Saturday, 21 March 2015

Proceedings before the European Patent Office

Not many blog posts recently. I have been reading a new book from Edward Elgar . They kindly sent me an ebook to review but as its very attractively priced at £44 for the paperback if you buy it on line, I recommend it to all practising patent agents and trainees. Its been written by Marcus O. Müller (a chemist) of the Boards of Appeal of the European Patent Office, Munich, Germany,  and Cees A.M. Mulder, European Patent Attorney, Maastricht University, the Netherlands in the style of dumbed up  a FOR DUMMIES book.

What you get is a candid, accurate and informative guide to how the EPO's judicial process works. There are a myriad of out take  Examples and Practical Advice paragraphs designed to make the attorney more effective in this unique environment. How to play with added subject matter and Article 84 are just some of many ploys on which both seasoned and novice attorneys will receive enlightenment by reviewing this text and taking its lessons to heart.

It has been published with the approval of the EPO. The text is completely uncritical but the critical (but hitherto ignorant) reader might find themselves crying aloud about some of the examples given and there are lots. If you happen not to be experienced in EPO opposition procedure but have read suggestions that the procedure of the new Unified Patent Court should be more EPO like (or even that the IPEC procedure already is) , this book will explain what they mean and you should read it so you can stop that idea in its tracks.

However the EPO procedure is what entrepreneurs have, if they are to get a European Patent or a Unitary Patent in the future. You can't get to the wonderland of the Unified Patent Court if your patent can't survive the opposition stage.  Your competitors will take you there if your patent could be a problem for them or even if they just don't like you as costs are no deterrent. Normally each party bears their own costs - but Chapter 6 will explain when you might expect an apportionment of costs, but its not mentioned that it is ever to punish a vexatious opponent, and it is not. 

The book isn't aimed at inventors but one who has been to the EPO and may find himself there again defending a genuine invention may find it valuable. It will tell him not to employ an "old school" agent - who according to the authors' practical advice is one who writes the application with ambiguous terms, woolly stories, twists and turns, instead of in the way the EPO likes to see it, with a single, clearly defined invention, problem-and- solution approach, etc.The authors admit in their conclusion to the chapter on drafting issues that
"quite a few patents are lost after expensive opposition and appeal proceedings, even though there seems to have been an invention that could have led to a valid patent, simply because the original drafting of the patent application was not appropriate." 
PAMIA take note.

Although neither author is an English native, the book is very readable. If I had a trainee he would be reading it as required study in  his second year. I would give him a paper copy and check it at appraisal time. No dog eared corners and sticky notes would not be a good sign for his future career.  The insight it gives into how the opposition division and boards work behind the scenes is very useful. You learn how those alleged minutes are written and who is allowed water or recording equipment. You learn that its worth paying an appeal fee just in case and get the fee back if no one else appeals. I wonder how many appeals start because both sides appealed just in case.

This book is a valuable addition to sparse library available to practising patent agents. Hopefully it will be followed by other usable texts. We are now blessed with a whole academia of intellectual property that delight in studying the issues arising in big court decisions,  but much less is written to help agents make inventions become valid patents that will be valuable business assets. Well done Edward Elgar for bringing us something so usable.

Monday, 9 March 2015

Sally Cooper inquires into Damages at IPEC with Hogarth Help

Some weeks have passed since Hogarth Chambers travelled to Manchester (on 26th January 2015) to engage with an appreciative audience on “Current Trends in IP”. So this is a sadly-belated reference to work of Charlotte Scott on “The IPEC – one year on”.
Hogarth Chambers marketing image

A point made by Charlotte was that, of 14 cases reported in the IPEC since July 2014, 7 were damages inquiries or accounts of profits. Further, Charlotte noted SDL Hair Limited v Next Row Limited (and others) [2014] EWHC 2084 (IPEC) as useful on “general principles”. Mr Justice Hacon does indeed, begin “The Law” in the case [paragraph 31] with the firm statement: “I derive the following [nine] principles from authorities in relation to an inquiry as to damages”.

