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).

Wednesday, 31 July 2013

Wednesday whimsies

Some IP surveys for your delectation.  Here's a call for a bit of reader participation in our little corner of the intellectual property blogosphere.
(i) The IPKat's sidebar carries a poll as to what readers think of "King & Wood Mallesons SJ Berwin" as a brand name for the merging practices of a global law firm; 
(ii) Afro-IP is running its own sidebar poll to guide the World Intellectual Property Organization as to where in Africa that august UN agency might wish to locate its much-discussed regional office(s) [at present there are four front-runners, but there are still 18 days to do, notes the Kat]
(iii) the jiplp weblog, which is attached to the Journal of Intellectual Property Law & Practice, offers a sidebar poll on what you understand the term 'Greek Yoghurt' to mean;
(iv) On PatLit you can find details of Kingsley Egbuonu's survey on the effect of the Jackson Review of Civil Litigation Costs in England and Wales upon IP litigation, especially in the Patents County Court.  This Kat is pleased to report that, after a slow start, Kingsley is now beginning to build up a respectable body of data -- but it's not too late to add your own!
Do let these polls have the benefit of your opinion.  As a community we may never achieve consensus, but it's always good to know if our views are reflected by the views of others.

Around the weblogs. Ever entertaining and informative, Mark Anderson's IP Draughts weblog has a great post on 10 tips for people applying for IP jobs.  Over on the jiplp blog, Emma Linklater explains how a German court, considering exhaustion of copyright, distinguishes between computer software and ebooks. Liability for wrongfully threatening to sue some poor soul for patent infringement crops up not once but twice (here and here) on PatLit.  Meanwhile, on Class 99, Australian design law scholar Jani McCutcheon seeks guidance from readers as to whether "graphic symbols" -- in this case a famous Louis Vuitton desin (left) -- really constitute a 'product' for the purpose of Community registered design law.  Finally, over in Canada, Howard Knopf's Excess Copyright blog reports that Access Copyright (the Canadian copyright licensing agency) is undertaking a survey of its "creator affiliates"; this leads a Kat or two to wonder whether it wouldn't be better if the creator affiliates were undertaking to survey Access Copyright ...

New edition. This Kat has learned that his friends Peter Watchorn and Andrea Veronese have just published the third edition of their highly useful Procedural law under the EPC-2000. What do you get for your 75 euro?  This:
"This third edition (2013) is updated to all of the most recent legal changes. It covers, in particular, the reorganisation of the EPO Guidelines, the abandonment of the legal advices and their incorporation into the EPO Guidelines, the changes to the procedure for grant under amended R.71 and new R.71a and the new sanction provided by amended R.53(3) for failure to translate the priority; as well as various new decisions of the Enlarged Board of Appeal and new developments in Board of Appeal case law. 
The book is written in a practical way and deals thoroughly and systematically with the different topics, but is also structured to fit all parts into "the bigger picture". It is hoped, that after getting accustomed to its format, readers will find the book a useful tool in their study and daily work".
The easiest way to procure your copy is to visit the Kastner website here and click around a few times.

The Royal Society of Chemistry (RSC) has taken the inspired step of filming our dear brother Kat Darren, together with a few other hand-picked [should this be 'face-picked', wonders Merpel] personages for their Faces of Chemistry series. Interested readers, their friends, followers and supporters can access this series on the RSC website here.  The series is intended to help students considering whether to pursue a career in chemistry and the RSC is keen for these to be publicised in legal way that Kats and others can conjure up.  So please so spread the word!

Harry Potter and the Cuckoo's Tweet: battle averted without a shot being fired

In the Faraway Land of Sabbatical she may be, but Catherine ("Cat the Kat") Lee is still taking an active interest in intellectual property developments, and is this passion for the subject that has led her to put pen to paw and produce the following piece of prose on the outing of JK (or should that be AKA?) Rowling:

The Cuckoo's
Calling ...
"Twitter has increasingly become a popular platform to reveal confidential information relating to celebrities. Last year it was super injunction summer (on which see Katpost here). This month it was the news that Robert Galbraith, author of the critically acclaimed debut crime novel The Cuckoo's Calling, was in fact the pen name of Harry Potter author JK Rowling.

As has been widely reported, the revelation of Ms Rowling’s authorship began on 9 July 2013 when well-known Sunday Times journalist and novelist India Knight tweeted praise for The Cuckoo’s Calling as a debut novel. One of Knight’s 97,000 Twitter followers, Judith Callegari, commented that the work was by an established author. When Ms Knight enquired ‘who?’, the reply she received from Ms Callegari was ‘Rowling’. Ms Callegari then deleted her Twitter account.

... the Twitter's tweeting ...
The story then goes that, intrigued by Ms Callegari’s response, Ms Knight informed Richard Brooks, the arts editor of The Sunday Times, who in turn conducted his own investigation. This revealed that Ms Rowling and ‘Robert Galbraith’ shared the same agent and editor at publisher Little, Brown. Textual analysis by linguistic expert Professor Patrick Juola of Harry Potter and the Deathly Hallows, The Cuckoo’s Calling and The Casual Vacancy (Ms Rowling’s other so-far-known foray into the adult book market) concluded that all three had been written by the same person. Armed with this information, Mr Brooks contacted Little, Brown to obtain an interview with ‘Robert Galbraith’. When this was continually refused, Mr Brooks posed the express question ‘Is it Rowling?’. It was only then that Rowling and Little, Brown admitted the truth about the identity of ‘Robert Galbraith’.

