grounds decisions and there are lots more places they can go wrong. Secondly, the never-ending stream of Court of First Instance decisions on opposition issues is more difficult to keep up with. Thirdly, the fact that nearly 20% of opposition decisions fail to match up to OHIM quality criteria doesn't mean they're actually wrong. Look how many of us reach the right conclusions for the wrong reasons every day in IP matters -- and no-one usually notices ...!

Number of Google hits for 'right decisions wrong reasons': 5,280,000
The OHIM Quality Check System -- a helpful PowerPoint here

Thorn waxes lyrical and solders on ...

The IPKat hadn't forgotten the patent decision last week of the Court of Appeal (England and Wales) in Thorn Security Ltd v Siemens Schweiz AG [2008] EWCA Civ 1161 but there have been so many exciting distractions that he just hadn't got around to posting anything about it yet. In this case the Court, consisting of Lord Justice Mummery, Lady Justice Arden and Mr Justice Lewison, found themselves going back to basics, construing the meaning of the fundamental word "assignment" which appears in the apparently innocuous context of the Patents Act 1977 section 33(3) -- which deals with the relative entitlements of parties whose entitlement to a patent may or may not have been registered. Curiously enough this dispute almost slipped past the IPKat first time around (you can see his comment here).

Right: Siemens, in happier times before being licked by Thorn

In short, Thorn was appealing against the decision of Mr Justice Mann that its product infringed Siemens' patent and that Siemens was entitled to recover damages in respect of a period of infringement that actually pre-dated its registration as proprietor of the patent. Siemens become the owner of the patent by universal succession under Swiss law, following a series of mergers among Swiss companies. Siemens' patent was for a protective covering for printed circuit boards and method for their manufacture. The protective coating consisted of a plastic film to which wax was added. The wax was said to facilitate through-plating and soldering operations through the protective coating. The film was fused on to the printed circuit board by the action of heat.

Thorn's allegedly infringing product was a printed circuit board coated with a coating which contained wax installed in a smoke alarm. At trial Mann J held, as a matter of construction, that "facilitating" meant that there had to be practical benefits in making something easier in a way that could be appreciated by a practical user, and that the film had to be fused on to the circuit board by the action of heat alone. On that basis, he held, Thorn's product did indeed infringe. He then added that the mergers leading to Siemens' ownership of the patent did not involve any "assignment" within the Patents Act 1977 section 33(3) which had to be registered before a claim for damages (now, post-IP Enforcement Directive, costs and expenses: see link to earlier IPKat post for explanation) could be made under section 68 of the same Act.

Siemens argued that the judge was wrong in construing its patent as meaning that the notion of "facilitating" carried with it any element of practical benefit or that the practical benefits had to be capable of appreciation by a practical user, and that he also erred in holding that the fusion of the coating to the board had to be by heat alone. Thorn appealed against the finding of infringement, submitting that Mann J's findings were not supported by the evidence, and also and also maintaining that should have given a more purposive interpretation to the word "assignment" in section 33(3), so as to cover the mergers of the sort that had occurred here.

The Court of Appeal allowed the appeal. In its view

* The claim that the wax facilitated through-plating and soldering operations through the protective coating operated as a performance requirement of the claim. Mann J was right that "facilitating" required practical benefits and that, so far as the question of infringement was concerned, Siemens was entitled to rely on any means by which the wax in Thorn's product made through-plating and soldering through the coating easier in a practical sense.

* The specification stated that, in a "final process step" the coating was fused to the board by further heating. Accordingly it was not until that step, which consisted only of further heating, that the coating was fused to the board. Having regard to the way in which the process was described in the specification, the skilled reader would conclude that the fusion took place by the action of heat alone. Thus Mann J was right on that point too.

* The judge's findings that the nature of the waxed product (i) reduced the risk of charring, (ii) gave rise to a noticeable difference if a low temperature soldering iron were used and (iii) created a more easily-removable coating were not supported by the evidence.

* Mann J should not have inferred that Thorn's waxed coating would probably move aside more readily with less heat being applied. There were two characteristics of a coating with wax that pointed in opposite directions: (i) lower viscosity and (ii) increased wetting ability. The overall effect these competing factors had upon the coating was a question for direct expert evidence and was not a matter upon which an inference could safely be drawn. Nor should Mann J have found that Thorn's product was fused on to the printed circuit board by the action of heat. On the evidence, the adhesion of Thorn's product was produced by pressure. Accordingly, since Thorn's coating did not facilitate through-plating and soldering and was not fused by heat, its product did not infringe Siemens' patent.

* Finally, Mann J erred in holding that an "assignment" within section 33(3) had to be an express consensual bilateral document. Section 33(3) was wide enough to include an assignment by operation of law of the kind involved in universal succession following a merger.