 I pause here to reflect that, but for Charlotte, I would probably have missed the case completely as it concerns damages in the context of “groundless threats of patent infringement”. Being a Trade Mark Attorney (and no longer an Associate of CIPA) I don’t find the time I once did for reading material that has “patent” in its title. I pause to reflect also that it’s good to have the [nine] principles to hand – both for the client who asks “What will I get if I win ?”  and for the client who doesn’t ask but who ought to be advised on the issue anyway. (The Duck quacks just in case you were interested they got £40,500 plus interest )

 To whet the appetite, the first five principles (with references to cases omitted) are:
(1) A successful claimant is entitled, by way of compensation, to that sum of money which will put him in the same position he would have been in if he had not sustained the wrong
(2) The claimant has the burden of proving the loss
(3) The defendant being a wrongdoer, damages should be liberally assessed but the object is to compensate the claimant, not punish the defendant
(4) The claimant is entitled to recover loss that was (i) foreseeable, and (ii) caused by the wrong, and (iii) not excluded from recovery by public or social policy
(5) In relation to causation, it is not enough for the claimant to show that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss. It is not necessary for the tort to be the sole or dominant cause of the loss. I end with the thought that it’s good to see “common sense” having a part to play !

Charlotte also referenced the  NGRS v Staham case which delivered £5200 and is blogged on our big sister here.
The Duck thinks you might also like to check out Harman and Burge which applies the same SDL law to another fact scenario and came to £39,701 plus interest. 

It is sad to reflect that IPEC claimants with damages claims of this order will now be required to pay more in claims fees as a result of the court fee rise that came into effect today 9 March 2015. Valuing your claim realistically is more imporatn than ever if you dont want to pay a £10,000 claim fee for an unquantified amount of damages. Litigator duck quietly sails away into the sunset

Sunday, 8 March 2015

Use it AND Lose It: Trade Mark lessons from Cambridge University

A very respectable number of SOLO practitioners forgathered on Saturday in Cambridge for the CIPIL Annual Spring Conference which addressed the question "Use it  or Lose It" across the range of intellectual property rights from trade marks, through patents, to copyright and related rights. The event was expertly chaired by Mr Justice Richard Arnold who provided his own incisive commentary on the presentations.

You might think that it was obvious that governments grant monopolies to be used, but intellectual property law has become so convoluted that even this simple tenet can no longer be assumed and there was much to discuss.

This note only addresses the trade marks presentations and more specifically some issues that arose in the presentation by Appointed Person: Emma Himsworth QC . She addressed the issue of whether, when word marks are registered, use in a variant form is genuine use. Did the figurative fig leaf ( a term created by Mr Justice Arnold in his Starbucks decision of 2012 (it was noted that there is an appeal to the Supreme Court on that case to be heard on 25 March 2015 but it considers other aspects and the fig leaf remains firmly in its place in the firmament of IP case law) alter the distinctive character of the plain word.

In a straw poll of the audience we were prepared to accept that use of Catwalk (right) would be use of the word. But it was not. Geoffrey Hobbs' September 2013 decision is here. It was admitted that "the evidence was disastrous" was a major factor with no evidence of oral use or on invoices in any of the cases. Our chairman also felt that none of them had much distinctive character in their own right.


 The audience was in agreement that the sideways rabbit mark would not so easily be recognised as the word mark CB. That decision was made by Iain Purvis in June 2013.
Following down the catwalk was Amanda Michael's decision where HOME MAID was considered not used when represented in either of the forms shown.
As a result we were left with the conclusion that it was a case of Prove you are using it or lose it. Its simply not enough to use your mark, you must be able to show probative evidence of use preferably as registered with sufficient indications of the place, time and extent of use. Its got to be clear, precise and detailed and if the use is limited, you must dispel any doubt as to its genuineness with additional evidence. In a final gleeful addition, Ms Himsworth pointed out that brand owners opposing UK registrations must do all this concisely in accordance with the new practice note TPN 1/2015 which limits you to 300 pages without leave. 

When questioned on the practicality of this for well used marks which were being put to proof of use in face of obvious use, I was informed that such brand owners normally had more recent registrations on which to rely in their oppositions. So it appears that the Appointed People are at one with the registry in condoning the abusive use of refiled registrations to avoid proof of use challenges, and it is only the miserable SME who relies on registration and renewal that is to be mocked by this enforcement burden.