And what of Ms Callegari? It turns out that she is a friend of Chris Gossage, partner at boutique media law firm Russells. In mid-July a statement from Russells read: 
‘We, Russells Solicitors, apologise unreservedly for the disclosure caused by one of our partners, Chris Gossage, in revealing to his wife’s best friend, Judith Callegari, during a private conversation that the true identity of Robert Galbraith was in fact J K Rowling. Whilst accepting his own culpability, the disclosure was made in confidence to someone he trusted implicitly. On becoming aware of the circumstances, we immediately notified JK Rowling’s agent. We can confirm that this leak was not part of any marketing plan and that neither JK Rowling, her agent nor publishers were in any way involved’.
At the same time Rowling said in a statement
“I have discovered how the leak about Robert’s true identity occurred. A tiny number of people knew my pseudonym and it has not been pleasant to wonder for days how a woman whom I had never heard of prior to Sunday night could have found out something that many of my oldest friends did not know.”
She added: 
“To say that I am disappointed is an understatement. I had assumed that I could expect total confidentiality from Russells, a reputable professional firm and I feel very angry that my trust turned out to be misplaced.”
Not surprisingly, Ms Rowling commenced legal proceedings against Russells, Mr Gossage and Ms Callegari. Today the matter was mercifully settled in the High Court with Russells, Mr Gossage and Ms Callegari agreeing to pay Rowling’s legal costs and to make a substantial donation to Soldiers' Charity (an organisation who had helped her with her research for The Cuckoo’s Calling). A statement read in open court ran as follows:
... and our Cat's a-blogging
‘The claimant was angry and distressed that her confidences had been betrayed and this was very much aggravated by repeated speculation that the leak had, in fact, been a carefully coordinated publicity stunt by her, her agent and her publishers designed to increase sales.

The claimant has been left dismayed and distressed by such a fundamental betrayal of trust. As a reflection of their regret for breach of the claimant’s confidence including frustrating the claimant’s ability to continue to write anonymously under the name Robert Galbraith, the defendants are here today to apologise publicly to the claimant.’
And what of The Cuckoo’s Calling? Before Rowling's identity as the author was revealed, just 1,500 copies of the printed book had been sold together with 7,000 copies of the ebook, audiobook and library editions. Once her identity was revealed, it surged to from No 4,709 to No 1 on the Amazon best-seller list".
The conspiracy theory has now been firmly and explicitly denied, though there are still grounds for suspecting that we have not heard the last of it. After all, we have no idea where any members of the Russells partnership were on 22 November 1963 when another JK was done away with in circumstances that have never been satisfactorily explained ...

Merpel takes this opportunity to state categorically that, notwithstanding her fluency of style, her elegant wit and her air of mystery, she is a real fictional Kat and not merely a nom-de-plume of JK Rowling.

Posted on behalf of Catherine by Jeremy

So cool in court as Rihanna tops Topshop over T-shirts

Another day, another fascinating BBC snippet with which to enrich our understanding of contemporary IP law.  This time, courtesy of this Kat's good friend Lawrence Ryz (katpat!), comes this link:

"Pop singer Rihanna has won a legal battle with Topshop over a T-shirt bearing her image. The star sued Topshop's parent company Arcadia for $5 million (£3.3m) over the T-shirts, which featured a photo taken during a video shoot in 2011. Her lawyers told the High Court in London the fashion chain duped fans and may have damaged her reputation [as if such a thing were possible, snipes Merpel]. They said the picture was "very similar" to images used on CD sleeves for one of her albums.

Judge, Mr Justice Birss [the arbiter of all things cool], ruled that a "substantial number" of buyers were likely to have been deceived into buying the T-shirt because of a "false belief" that it had been approved by the singer. He said it was damaging to her "goodwill" and represented a loss of control over her reputation in the "fashion sphere".

Topshop's lawyers had claimed the 25-year-old was making an unjustifiable bid to establish a "free standing image right" over use of her picture in the UK. The photograph used by Topshop had been taken during filming of a music video in Northern Ireland in 2011.

In a two-minute judgment Mr Justice Birss, said there was
"no such thing as a general right by a famous person to control the reproduction of their image. The taking of the photograph is not suggested to have breached Rihanna's privacy. The mere sale by a trader of a T-shirt bearing an image of a famous person is not an act of passing off. However, I find that Topshop's sale of this T-shirt was an act of passing off".
Mr Justice Birss however did not make an assessment of any liable damages in his ruling.".
Good news for serious IP scholars is that the judgment in Robyn Rihanna Fenty v Arcadia [2013] EWHC 2310 (Ch), not yet posted on BAILII, can be read in full here.

The judgment, which this Kat has only just received and hasn't yet time to read in full, appears to bring British passing off law up to date, running through the classical Jif Lemon case of Reckitt & Colman v Borden, through the 1970s consolidation of the law in Tavener Rutledge v Trexapalm (the Kojak Lollipops case) [1977] RPC 275, Lyngstad v Anabas (goods carrying photographs of the pop group Abba) [1977] FSR 62, and Wombles v Womble Skip Hire (skips for collecting rubbish branded Womble) [1975] FSR 488, thence to the age of merchandising and endorsement in Mirage Studios v Counterfeat Clothing (the Teenage Mutant Ninja Turtles case) [1991] FSR 145 and Irvine v Talksport [2002] FSR 60, and finally up to the age of the social media, with references to Twitter and tweets.