The IPKat notes with awe that the Court of Appeal went all the way back to 1970, to the Report of the Committee to Examine the Patent System and Patent Law (1970 Cmnd 4407, the Bank Report) -- which led to the 1977 Act -- when deciding what was the mischief at which section 68 was directed. That report indicated that section 33(3) should be purposively construed. The moral of this story is, never throw away your old law reform reports: you never know when they might come in handy. The Report stated (with the IPKat's emphasis):
"The Patents Act should provide that where there has been a change of ownership of a patent, or where an exclusive licence has been granted on a patent, no damages for infringement should be recoverable by the new owner or the exclusive licensee in respect of infringing acts committed during the period in which the change of ownership or grant of exclusive licence was not registered, unless registration was effected within six months of the change of ownership or grant of exclusive licence.…".
Speaking for the entire court, Mummery LJ added:
"This recommendation applies to any acquisition of ownership, and is not limited to particular kinds of change of ownership".
Merpel's not happy about this highly principled and function-oriented approach. This is all very well, but it's not what the Patents Act says -- and who wants to rely on Banks at a time like this! I vote we seek leave to take this one to the House of Lords.

Famous Thorn here -- and here

Sunday, 26 October 2008

Who is David Lammy?

The IPKat posted a poll last week asking his readers "How long will David Lammy last?", a response to the fairly rapid turnover of IP ministers in recent times, after the very short and uneventual tenures of the last two incumbents, (who the IPKat can't even be bothered to remember the names of).   Of those who even knew who he was, the majority of respondents seemed to think that he would last somewhere between 6 and 12 months.  However, the majority of total respondents (70%) selected the answer "Who?" instead, presumably because Mr Lammy has yet to become widely known for anything much, let alone for anything IP-related.  

For those not yet aware, Mr Lammy (right) is the Labour MP for Tottenham and was recently promoted to the Privy Council and to a new role as Minister of State for Higher Education and Intellectual Property (as noted, with some confusion, by the IPKat here and here).  A recent article in the Times on him says that he is also a friend of the (presumably) next US president Barack Obama.  

According to Mr Lammy's website, he is very excited about his new job, and says:
I’m really excited by the new opportunities this promotion will provide. Expanding opportunities in Higher Education has been a passion of mine for many years, and having an opportunity to shape these policies in Government is a challenge I now relish.

I know that we still have a lot more to do if we are to ensure more young people from the inner-city, and places like Tottenham, continue in post-18 education - winning places at our very best universities. But I am committed to ensuring we succeed.

Only by cracking these challenges will we be able to guarantee that all our young people have not only the best start in life, but also have real higher educational opportunities and routes out of deprivation. Unlocking this vast pool of untapped talent is also essential if we are to remain competitive internationally.

The Skills brief over the past year has given me the opportunity to see and influence some of the very best joint working between Government, business and the voluntary sector.

From the factory floor to our local colleges I have been privileged to meet people young and old who have been able to unlock their potential because of our policies. I know the skills agenda can only go from strength to strength in the coming years.
This is all very good and worthy, the IPKat thinks.  However, he has yet to spot anything that Mr Lammy has said about the leading role he will play in being in charge of intellectual property in the UK, and in particular what he will do with his responsibility for the UK-IPO.  The only thing the IPKat has been able to find on the subject is a quote attributed to him on announcement of the regional winners of the UK-IPO's 'cracking ideas' competition (see here).  The lack of apparent interest in IP has not gone unnoticed elsewhere (see here). The professional bodies CIPA and ITMA have also expressed some mild reservations, but these are more to do with the fact that Mr Lammy is the third minister in the last year and a half in this position.  

Will Mr Lammy surprise us all by i) taking an active interest in IP; and ii) lasting more than 12 months in his role? The IPKat thinks not on both counts, but would very much like to be proved wrong.  There are many things that he is sure could be done by a government minister with enough interest in his responsibilties, but having someone in this dual position where he is so clearly weighted towards one side rather than the other does not really bode well.  This is further reinforced by this article (Guardian) about a speech Mr Lammy is making on the UK education system; no mention of IP at all.  It looks like the UK-IPO will just have to muddle along for another year or so making it up as it goes along, which it is probably getting quite used to doing.

Saturday, 25 October 2008

A couple of reminders

We are only a month away from "Copying Without Infringing", the conference organised by CLT (full details available from the brochure here) and which takes place in Central London on Wednesday 26 November. If you've not already booked, you'd better do so pretty soon if you want to avoid disappointment.

Right: can you tell which is the original sheep and which is the copy? And does it infringe ...?

