| |
CIPA Congress 2010 - IP in the New Decade
Thursday 30 September - Friday 1 October 2010
The Lancaster London Hotel, W2 2TYThursday 30 September opened Congress 2010 with an early morning dip in the Serpentine. Five brave souls met in the lobby of the Lancaster London Hotel and headed out into the mist of Hyde Park. I am sure it was no coincidence that among them were a habitual Irish ocean swimmer and a habitual Hampstead Heath Lido swimmer. The Serpentine Swimming Club is a group of very welcoming, slightly mad and, on this particular morning, slightly shivering people. Even as we donned our swimhats and swimsuits, eying up the wetsuits around us, the kettle was being turned on for post-swim tea. We emerged from the changing room into the watery light of the rising sun and braced ourselves for the 14 degrees celsius water. In fact, the water, although cold, felt invigorating and the extra challenge of swimming around the swans kept our minds off the lack of blood in our extremities. As we walked back to the hotel, we felt enormous satisfaction and well-being. We appreciated more than usual the beauty of this central London park and its surprising wildlife (a sleeping heron!) and peace. This is surely a Congress activity to repeat.
After an introduction by CIPA’s president, Alasdair Poore, John Alty, Chief Executive of the IPO, spoke to us about the activities planned at the IPO.
Mr Alty started by explaining that the Secretary of State, Vince Cable, has identified the role of his Department as helping to create growth. Thus, the IPO is committed to ‘develop proposals on how the UK’s intellectual property and copyright framework can further promote entrepreneurialism, economic growth and social and commercial innovation.’ (This is even though Mr Alty later stated that the coalition does not have IP as a high priority.)
The IPO’s activities must thus stimulate innovation without going too far and risk harming growth. It seems that only 10% or so of UK innovating firms use patents. The IPO wants to understand how and why firms use alternative ways to exploit new ideas and how the IPR system can help. The IPO and patent attorneys are both inputs to the IPR system that cost firms money and so we need to take some responsibility in ensuring that the outputs are properly promoted, those outputs being listed as innovation, investment and growth.
With respect to Europe, Mr Alty believes that one of the most important issues to improve the IP situation is to make progress on a single European patent in order to give European companies a competitive edge equivalent to those in the US. He observed that innovation in Europe seems to require more effort for smaller rewards than in the US. Mr Alty believes that Mr Batistelli’s presidency of the EPO is a good opportunity to make progress. He does not want the EPO to be an administrative and economic burden in future. The IPO thus wants our feedback of how the EPO is working and they want to help patent attorneys communicate with the EPO.
Locally, work is under way to reduce backlogs at the IPO. One of the IPO’s activities is an initiative to increase co-operation between offices so the IPO is working with WIPO and our Vancouver Group partners (Canada and Australia) to develop a work-sharing IT platform. A second initiative is the IPO working with the USPTO to help examiners share search results. Further activities undertaken by the IPO are a fast-track service for PCT and patent prosecution highway agreements – though there could be more take-up of these. The biggest hurdle for many of the IPO’s activities is a reluctance to place faith in work of others, though work with the Vancouver Group is slowly making headway on this. The IPO is working to make application documents available to the public as early as possible in 2011 and they want to make the documents easily searchable and analysable online.
Mr Alty finished by saying that we should work together to give British business the best possible opportunities for growth.
Questions from the floor included whether business methods would be more accepted as a seat for growth in Europe in the future. Mr Alty’s response was that there are no plans at the moment to allow business method patents. However, he does want to look widely at ways to encourage growth, including looking elsewhere to see if they are doing it better. Another question was, ‘Is it true that main problem for IPO is for 20% of applicants that do not use professional representation? Should you be encouraging applicants to use professional representatives?’ Mr Alty replied that this is true – lots of time is spent on these applicants. He said that the IPO does encourage applicants to use patent attorneys, but that they have been accused of being too pushy about professional advice! Finding a balance is key – professional advice can come from different areas. (I remember the final keynote speaker, Robert Pitkethly, of Congress 2009 suggested that professional advice regarding IP could come from accountants, as all SMEs have access to one of those.) Session 1 – Management of Worldwide IP PortfoliosAlasdair Poore opened this session by observing that young members of the profession often say that one thing they do not have much exposure to is commercial interests of businesses and how they affect IP strategy. This is perhaps true of private practice in general. Tony Tangena – previously with Philips, now Tangena & Van Kan – and Steve Ward from Syngenta were invited to shed a little light on this topic.