Rihana's reputation here, here and here. She's a Bad Girl ...

STOP PRESS: the judgment is now accessible online from the Judiciary website here -- and on BAILII here

Tuesday, 30 July 2013

Arrow misses target, but escitalopram is attacked with fresh Resolution

Yesterday was a good day for Patents Court (England and Wales) judge Mr Justice Arnold. First, in Mylan v Yeda (noted here by the IPKat), his decision was upheld by a Court of Appeal containing two specialist IP judges. Then, no doubt by sheer coincidence, another version of the same Court of Appeal, this time consisting of Lords Justices Longmore, Moore Bick and Floyd, went and upheld him again in Resolution Chemicals Ltd v H. Lundbeck A/S [2013] EWCA Civ 924.

HMS Resolution: not sunk when
earlier Arrow missed its mark
Lundbeck was fortunate enough to hold a European patent and then a supplementary protection certificate (SPC) for escitalopram, a single enantiomer of the compound citalopram (a drug used in the treatment of depression). Way back in 2005 a number of pharmaceutical companies brought proceedings in the United Kingdom to challenge the validity of the UK counterpart of this patent. Those proceedings were unsuccessful.  In the past, Resolution belonged to the same group of companies as Arrow, one of the claimants in the 2005 action. Indeed, Resolution had actually had a go at making a generic version of the drug, but those efforts ended approximately a year before the 2005 proceedings commenced. In 2009 Resolution became an independent company and launched its own proceedings to challenge Lundbeck's SPC and patent. At first instance [noted here on the IPKat by Darren], Mr Justice Arnold held that Resolution could proceed with this challenge because it had had no interest in the drug at the time of the previous proceedings. Lundbeck appealed, arguing that Resolution had stood back and let Arrow fight the proceedings for it and it should therefore be bound by the decision in the 2005 proceedings on the basis of privity of interest.

The Court of Appeal dismissed Lundbeck's appeal. In its view:

* Privity of interest provided an exception to the general principle that estoppel would bind only the parties to previous litigation. The test was whether, having due regard to the subject matter of the dispute, there was a sufficient degree of identity between a party to litigation and a third party so as to act as a bar to the third party commencing a fresh action.

* It was thus for the court to assess on the facts whether there was privity of interest between a new party -- in this case Resolution -- and a party to previous proceedings.  In doing so, it had to examine (i) the extent to which the new party had an interest in the subject matter of the previous action; (ii) the extent to which the new party could be said to be, in reality, the party to the original proceedings by reason of its relationship with that party and (iii) against that background, whether it was just that the new party should be bound by the outcome of the previous litigation.

* Arrow and Resolution were indeed part of a group of companies under common control. There was however no subsisting relationship between them under which it could be said that the 2005 proceedings were being conducted by Arrow for Resolution's benefit.

The IPKat's own earlier
experiments didn't get far
* It made sense for Arrow to apply to revoke Lundbeck's patent as it had an interest in having it revoked. If other companies subsequently acquired an interest in seeing the patent revoked, there was no reason to treat the earlier litigation as having been conducted on their behalf, when it was commenced at a time when they were not affected by the patent. Accordingly, the notion that Resolution had stood back and allowed Arrow to fight its battle failed on the facts. Resolution was not in a position to make the drug, its previous efforts had failed and its efforts had ceased over a year before the commencement of the previous litigation. From that point onward, Resolution's interest was no different from that of any other company with a general interest in generic pharmaceutical products -- and that could not be sufficient to hold it bound by the outcome of the earlier proceedings.

The IPKat thinks Lundbeck can't be blamed for trying its luck here, but it would be difficult to argue with the Court of Appeal's statement of the general principles.  Merpel just wonders how many times escitalopram has been litigated across Europe and beyond.  If ever a patent was a licence to litigate, this is it!

Later evidence may be relied on in patent validity disputes -- but only just

Some patent cases make this fairly non-technical Kat glaze over a bit when he tries to make head or tail of the facts. One such case is Generics [UK] Ltd (t/a Mylan) v Yeda Research And Development Co Ltd and Teva Pharmaceutical Industries Ltd [2013] EWCA Civ 925, decided yesterday by a three-man Court of Appeal for England and Wales which consisted of two specialist IP judges -- Lords Justices Kitchin and Floyd -- together with Lord Justice Moses.

Yeda and Teva were the registered proprietor and exclusive licensee of a patent relating to a synthetic copolymer, copolymer-1. Teva marketed a copolymer-1 product under the brand name Copaxone for the treatment of relapsing-remitting multiple sclerosis (MS). The patent itself described copolymer-1 as a mixture of polypeptides composed of alanine, glutamic acid, lysine and tyrosine in a molar ratio of approximately 6:2:5:1, and the specification clearly stated that the invention consisted of the compositions themselves, their use in the treatment of MS and a method for making copolymer-1. Mylan, which planned to launch a product to competed with Copaxone, challenged the validity of the patent for obviousness over a prior publication ('Johnson') and for lack of a technical contribution. It appeared that, while the results of the Johnson phase III trial were not published in a scientific paper until after the priority date of Yeda's patent, the results of the trial had been announced beforehand. Mylan said that, even if Yeda's patent was not invalid, Mylan's proposed product did not infringe the claims of the patent on its proper construction because its own copolymer didn't confirm to the claimed ratio of amino acids and that, if the patent was not construed as Mylan argued it should be, it was in any event insufficient.