Apart from the outstanding speakers (plus team blogger Jeremy in the chair), there's also the small matter of the competition, for which the prize is complimentary admission to the conference (normally £495 plus VAT). The competition this time is this: in 20 words or less, tell us "What is the best of intellectual property advice I ever heard?" Please head your emails "Best IP Advice" and send them here. As usual, the best entries will be published on this blog together the author's name -- unless anonymity is requested. When this competition was announced, the IPKat forgot to add a closing date. Well, he's doing so now: all entries to be received by midnight (Greenwich Mean Time) next Sunday.

The Intellectual Property Institute (IPI), London, has organised an informal meeting for bright, dynamic young IP professionals and activists -- in short, the next generation of leaders in the IP community -- on Tuesday 28 October, from 5pm to 7pm (with the possibility of socialising even afterwards). If you’re interested, please turn up at The Old Nick, 20-22 Sandland Street, London, WC1R 4PZ (near Holborn and Chancery Lane tube stations), where some of the members of the Intellectual Property Institute Council will be in attendance.

Left: you're never too young to become involved with the IPI

You can find The Old Nick here. If you're thinking of turning up but haven't yet let Jeremy know, email him here to warn him. Another warning: everyone has to buy their own drinks! If you would have liked to attend but (i) can’t or (ii) would like to attend a similar event somewhere outside London if enough interest were expressed, email the IPI here and say so.

Friday, 24 October 2008

EPO Enlarged Board Referral on Software Patents

The IPKat has just learned that a referral has been made to the Enlarged Board under Article 112(1)(b) by the President of the EPO Alison Brimelow (right) on question of software patents. The full text of the referral can be found here (pdf document), and the EPO announcement here. Thanks are due to a very eminent subscriber for pointing this out.

As a background to the questions, Ms Brimelow states:
"Even in the 1960s, as the founding fathers of the European Patent Office drafted a new European patent law, it was clear that the patentability of computer programs was a complex issue. Legislative attempts to change or clarify the law in this field have met with more controversy than success, although Article 52 EPC was amended to state that inventions ‘in all fields of technology’ are patentable, thus making an implicit requirement explicit.

As the EPC was drafted, the feeling was that it was better not to define the exclusion precisely in law, but rather that the matter should be left in the hands of the EPO and the national courts. This flexibility is important as technology develops and new technologies emerge. Nevertheless, to quote a working group in 1972: “it was stressed that a matter as important as computer programmes [sic] should not be left in a state of prolonged uncertainty pending legal developments”. Diverging decisions of the boards of appeal have indeed created uncertainty, and answers to the questions arising from these decisions are necessary to enable the further, harmonious development of case law in this field.

Currently there are concerns, also expressed by national courts and the public, that some decisions of the boards of appeal have given too restrictive an interpretation of the breadth of the exclusion. It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe.
The four questions have been chosen to look at four different aspects of patentability in this field. Firstly the relevance of the category of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of a claim; the fourth, relevant for defining the skills of the (technically) skilled person, concerns the activity (programming) which underlies the resulting product (computer program).

It is hoped that the referral of these questions to the Enlarged Board of Appeal will lead to more clarity concerning the limits of patentability in this field, facilitating the application of the law by examiners and enabling both applicants and the wider public to understand the law regarding the patentability of computer programs according to the EPC.
The questions are as follows:
1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
As the extensive background to each of the questions details, each of them is deliberately aimed at aspects of the sometimes contradictory nature of the Technical Boards of Appeal decisions that have been made on the subject over the last couple of decades, from Vicom to Duns Licensing, via IBM, Hitachi and Microsoft, among others.

The closing summary gets to the real meat of the issue:
"From the historical documents it appears that the authors of the EPC agreed that a computer program could only be patentable if it had technical character. This view is supported by the different comments given by delegates referring to the amendment of paragraph 1. However, this technical character, necessary to avoid the exclusion laid down in Article 52(2) EPC, was not defined.

Furthermore, the wording of Article 52(2) EPC provides no indication as to whether the exclusion of certain items is based on the fact that the items mentioned lack the necessary technical character or whether the exclusion is based on broader social or political considerations. The possibility that some excluded items are indeed technical is left open by the phrase “shall not be regarded as inventions”. Consequently, from the wording of Article 52(2) EPC, no conclusion can be drawn concerning the question of whether a computer program is technical or not.