Mr Tangena’s main take-home message is that it is important (from the viewpoint of industry) to create maximum value with IP. The key areas of value for IP are exclusivity, exchange (cross-licensing), pro-active licensing, assets and insurance. Companies need to use IP to protect inventions that competitors are interested in and create value from that IP. He also said that the value of the IP portfolio should be visible. Valuations should be habitually performed. This visibility then ensures that the decision-makers at Board level of the company know that a proportion of the profits are down to the IP, including exclusivity in the markets, possibilities for licences and cross-licences, etc. Mr Tangena also suggested that it is not so important whether the company in question uses the invention itself; the protection should be for inventions that are attractive to licensees, i.e. a strategy of patenting only the products that the company is making themselves is not necessarily as valuable as patenting ideas that would be interesting to potential licensees. For example, Philips filed applications for televisions in Mexico because competitors manufactured TVs in Mexico for the US market.
Steve Ward, who was representing chemical industry to complement Mr Tangena’s engineering industry, said that he files vast numbers of patent applications that go nowhere (20,000 chemical applications are filed for one useful product). The factors he said had to be considered were where in the world to file and how much it will cost. In other words, ‘how do you get the best bang for your buck?’ This is more complex than it first seems – it might be impossible to pursue infringers in certain countries and so it is not worth filing in those countries, at least for the moment, though situations change. Mr Ward said in response to Mr Tangena’s comments that Paraguay was their Mexico – agrochemicals for Brazil are shipped via Paraguay by Syngenta and also by their competitors.
Mr Ward’s main advice was go in with one’s eyes open when evaluating a global filing strategy. IP budgets are reviewed fairly carefully and so one has to have a hard-nosed attitude with the business side of the company, ‘with respect to business side, you’re essentially placing their bets for them!’
Tony Rollins from Merck Sharp & Dohme Ltd. indicated that within Europe, Spain is a problem with respect to translations. Merck no longer files there because, since the London Protocol came into effect, Spain still requires full translation and it is disproportionately expensive to file there. Spain was also accused of holding up the Community patent and European court.
Catriona Hammer mentioned that GE Healthcare outsources low-cost searches, for example to India. They found that a problem with outsourcing was that quality went down and it no longer became easy to do work in-house because it would be difficult to justify the budget. Rock-bottom prices are no longer sought by GE. Session 2 – Towards an Enhanced Patent System in EuropeThe message from Edward Lyndon-Stanford was that the European and European Union Patents Court (EEUPC) is imminent. A draft agreement, draft court statute and draft rules of procedure have been created. The opinion of the Court of Justice of the EU has been sought and an Informal Opinion of the Advocates-General has been leaked (in French, with an informal translation into English having been made). Edward then talked us through the organisation of the structures of the proposed EEUPC.
Sir Robin Jacob, on the other hand, was rather more sceptical. The discussion for a unified patents court for Europe has been going on for a very long time – since debates in 1949, maybe further back. EPC discussions started in 1963 with the Strasbourg Convention. They assumed an EP patents court would follow. There were several further tries: 1970s (procedural suggestions – failed), 1980s (substantive laws – failed), 1990s (new judges got together and found more in common; talked to patent litigators and drafted a patent litigation agreement, but this was objected to by certain quarters), 2000s (resurrected and Margot Froehlinger in charge).