In the Patents Court, England and Wales, Mr Justice Arnold disappointed Mylan by holding the patent to be both valid and infringed [on which, see David Brophy's excellent Katpost here]. However, that judge kindly agreed to Mylan being allowed to appeal, which it duly did.

The Court of Appeal dismissed the appeal in no uncertain terms, in a judgment delivered by Lord Justice Floyd, with which his brethren concurred. In the Court's view:

* The alleged prior art in Johnson would have left the skilled team in a state of uncertainty as to what was being used in the phase III trial, and it was highly unusual for a material to be changed in any substantial way in the course of a series of trials. Arnold J was entitled to conclude, given the lack of clarity as to the molecular weight of the material in the Johnson trial, that the skilled team would not have considered it worthwhile to include the lower weight material in further testing.

* Arnold J was not correct to hold that, if Yeda's patent specification made a technical effect plausible, it was not open to Mylan to mount a challenge to the existence of that effect by the use of later evidence. The problem-solution approach to inventive step required the court to judge inventiveness by reference to what it was that the invention brought with it, this being its technical effect or advance. In doing so, the court was not judging the obviousness of the claimed invention by reference to later evidence: it was simply defining by evidence what it was that the invention was or brought with it [Says the IPKat, this is a fine difference but clearly a significant one. However, by allowing for reference to be made to later evidence, the Court of Appeal is also confining its scope of applicability within narrow straits].

* The rule that a technical effect relied on had to be made plausible by the specification, and could not be established for the first time by subsequent evidence, did not provide a basis for the different rule arrived at by the judge as to whether subsequent evidence could be used to negate an effect made plausible by the specification. However, Arnold J was entitled to reach the conclusion that it was made plausible by the specification that there was a connection between lower molecular weight and reduced toxicity and reaction. He was also entitled to conclude that Mylan had not proved that difference in molecular weight made no difference.

* Arnold J was correct to reject the appeal based on insufficiency.

* Turning to infringement, the correct question to ask was whether the percentage difference from 6:2:5:1, expressed as a molar fraction in any given sample, was within the variability which could arise from amino acid analysis and copolymer-1 synthesis. The skilled person would not consider a difference which exceeded such variability as being within the scope of the claim. Mylan's product differed from a product with a 6:2:5:1  ratio principally in that the molar fraction of tyrosine was 29.6 % greater. There was no evidence that this variation was greater than that which could occur from amino acid analysis and copolymer-1 synthesis. Accordingly, Mylan failed to show that its product did not infringe.

Note from AmeriKat: Mockingbirds, Model Orders and More Adwords Litigation

The AmeriKat's Mockingbird
tote filled with stacks of
work and reading, and the
occasional squeaking snack
A London commuter may often spy the AmeriKat on her way to the City.  But it is not the whiskers and bushy tail that give away her identity, but her trusty Barnes & Noble tote emblazoned with the original cover of To Kill A Mockingbird.  Having quickly realized that the book was unfortunately not a "how-to" manual of how to kill birds, including of the mocking variety, the AmeriKat fell deeply and dotingly in love with the prose of Harper Lee.  So when she was reading her latest edition of Vanity Fair she was absorbed by an article about ongoing litigation concerning the ownership of the copyright in Lee's one and only published novel.  

It is too depressing and complicated for the Amerikat to summarize, but she encourages all who have a fleeting moment on their morning commute to read the article.  The summary is that Lee commenced a lawsuit in May alleging that in 2007 her agent, Samuel Pinkus, "duped" her into assigning him the copyright in Mockingbird and then diverted the royalties.  Earlier this year, Pinkus reassigned the rights back to Lee.  The outstanding issue is that of a claim to the royalties paid to Pinkus's company during the five years he retained copyright.     

What can also be depressing and overly complicated for litigants in the US is the sheer number of prior art citations in patent litigation.  The US Court of Appeals for the Federal Circuit (CAFC)'s advisory council has issued "A Model Order Limiting Excess Patent Claims and Prior Art".  The model order would limit the number of prior art references referred by the parties to 10 claims per patent with a maximum of 32 total claims.  This limit would take effect 40 days after the defendant's deadline to disclose documents about the invention.  Then the defendant would have 14 days to introduce 12 prior-art references in relation to each patent with a maximum number of 40 citations overall.  After claim construction, the plaintiff then has 28 days to select up to 5 claims per patent (up to a total of 16) and the defence has 14 days to select up to 6 prior art references per patent (up to a total of 20).  The parties cannot introduce new claims or prior art references at this point.  

So  "so long, so long, good times" of asserting 40 claims to be matched by 120 prior art references?  [Not quite like the unspoken rule of 3 prior art citations in UK patent litigation, muses the AmeriKat]

Patent litigants need not fret.  The AmeriKat can
vouch that shaving off needless fluff is actually
very liberating, especially in the summer.
Not quite.  Being a model order, courts can use it, amend it or choose not to pay it any attention, but Chief Judge Leonard hoped that the model order would give "the parties more solid barometer of where they should begin their negotiations".  The Chief Judge of the Eastern District of Texas and committee member explained that litigants often wait until the weekend before trial to edit down a huge number of patent claims and prior-art references. Thus, spiralling patent litigation costs.    