In the absence of guidance from the law and its preparatory documents, and in view of the existence of divergences of opinion regarding how the computer program exclusion should be applied, it is considered appropriate at this stage to refer the questions set out in the previous section to the Enlarged Board of Appeal for its opinion."
The IPKat must admit that he is quite surpised, not to say a bit shocked, at the appearance of this referral. He was gradually coming round to believing that the questions had being largely settled (heavily fudged though they may be), after the kerfuffle around Aerotel and Duns Licensing, followed by the dampening down of Symbian (IPKat commentary here). He had the impression that national courts, the UK in particular, were eventually beginning to be persuaded to step in line with the EPO lead, even though the EPO stance had 'evolved' somewhat over the years as a result of the demands of patent applicants. As regular readers will know, this Kat has been banging on for a while now about the sometimes strange reasoning that the EPO has been using over whether to exclude or not to exclude, particularly when it comes to what exactly is meant by 'technical'. Humpty Dumpty has, of course, been mentioned in this context before.

The IPKat is very keen to see these questions being settled properly at the EPO level, which should hopefully provide applicants with some degree of predictability as to what they might and might not be able to get away with in future. As many people from either side of the software patents debate often fail to realise, what patent practitioners actually want in the main, rather than more patents for bad inventions, is some degree of certainty so they can provide a decent service for their clients. Their jobs are not made any easier, and their clients' pockets are certainly made much lighter, by the swinging pendulum of the UK approach and the uncertain shifting reasoning of the EPO approach. Failing certainty, it would be nice just to have slightly more rigidly defined areas of doubt and uncertainty. At the moment we don't have even that.

The outcome of the referral process, resulting in a decision by the enlarged board on these questions, is unlikely to be known for some time, possibly a year or two given past behaviour. The IPKat wonders whether this will mean that all those applications containing computer program claims, or even those merely referring claiming 'computer implemented inventions', will now have to be put on hold. We (patent attorneys, that is) certainly hope not, but the IPKat thinks that this might be an inevitable effect of trying to sort out the issue properly (but, he suspects, not once and for all).

For more on this referral, see the IPKat's further comments here.

Friday flourishings

Don't forget to check out the events listed in the IPKat's efficiently-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page. The number of events currently listed is 39. FREE events are listed in an environmentally friendly green.

For those who enjoy biopatents and like cocktails, The SPC Blog is running a competition in conjunction with its sponsorhip of tthe forthcoming C5 conference, Pharma/Biotech Patent Litigation, Amsterdam, Tuesday, 17 February to Wednesday, 18 February 2009. Preliminary details of this event can be inspected here. Details of the comp and how to enter it are here.

The IPKat wishes he'd heard of this event before but, since he didn't, he's telling readers about it now. It's the first Links & Law Meeting, which takes place in Munich next Thursday, October 30. Links & Law, the brainchild of Dr Stephan Ott, has provided a great service for its readers. Everyone who wants to talk about internet law or search engines is welcome at this event, but be sure to reply here.

If you want to attend IPKat team blogger Jeremy's "Writing skills for IP" intensive afternoon tutorial on the afternoon of Monday 3 November, there's some good news for you. Three people who planned to attend (or were being sent, against their will) have been shunted to the 1 December or 8 January sessions on account of work commitments (at least, that's their excuse), leaving late vacancies .

Right: The Scribe Cat (by Appaloosa)

The venue is Conway Hall, Central London. The fee is £85 plus VAT. You get an afternoon's slog plus a piece of marked homework. If you want more details, email Jeremy here.

From the IPKat's friend Thorsten Lauterbach (Lecturer in Law, Aberdeen Business School) comes news of a ruling handed down by the German Bundesgerichtshof on 14 October on the publication of photographs of Princess Caroline bon Hannover and her husband Ernst August.

Left: in an attempt to evade the attentions of the paparazzi, Princess Caroline and Ernst August have taken to wearing a variety of disguises. Here they pose incognito in their highly-successful walrus suits ...

It seems that the much-publicised couple complained of the publication of their photographs in various magazines in articles concerning the then life-threatening illness of Ernst August (inflammation of the pancreas), allegations of his intake of alcohol as a reason for the illness and the time taken to recover. These were illustrated with older pictures (showing the couples with drinks in their hands, or with bottles of alcoholic beverages in their vicinity), plus in one instance a more recent photo. The publishers asked to have rulings in favour of the couple in all lower instances set aside, but the Federal Court of Justice sided with the noble couple. The court reiterated the need to embark on a balancing act between the interests in and rights of privacy of the individuals and the freedom of the press/expression of the publishers, based on the jurisprudence of the European Court of Human Rights. Since the couple's interest in their own privacy is paramount and there is no countervailing reason for the public to know this information, the intrusion into the right of the couple in their own image is "verboten". It did not matter that Ernst August had given interviews on his ill health in a couple of instances previous to or shortly after the publication of the photos -- this could not justify the intrusion into the general right to protect the personality/privacy of the persons on the photographs. Says Thorsten, this decision arguably strengthens the rights of individuals vis-à-vis publications of photographs in Germany.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':