Enthusiasm for unified patent and court seems to have been tempered and hostile forces have been gathering for one last big fight. A problem is perhaps also involvement of the EU – people do not want the EU Court of Justice to be involved. In Sir Robin’s opinion, in 2025-2030, a European court will finally open its doors. On the bright side, we do have working systems in Europe. They may be untidy, but they are pretty uniform because the judges are beginning to follow each other more. Session 3 – Disclosure – Past, Present and FutureThis session was chaired by Tibor Gold. First, Tony Willoughby discussed disclosure with the particular example of a passing-off action. For example, he cited a case in which the evidence for passing-off was clear, but because of disclosure requirements, tens of thousands of documents were submitted, of which 52 were actually referred to, of which possibly one was relevant. Mr Willoughby is clearly opposed to the hassle and cost (£4m in one case!) of disclosure, especially for cases when it probably will not be that useful – e.g. passing-off when there is plenty of evidence. He would like courts to be more proactive for their own cases and decide whether disclosure is necessary – and of what – themselves, rather than relying on one of the sides to demand it just to cause trouble. Session 4 – Business Strategy and AdministrationDr Mike Jewess presented the results of a survey that he had prepared and performed with ten private practices and ten industrial departments. From the survey, he chose ten questions that he thought gave rise to interesting answers to discuss at Congress. The questions and answers that were most discussed subsequently by the floor arose from a finding by Mike that one private practice and one industrial department had a system of peer review of samples of priority drafts, and five industrial departments had a system of peer review for most or all priority texts. Members of the audience from private practice were almost angered by this question, and some thought that they had not been represented properly, as they had checking systems in place, but these were simply not called ‘peer reviews’.
A second survey result was regarding where priority filings are mostly filed: most companies file mostly in GB, five industrial departments file mostly EPs first, and only one industrial department files first in the US. Some of the audience seemed surprised that only one department would file first in the US.
With respect to a question regarding paperless offices, only two of those surveyed had converted to paperless offices, with up to seven considering it in the next three years. I do not suppose it was a coincidence that the chairman of this session, Richard Lucas of WhiteKnight Consulting Ltd., consults on converting to paperless systems!
Three panellists discussed these results. The panellists were from: industry (Christine Uffindell of Canon Europe Ltd.), private practice (Andrew Webb of JA Kemp & Co.) and patent administration in industry (Georgina Howard of Eli Lilly). Gala dinnerThe gala dinner in honour of IPAG’s tenth anniversary was well organised by Jacqueline Jones, Chairman of IPAG, with black and white feather decorations, a ballroom dancing demonstration and a singer of popular opera and West End musical songs. I hope the IPAG members enjoyed their well-earned gala dinner and dancing. Keynote speech – Carl HortonFriday’s first keynote speech was given by Carl Horton from GE on the effect on industry of a global economy – from deciding where to file patent applications to figuring out how to enforce patents in emerging markets and keeping the anti-IP activists at bay.
We learned that 60% of global growth is in the developing world and that there are significant IP policy battles occurring around the world, for example, with respect to compulsory licensing (India) and to the role of IP in the international UN climate change accord, not to mention trade-related disputes and classic battles regarding access to drugs or agriculture biotech by developing countries. A main topic of discussion, which was echoed in the next session of the day regarding China, was the ‘National Indigenous Innovation Policy’, wherein the Chinese government is planning to subsidise wholly-Chinese owned companies to file patent applications, and also to lead its government agencies to buy high-tech and other goods only from companies that develop the technologies in China.
Mr Horton also informed us that the anti-IP activists are ‘going green’ by positioning a problem in the context of a global challenge (AIDS, famine, climate change, etc.), point to IP as the barrier and demand free access to IP. Session 5 – Patents Stream: ChinaThe main theme here (as presented by Jian Xu and Gordon Harris, both from Wragge & Co. and Catriona Hammer from GE Healthcare) was that all of the administrative, legal and customs systems are in place in China, but using them effectively is the major challenge, particularly for non-Chinese originating companies. All of the speakers said you really need eyes and ears on the ground in China to be effective.
The difficulty in enforcing patents in China is that there are various local peculiarities in different provinces in China. The theory behind the government subsidies discussed by Carl Horton is that the subsidy is available to companies registered in China, but different provinces will deal with this differently and so in practice, it seems that the companies have in fact to be 100% Chinese-owned. Furthermore, courts treat IPR differently in different provinces and requirements for evidence are different. Because of the explosion in Chinese patent filings, and Chinese companies enforcing their IPR more, the speakers have found that there are more local competitors and they are starting litigation against multinationals more. Further barriers to foreigners in China include the new Chinese legislation, high software piracy rate, frequent movement of employees between competitors, an increasing number of Chinese-language only patents (which make searches harder) and a very active anti-IP lobby.
In an effort to meet these challenges, the speakers said that it was important to register IP rights in China (otherwise your competitors or even your suppliers will do it instead!). GE is also moving to do more development work in emerging markets such as China and bringing these products into traditional markets (EP, US) as low-cost offerings.