The CAFC's Chief Judge Rader hoped that the model order would rein in the costs of patent litigation.  He stated that 
"You don't need to fix the patent system - it's not broken.  What you need to do is fix the litigation system, because it can be abused....[to] make it clear that the district courts have the authority to narrow these issues earlier."
The now infamous (thanks to Apple v Samsung) Judge Lucy Koh who sat on the committee hoped that the new order "will help shape the discussion and scope of litigation, even if it is not outright adopted verbatim".  

Not that the allowance of such citations have dampened the appetite of patent litigants.  As Darren reported earlier, PWC's 2013 Patent Litigation Survey  US patent litigation is staying strong with a compound annual growth rate of 7%.  

An aspect of US litigation one would hope would be facing a decline in growth would be that of keyword advertising litigation.  A few days ago, the Tenth Circuit Court of Appeals affirmed the majority of the district court's opinion 1-800 Contact's trade mark infringement claim against save for one issue which has been remanded for a jury trial.  The AmeriKat swears she was a lot younger when she first started following this case (and indeed she was, it having commenced 6 years ago). and its affiliates had purchased adwords for "1-800 contact lenses" and variations on a theme.  1-800 commenced proceedings arguing that created initial interest confusion by buying 1-800 Contacts' trademarks which, under the Tenth Circuits test, "results when a consumer seeks as particular trademark holder's product and instead is lured to the product of a competitor by the competitor's use of the same or similar mark." The district court rejected 1-800's arguments that purchasing a competitor's keywords is trade mark infringement and this was upheld on appeal, save for the issue of contributory infringement. For an informative and entertaining rant on this litigation, please see the excellent Eric Goldman's piece here.  

Monday, 29 July 2013

Licensing and working patents in India: an update

As the globe continues to shrink, this Kat wonders at the growing amount of fascinating and indeed commercially important information that speeds his way from readers around the world.  Even with a team of internationally-minded Kats, it's quite impossible to cover everything ourselves, so we are occasionally sometimes often generally always grateful when our friends near and wide come to our assistance.

India is a case in point.  The massive subcontinent, which is literally seething with IP activity of all kinds, is so well covered by our blogging cousins at Spicy IP that we rarely cover any Indian material ourselves. No disrespect is meant on our part, but we do feel the odd pang of guilt at focusing so infrequently on such a major player in IP today.  That's why this Kat is particularly pleased to have received two items from katfriend Michael Lin, from Marks & Clerk's Hong Kong office.  And here they are:
Compulsory licence update 
As many are aware, in 2012 India issued her first compulsory licence (CL) to Natco for Bayer’s anti-cancer drug Nexavar, and this CL was upheld by the Intellectual Property Appellate Board in Spring 2013 (see, for example, here and here).  Also in Spring 2013, BDR Pharmaceuticals, Ltd applied for a CL for Bristol Meyers Squibb’s anti-cancer drug Dasatinib.  This request is still pending.  This may mark the beginning of a trend for Indian companies to start requesting CLs.

The Indian Ministry of Health has also stepped into the fray, recommending in March 2013 that the Indian Department of Industrial Policy and Promotion (DIPP) also grant a compulsory licence for local companies to manufacture Trastuzumab (a.k.a. Herclon by Roche, and Herceptin by Genentech) for the treatment of certain breast cancers.  A major argument for the granting of this CL is the fact that the price of Trastuzumab appears to range from £16,500-27,500 per patient in India. Regardless of which end of the range you believe, this cost is far beyond the level at which either the typical Indian individual or insurance policy will be able to pay.
However, the DIPP has decided not to issue a CL for Trastuzumab, as reported by the Times of India on July 23.  Observers feel that the DIPP was likely feeling the heat from the international community and patent holders after granting the CL to Nexavar, on which basis it refused to grant the CL. This resulted in the Indian Ministry of Health then recommending that the Indian Government “break” the patent for Trastuzumab.  
The DIPP also suggested that this is not needed as the relevant patent, presumably IN 205534, is already undergoing post-grant opposition proceedings.  However, as anyone used to practising in India well-knows, opposition proceedings are excruciatingly slow in India; in some cases, the patent may even expire before the opposition proceedings are completed …

 Statements of Working 
Another Indian practice tidbit is that India has had in its law for a long time the ability under Section 146 of the Patents Act 1970 for the  Controller to require patentees/licensees to submit annual “Statements of Working” (a.k.a., Form 27) which are intended to detail if/how a patent is being used/commercialized in India.  While it is theoretically possible to fine a patentee who has not filed a Form 27, the requirement to file a Statement of Working was routinely ignored by most foreign and domestic companies for many years as few, if any, requests were actually sent out.  About five years ago, the Indian Patent Office (IPO) actually started to request that patentees file updated Form 27s.  Thus the IPO indicated that they were starting to take such forms seriously, and they have reiterated this position every one-to-one-and-a-half years or so.  Even so, I am not aware of any companies actually being fined for failing to submit an appropriate Form 27. 
It was always assumed that these forms would be kept confidential but recently, and for the first time, the IPO has published the Form 27s submitted by patentees for 2012.  Such information is now searchable and available online, here.  Thus for Indian patent holders there is a significant amount of competitive information which can be gained from viewing the working statements of your competitors, licensees, licensors, etc. – -and which your competitors may glean from your statements. 
 As a further point to watch out for, it is my understanding that the information in such working statements will likely have an impact when a company petitions the DIPP for a CL.  It is possible that the lack of a recently-filed Form 27 and/or an indication in a Form 27 that the patented technology is not being worked in India may be viewed by the DIPP as weighing in favour of granting a CL.  Accordingly, companies with patents in India will need to look seriously at these Form 27s and strategically decide what information will be provided, and to what level of detail. 
Working statements herehere and here
Non-working statements here and here
Working Cats here and here