Dissipating Goodwill

There was also a master class by Hazel Carty of Manchester University on the concept of goodwill and whether it could be abandoned or dissipated more slowly. Hopefully once we have the views of the Supreme Court on Starbucks which our chair indicated was likely to review in some depth the Star Industrial case from 1976 (which discussed abandonment (by assignment)), it may be clearer whether it is ever safe to resurrect a zombie mark. Certainly the band cases and the Masylyukov v Diageo case concerning the registration by the appellant of the names of some closed whisky distilleries decided in 2010 by our chair suggest that its a risky option. However the point made Mr Justice Arnold made was that the goodwill was not dissipating in the Masylyukov case but was still being created (even if the whisky was no longer being distilled) as there was stock and it was being sold.

We were also treated to some perspectives from Australia by Robert Burrell who showed that there, an unused mark with dissipating goodwill could remain on the register.

Thursday, 26 February 2015

Canal + not UK law yet

In February 2014 OHIM Board of Appeal issued a decision R1260/2013-2 confirming that proof of use can be requested in a trade mark opposition where the earlier right relied upon is a re-filing of the same sign for the same goods and territory that completed its registration procedure 5 years before the opposed mark was advertised. This gave effect to the sanctions provided by the Harmonisation directive to prevent unused marks being used to oppose later registrations.

Unfortunately in the UKIPO this is not the case. In an interlocutory decision issued today by Mr Bryant, a request for proof of use of a mark registered in various manifestations for 20 years but as yet unused was refused.

Coincidentally ECTA is holding a workshop on this very issue in Alicante this evening. I want to know whether OHIM is happy with the fog in the channel between UK and European Union practice.

What do you think?

Wednesday, 18 February 2015

Food for thought

Here are some thoughts from Michael Factor (of IP Factor fame) on the niceties of professional hospitality:
Food for thought

Israel is a patent generator. Most patent applications that are drafted in Israel are filed in the US, and a large number are filed in Europe as well. Many US and some European patent firms make regular pilgrimages to Israel, often sending at least one Jewish partner. They visit the larger firms, but are aware that a very large percentage of new applications are actually generated by the smaller firms and sole practitioners. A couple of associate firms, one US and one European, have invited the smaller firms to breakfast in Tel Aviv. On the menu is the PPH and other recent developments.  Unfortunately, the firms decided to choose a restaurant that serves both dairy and meat dishes, including veal in a cream sauce, which cause problems for those with Kosher dietary requirements. 
The hosts are themselves Jewish. They may be Kosher observant to some extent and may possibly only order from the extensive range of vegan and vegetarian dishes that the restaurant offers.  However, about 50% of Israel IP practitioners would not wish to eat in such a place and many would be uncomfortable even to be seen there. 
I think hosting a meeting in an informal setting such as a restaurant is a great idea. However, one has to be aware of the cultural and dietary tendencies of the target audience. If one hosts an event in India, it would be simply bad taste to serve meat. Muslims will eat meat in accordance with their Halal requirements, but many Hindus and Buddhists are strictly vegetarian. 
In England, Church of England practitioners -- and those out of practice -- may have few religious restrictions, but many English people are squeamish about foreign food.  A French firm might consider whether it is best to avoid hosting a marketing event which serves snails and frogs' legs since, while they are regarded by some as a great treat, they may turn the stomach of many others. Horse burgers should probably be avoided as well. The Korean diet includes a much wider range of meats than are generally eaten in the West. Alcohol is another sensitive issue. In some cultures its absence is seen as a serious omission. Elsewhere its presence or its consumption, particularly in quantity, can give rise to offence. 
That's not to say that a low salt, low fat, alcohol free vegan reception is likely to draw the crowds. One can't please all of the people all of the time but, when planning a marketing event, it is worth thinking things through, trying to be inclusive and to avoid offending.  