So, on China National Day (1 October, coincidentally), the message to Congress delegates was to get in there if you want to stand any chance of defending your IP rights in what is promising to be a very important market. Session 6, Patents Stream: IndiaTaranpreet Lamba from Glenmark Pharmaceuticals Ltd provided a huge amount of information and went through the key points of Indian patent law, in particular regarding what is not patentable in India, putting the application in order for grant and pre- and post-grant oppositions.
The key point discussed about patentability was that sections 3(d), 3(e) and 3(i) of the Indian Patents Act relate in particular to the patentability of pharmaceuticals. It seems that the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance is not patentable. Thus salts, esters, isomers, and other derivatives of known substances are considered to be the same substance unless they differ significantly in properties with regard to efficacy. There followed a discussion on how to prove efficacy of a pharmaceutical product, including clinical vs therapeutic efficacy. It was noted that this issue of patentability had to be argued separately from inventive step, even though the arguments would seem to overlap.
The in-order period of Indian patent applications is one year from the first exam report. This could be a problem if the Patent Office has taken a long time to deal with an applicant’s reply to an exam report and made further objections, as a divisional application to the same subject-matter is not possible. In other words, it is the applicant’s responsibility to make sure the application is in order. For example, the applicant could ask for an oral hearing if the Patent Office is delaying.
There is also a requirement (section 8) that information regarding foreign applications is submitted until grant of the patent. That is, one has to say where else one has filed, otherwise the patent can be revoked.
Pre-grant opposition can be filed by anyone. On the other hand, post-grant opposition has to be filed by an ‘interested party’.
Rajeshwari Hariharan from S. Majumdar & Co. picked up where Mr Lamba had left off, with discussion of oppositions. A same opponent often files pre- and post-grant oppositions. If an opposition is filed after entry of the granted patent in the register (which occurs between acceptance and publication of patent document), it has to be treated as a post-grant opposition. Interestingly, if an examiner forgets about an opposition until after entry in the register, it is too late – the pre-grant opposition cannot be accepted. So to overcome this, there is the opportunity of Review of the grant itself which can be requested by the opponent.
We were informed that one cannot just add features into claims (in response to an opposition) that do not have support for the feature’s novelty, inventive step and efficacy in the application as filed; i.e. a mere mention of a feature in the description is not enough.
Mrs Hariharan advised us that it is important to be consistent in arguments. It is not acceptable to say invention is a new polymorph and later say it is a selection patent. One must argue which one it is (according to the description) and stick to that… all over the world! One cannot use conflicting arguments in different jurisdictions, otherwise an opponent might jump on it. Finally, adverse decisions must be challenged (e.g. appealed, or at least argued) otherwise they might affect other applications in the same family – it seems prejudices stick! Keynote speech – Professor William KingstonThe final keynote speech of the Congress was by Professor William Kingston, of Trinity College, Dublin, author of several IP- and innovation-related books and articles. Prof. Kingston’s speech was a nice bookend to John Alty’s opening speech, as both speakers said that we need to support SMEs (especially against large firms, e.g. by compulsory expert technical arbitration before going to court) and correctly to protect technology (i.e. technology other than pharmaceuticals).
According to Professor Kingston, the shift of brainpower, money and energy has been from technology to financial innovation – this is bad because it has led to a decline in UK industrial/technological innovation. In his opinion, in 1952, IP law in the US Constitution was effectively written by the pharmaceutical industry (so that they could get a patent for something other than a ‘flash of genius’ as previously looked for by PO) and this was passively copied by the rest of the world. Thus, patent systems protect pharmaceuticals rather better than other technologies.
The key to protecting technologies is to protect innovation, rather than invention. Pharmaceutical innovations are directly linked to what is protected in patents. However, an engineering product that is bought is often removed from the patented ‘invention’. However, Professor Kingston believes that there are good ways to protect ideas – by protecting the innovation directly, such as with plant variety protection, functional designs, EU database directive, Florida Boat Hull law, Orphan Drug protection. Session 5, Trade Marks and Designs StreamThis session was chaired by Doug McCall, W.P. Thompson & Co. Michael Edenborough QC of Serle Court provided a clear analysis of several recent CJEU decisions on cases against Google and others concerning Google’s AdWords™ scheme while also clarifying what questions referred by Arnold J to the CJEU remained in the Interflora case. Looking ahead, he considered that the scope of adverse effects on the other, non-origin functions of a trade mark will still need to be determined; nor have we yet heard the last word on the liability of ISPs, he predicts.