Super injunctions: coming to a Loch near you?

When one considers how infrequently IP issues hit the headlines in Scotland, it's easy to see why the Kats make such a fuss of them when they do actually surface, like Nessie, above the placid waters of Loch Ness.  Accordingly this Kat is particularly pleased to hear this news from his friends Robert Buchan and Gill Grassie (Brodies LLP), who bring him the following tidings, on the subject of "super injunctions", no less:

It is often said it is key that justice be seen to be done.  Consistent with that, nearly all hearings are conducted in open court and can be reported in the media. Apart from cases where reporting could lead to a substantial risk of prejudice or harm vulnerable parties, the idea of anonymous judgments and reporting restrictions provokes heated debate on the extent to which freedom of expression should be legally restricted.

It is fair to say that Scotland has not yet had to deal with the dilemmas often presented by a high-profile controversial so-called super injunction application (interdicts being the Scots law term) which is usually sought to protect the privacy of a rich and famous celebrity. Readers may be aware that such orders prohibit not only the publication of information relating to a party but also the very fact of the existence of any court proceedings or order. Quite the contrary was demonstrated in 2011 when the Scottish newspaper The Sunday Herald published a photograph which disclosed that Ryan Giggs was the party behind one such English order [you can read how the English media reported this disclosure here and here]. By doing so it highlighted the risk in failing to appreciate that Scotland is a separate independent legal jurisdiction within the UK. As the interim injunction in that case was granted in England it was not legally binding on Scottish-based publishers in relation to circulating newspapers in Scotland. The failure to obtain an equivalent interim order in Scotland in that case quite literally meant that the cat was out of the bag.

The issues of anonymity and reporting restrictions are currently very topical in Scotland as The Scottish Civil Justice Council has just launched a consultation on draft revised court rules. These new rules would introduce clearer rights for the media to challenge the grant of any order which restricts the reporting of proceedings, rather than the current position which focuses mostly on possible variation or recall after the order is granted. The consultation is open until 2 October 2013 and can be accessed here. In 2010 in the case of Mackay and BBC Scotland v The United Kingdom the European Court of Human Rights was critical of the informal procedure which had been adopted in Scotland up to that point which allowed orders to be made and then become final if the media made no challenge within 48 hours. That criticism related to a statutory power under the Contempt of Court Act 1981 to restrict reporting and led to the creation of Chapter 102 of the existing Rules of The Court of Session. It was felt that reporting restrictions and related anonymity were not limited only to contempt situations and that wider reforms were required to ensure that all situations in which a court is considering making an order which restricted freedom of expression were covered, including other statutory provisions as well as inherent powers of the court. Different decisions in Scotland had produced different views on the extent to which Scottish Courts had inherent powers to grant anonymity and so clarification was required and a level playing field created.

This Consultation on the new draft rules and the extent of reform required was postponed awaiting the recent first instance and appeal decisions in the Court of Session in the case of Application of BBC Scotland re A v Secretary State for the Home Department at [2012] CSOH 185 and [2012] CSIH 43 respectively. This was a long-running asylum case. Both the first instance and appeal court disagreed with earlier cases and ruled that the Court did have an inherent power to grant anonymity. However the appeal court indicated too that there should be a consultation to ensure that rules were in place which allowed interested parties (i.e. the media) to be notified in advance of any order being made and allowing an opportunity to challenge such orders being granted. Thus the new draft rules allow the media an opportunity to make representations to the court before any order is made. This is in addition to the existing rules of challenge or variation after grant. The court would have to send a copy of the draft order to people who have registered an interest in seeing such orders and include sufficient information to provide them with a basis to challenge the application. No doubt a long list of interested parties will quickly form if these rules are put in place. However,  notably,  there is also a non-notification rule which applies when there are compelling reasons not to inform the media such as an individual seeking an interdict to restrict the disclosure of private information.

So what of super injunctions in Scotland? Adopting a "canny" Scottish approach, the Scottish Civil Justice Council is not convinced that the non-notification rule will result in a rush to obtain these types of orders in Scotland solely on the basis that there have not been so many privacy type cases to date. However the effect of these new rules and the impact of the high profile Giggs case certainly mean that the stage is set for super injunctions (or interdicts) becoming more common. It is worth all parties and their legal advisers, and not just footballers, being aware that this can result in a whole new ball game in Scotland.
This Kat considers that there is no right answer in situations such as this, since there is always likely to be a clash of powerful countervailing and often public interests: the best that can be done is to find a compromise that inflicts the least amount of damage, or delivers the maximum degree of benefit, within pretty well impossible parameters.