Saturday, 14 February 2015

The new ITMA website

Home Page
The Institute of Trade Mark Attorneys - august organisation that represents some of the UK's regulated and registered trade mark agents has revamped its website making extensive use of a  CENTRIC customer relationship management (CRM) system. I assume that because all the messages I get from it and various tab titles use that trade mark. I cannot find out much about it. There are references to CENTRIC CRM as being an open source product and it was the former name of Concursive, but relying as one does on the UK IPO you find that the CENTRIC word mark stands as an opposed application in the name of BNP Paribas. Its a similar scenario on the OHIM register. Why am I interested in the underlying database? Well that's likely to be responsible for some of its strange behaviours.

At first sight the design looks nice and clear. The Home Page is a little crowded with plenty of information left below the fold, but then I don't envy anyone trying to organise a home page any more. Members can log in. Its in the top blue bar on the left. If you are a member you have been sent a user name (Joe.bloggs format)  and your password set to your membership number. You can change that when you find the place to edit your profile. Once you log in there are exciting green bar messages that tell you false information, such as that you have not paid fees or the like. The profile itself allows a certain amount of editing. I have managed to show you a picture and change my title to Solicitor Advocate just for fun. I may change it again to something else next week. After all I have apparently only been a member for 3 weeks. I tried to give myself some skills but it was too smart for that. The nice thing about the profile (if anyone other than me was looking at it) is that it contains my twitter feed, which on the day I made the screen shot was quite relevant. You can enlarge the picture in this post by clicking on it.

So who will see this profile. An important aspect of any website like this is to allow the potential client to find an adviser. so I logged out. The link to do that doesn't work so I had to restart the browser to masquerade as a member of the public.  I clicked on the prominent purple find an expert box. it shows me a lot of text and suggests I try the Public Search Tool . I then click that.  I decided I would look for an expert in Windermere. Readers of this blog may be aware of a prominent trade mark expert who has moved to that neck of the woods. I get a really nice enlargeable map showing where in the UK Windermere is, but there are no experts there. The map shows Leeds too but that is barren of experts apparently. I zoom the map for fun a few times and decide to look in London. Ah much better.
There are lots of little pins and a long list of firms below the fold that I almost miss. I can click on a pin and see who lives in that office. The map is too clever and zooms around and ceases to be fun. The list, if you can escape the maw of the map, shows a list of members and you can sort by the various headings. At the side of each name in the List their is a link to view their profile. I chose one at random from my London search and discovered he had an address in Weybridge.  I could not work out the criteria for display. If I limit the search to "member" I could find myself but the Filemot pin was almost as shy as the Sally Cooper one so neither of us will getting much business from our ITMA membership as a a result of this website any time soon.

The database aspects feel to me like a work in progress. By contrast the information is presented clearly and its easy to find out how difficult it is to qualify as an agent and that I could expect to earn more than £40k when qualified. The Events come displayed in another whizzy database tool - an interactive calendar.

Professional bodies now need and are expected to have quality websites, both well designed and functional.  It is commendable that ITMA want to improve their offer. The design is nice but it wasn't that bad before, but so far I am not impressed by the database tools. You can hear how well the salesman sold them, but the finished product is incomplete. Maybe like our beloved OHIM site it will be an improving work in progess. Lets hope








Friday, 13 February 2015

Email address discrimination

Although I have worked with large law firms and organisations since 1994, I have been a sole trader since that time. Like many sole traders, I do my best to maximise my income by using my hours productively (eg working, rather than chasing unpaid invoices and trying to complete income tax forms unaided) and by minimising my outgoings.  This being so, I decided at an early stage to use an off-the-peg email address bore the name of my original internet service provider.  Though I have passed through the hands of several different ISPs since then, my email address has remained constant. There can't be so many of us now with email addresses ending in "@btinternet.com", so it's even becoming quite distinctive.

I recently spotted an invitation to sign up for a free webinar on an intellectual property topic of some interest to me. However, there was a little message at the bottom of the promotional material to the effect that the organisers only accepted registrations undertaken with professional email addresses (i.e. no registrations from people using Yahoo, Gmail and similar private accounts).

I would have guessed that there are quite a few sole and small practitioners in the field of intellectual property who, like me, are using web-based email services and may would be wondering whether this is an unreasonable ground of discrimination. Comments, anyone?