Glenn Perry of Sterne Kessler Goldstein & Fox PLLC outlined the current state of affairs in the US with regard to Keyword search engine advertising. The same issues arise ‘over the pond’, e.g. likelihood of confusion, secondary liability, whether the sale of TM-protected words in a search engine keywords program is a ‘use in commerce’ under the Lanham Act. Many examples were presented, some amusing (at least to a neutral audience) and also several attempts to patent aspects of keyword searching/trading were discussed. There are several pending cases in various Federal Circuits.
Ms Junko Saito of Ishida & Associates then brought us up-to-date on the situation in Japan. There have not been many cases but ISPs are found not to be liable for TM infringement because they do not ‘use’ the TMs in question. On metatag use Japanese courts did find infringement, compare with Jacob LJ’s (obiter?) observations in Reed v Reed. Overall, the state of the law in Japan seems similar to that in the EU. Session 6, Trade Marks and DesignsDoug McCall continued to chair and called first on his colleague Ms Rigel Moss-McGrath to take us through some recent decisions which may indicate some changes. Such is the TM ‘IP TRANSLATOR’, applicant CIPA, now pending before the CJEU, on the scope of class headings: do the words in such headings cover everything in their class even if the actual words are not apt to describe them? The CJEU in the Audi case seemed to shift somewhat on slogan marks from is earlier ‘DAS PRINZIP…’ decision. Another big controversy is whether use of a CTM in a single EU country can amount to genuine use in the Community. There is a view in Belgium and Hungary that it cannot but this is (one hopes) a minority view which will be overruled. Spirits were raised, ahem, when Rigel discussed the recent VODKAT passing-off case in which the English court found the term ‘vodka’ a clearly defined class of goods and found the tort established. With his usual aplomb, design guru Dave Musker of Jenkins gave us round-up of three early cases reaching the General Court (ex-CFI) on appeal from OHIM. T-9/07 had some useful observations on the ‘informed user’ and ‘design freedom’ in respect of a rather featureless toy disc. T-153/08 concerned conference speaker consoles with a lot of design freedom. It was an open-and-shut case (sorry for the pun) in which the features of the lid of the unit were considered secondary. The next pun, sorry case, T-148/08, highlighted the fact that comparison of the design with a design in a prior TM uses the infringement approach in Article 25(1) of the Design Regulation. If anyone can make domain names exciting, Lorna Gradden of Com Laude can – and she did. We are facing huge changes in which the number of gTLDs (general top level domains) will increase 25-fold by 2012. One very attractive feature of the ne system will be for brand owners to be able to change from a [brand name].com to their own gTLD of [word].[brand name], e.g. patents.cipa! This will enable consumers to trust e-mails and websites much more because infringers will be locked out. There is an elaborate application process and timeline. However, the cost of obtaining these gTLDs will be eye-wateringly high. There are also policy issues to resolve, e.g. should .health be allowed? Lorna identified ten issues each with gTLDs; ccTLDs (ccTLD UDRP filings are constantly increasing; problems with registrars, release of one-character and two-character domains); IDNs (that is, internationalised domain names, non-Latin characters, 11 languages; typosquatting, a new but immediately understandable term for many of us) and UDRP (where complainants can ‘forum-shop’, panellists are inconsistent or too ‘creative’, and there is no appeal system). Session 7: Hot TopicsThe main ‘Hot Topic’ for discussion at the end of another very successful CIPA Congress was chaired by Bob Weston of Phillips & Leigh was professional legal privilege for in-house attorneys’ communications in the light of the recent CJEU decision in Akzo. This was chosen by the audience despite a brave attempt by Bob to initiate discussion on any of the other seven controversial topics he bravely put up as a menu. The discussion was very lively and the panel of Barbara Cookson (Filemot Technology Law Ltd.), Professor Johanna Gibson (Queen Mary, University of London), Jim Boff (Phillips & Leigh) and Tibor Gold did bring up some conflicting opinions in the panel and from the floor. But it was agreed that Akzo should not alter the position on privilege in purely domestic UK litigation. Chief reporter: Cassandra Derham (TM/Design stream reporter: Tibor Gold)
|