Merpel wants to know more about the prospects of a new ball game for Scotland. Is it because they're not showered themselves with glory in recent times when it comes to all the old ball games ...?

Sunday, 28 July 2013

Generics behaving badly? BMS v Teva illustrates UK judicial mood towards generic launch plans (Part II)

Mr Justice Birss 

The decision

After a trot through the case law on quia timet ("because he fears") actions, the Birss J formulated the test before him as follows:
"Whether, in all the relevant circumstances, there was a sufficiently strong probability that an injunction would be required to prevent the harm to the claimant to justify bringing the proceedings"
The use of the word "sufficiently" intended to "encapsulate the idea that the degree of probability required will vary from case to case depending on all the circumstances but that mere possibilities are never enough.  To justify coming to court requires there to be a concrete, strong and tangible risk that an injunction is required in order to do justice in all the circumstances."

At the date of the proceedings being issued in this case, there was a sufficiently strong probability that an injunction would be required to prevent Teva from infringing.  Objectively, as at February 2012, the UK market for efavirenz was significant.  A generic company would be prepared to launch at risk as the benefits in doing so would likely outweigh the risk.  The judge, again, highlighted Teva's previous reputation in being
"demonstrably prepared to launch products without notice and at risk of infringing an originator's patent if it chooses to do so.  Atorvastatin is a sufficient example but there are others.  Teva is demonstrably prepared to launch surreptitiously if it chooses to do so.  Again atorvastatin is an example. "
Pfizers's atorvastatin aka, Lipitor
Again, the judge emphasized that the mere obtaining of a marketing authorization before the expiry of the patentee's relevant rights did not mean that there was an intention to launch at risk, merely that such a launch was feasible.  The objective position was, therefore, that an at-risk launch was a credible possibility, but no more than that.

Subjectively, however, Teva's intentions as of 9 February 2012 were "tolerably clear".  The possibility of launching at risk in the UK before that date was under active consideration and made sense commercially as "the reward could be worth the risk and practically in that it was feasible".  If, in response, to BMS's request regarding its launch plans Teva disclosed its actual state of mind then the judge considered it would have said that "it had no plans to launch efavirnez before expiry but was actively considering the option of doing so".

On that basis, the only thing that would prevent Teva from infringing would be an injunction or Teva's agreement to give BMS advance notice of a decision to launch in order to afford BMS time to obtain an injunction.  Teva, the court found, had the opportunity to agree to give BMS such advance warning but refused to do so.  In those circumstances, BMS had no other option but to initiate proceedings.  With that conclusion, Birss J granted a permanent injunction to restrain Teva from infringing the patent until the expiry of the SPC.

The lesson for generics is pretty clear - engage in correspondence with the innovators as to your launch plans or risk raising suspicions that you are going to, or are at least actively considering, launching at risk.  A generic disclosing to an innovator that it has no plans to launch at risk but is actively considering the option and will give them notice before it does would seemingly assist a generic, but what is the point for a generic?  The benefit of a launching at risk would be lost as an innovator would have time to obtain an injunction.

The AmeriKat calculated the risk of being caught
scratching the door, but the benefit of far outweighed
the risk....aaahhhh....
The AmeriKat cannot help but liken the launching at-risk conduct as to the conduct of what was seen in the press a few years ago when some newspapers chose to publish, at-risk, stories about an individual's private life without notice because they knew that the sales they could make before an injunction was in force was higher than any costs or damages they would ultimately have to pay. It was a calculated risk and one that paid handsomely.

However, they heyday of such behavior has, for the most part, come to a close.  Indeed, following the atorvastatin experience in 2010 and in light of this decision and the decision in the recent Court of Appeal case of Novartis v Hospira, the judicial mood in respect of generics' launch plans does not accommodate such behavior.  Generics must be transparent as to their launch plans.  If they intend to launch before they have sufficiently cleared a path by invalidating the patentees' rights prior to launch (including on appeal), they better brace themselves for an injunction.

Oh, and another lesson, like the AmeriKat's mom, UK judges never forget bad behavior.

Generics behaving badly? BMS v Teva illustrates UK judicial mood towards generic launch plans (Part I)

A naughty AmeriKat being dragged home by her MomKat
The AmeriKat would love to give you the impression that she was a model child right up until she left for college.  However, although her MomKat would, of course, say that the AmeriKat was the sweetest child she may pause when forced to comment about her teenage years.  Bad behavior in teenage years is not unique to the AmeriKat.  But, any child will tell you, even when you are well into your twenties, thirties (or even forties), parents will still relish any opportunity to remind you of your teenage bad behavior.

The court also likes to remind parties of their bad behavior.  In the decision of 9 July 2013 in BMS v Teva [2013] EWHC 1958, Mr Justice Birss assumed the role of the "remember when you..." parent in respect of Teva's launch plans.  Unfortunately for Teva, its prior conduct in launching its generic products at-risk featured heavily in the decision.


The case concerned  BMS's patent and SPC covering efarinez, a non-nucleoside reverse transcriptase inhibitor which is used to control HIV infections.  The active ingredient is sold under the brand name SUSTIVA and in formulation under the brand name ATRIPLA.  The patent expires on 3 August 2013 and the SPC expires on 19 November 2013.  On 9 January 2012, Teva was granted a marketing authorization for the generic version of efarinez.

Upon realizing that Teva had a generic marketing authorization, BMS believed that there was a risk Teva was going to launch its generic product before the expiry of the SPC.  BMS's solicitors wrote to Teva on 1 December 2011 asking what Teva's plans were.  Teva told BMS that it was none of its business - its launch plans were confidential and it didn't have tell BMS (or, importantly, the court).  BMS construed this to be a threat, initiated proceedings and applied for an interim injunction.  Teva sought to strike out the application but Birss J rejected the strike out and an interim injunction was granted in March 2012.

Teva accepted that the patent and SPC covered efarinez and that the validity of the patent was not at issue.  The trial subject to July's judgment was whether Teva had in fact threatened to launch its generic product pre-expiry of the BMS patent and SPC which justified BMS commencing proceedings.  If there was such a threat the injunction would continue in the form of a final injunction until the expiry of BMS's SPC on 19 November 2013.

The arguments

BMS argued that in early 2012 it was concerned that Teva was about to launch efavirenz because, namely, (i) there was and is a significant market for the drug in the UK; (ii) Teva had obtained marketing authorization approval 2 years in advance of the expiry of the SPC; (iii) Teva failed to engage in correspondence with BMS as to their launch plans; (iv) Teva's previous behavior with respect of atorvastatin illustrated that Teva had previously launched at risk; (v) Teva could obtain a significant "first mover" advantage if Teva launched early; and (vi) the difficulties in calculating the loss for BMS were Teva to launch.

Those that work in the pharmaceutical industry know that generics covet the "first mover" advantage.   If a generic drug company can start selling its generic version of a branded product before any other generic, then they need only to make a modest discount of the branded price which is often much higher than the cost of manufacturing the generic product.  As soon as other generics enter the market and start competing the price falls rapidly to a level dictated by the generic companies costs of sales and profit margin.

One way to be sure to secure a first mover advantage is to launch "at risk", i.e. before the relevant rights, be it patent or SPC rights, expire.  As recited in the judgment, in 2010 Teva engaged in correspondence with Warner-Lambert stating that it intended to launch generic atorvastatin in November 2011 (after the expiry of the relevant SPC) but then "surreptitiously launched the product on a very large scale in June 2011, before expiry, and without any notice to the patentee."

Further, internal Teva e-mails adduced under a Civil Evidence Act notice, purported to show that after it had obtained a positive Committee for Medicinal Products for Human Use (CHMP )opinion and would therefore obtain a marketing authorization which would make a launch possible, senior staff in Teva started a review to give active consideration to such a launch.

The judge held that the mere obtaining of a marketing authorization for efavirenz nearly two years prior to patent expiry did not itself establish that Teva intended to launch before expiry. However, during cross-examination one of Teva's witnesses "accepted that he was familiar with the idea that part of Teva's strategy is to launch at risk of patent infringement in some cases (e.g. atorvastatin)."  However, based on this evidence, the judge stated that he had
"no reason to infer that Teva's motivation in commencing and scheduling its efavirenz project was driven by an intention to launch efavirenz before expiry of the BMS patent.  Nevertheless it is also plain that if Teva does manage to obtain a marketing authorization for a product sufficiently in advance of expiry to make a launch at risk feasible, that creates an opportunity which Teva well understands for it to launch at risk before expiry."
The judge continued:
"The most likely explanation for the materials I have been shown and the evidence as a whole is that in October 2011 Teva started to give active consideration to the possibility of launching efavirenz in the UK before 19th November 2013 but had not concluded that consideration by the time the relevant people inside Teva received the first letter from BMS's solicitors."
Baby Squid was often getting letters from generics
about their intended launch plans.  Unfortunately,
without any thumbs, he was unable to forward
them to the true recipient, Bristol-Myers Squibb
When the parties engaged in correspondence, Teva refused to divulge its launch plans as it considered these plans confidential. Although this policy did not accord with examples of Teva being prepared to disclose its plans to solicitors acting for other originator companies in similar circumstances, the judge stated that although not universally applied the policy was not simply created for this case.  However, he rejected the idea that
"this information is of a character that a sophisticated patent litigant like Teva could credibly claim that divulging to the relevant originator (under suitable undertakings to prevent its wider dissemination) that Teva had an unequivocal plan to launch a product only after the SPC expired would cause Teva any damage at all."
On the other hand, continued the judge, if Teva did plan to launch at risk than that information would be commercially sensitive because the last person Teva would wish to tell would be BMS as they could then do something about it.  One of Teva's witnesses accepted "that the policy maximised Teva's chance of being able to surreptitiously launch the product without being injuncted and that Teva stood to make money from such an at risk launch".

The judge also accepted that Teva were prepared to launch at risk if they chose to do so and that they were able to do so at short notice.  He did not accept that the nature of the market for efavirenz (selling to hospitals subject to tenders, as opposed to atorvastatin which was sold to retail pharmacies) greatly changed the ability and opportunity for Teva to launch at risk.

Continued in Part II.

Friday, 26 July 2013

"Design Around": Is What's Sauce for the Patent Goose Sauce for the Copyright Gander?

One of the more interesting aspects of IP law and practice is the use of terms that are not taken from explicit statutory language, but nevertheless have become part of the currency of IP thought and expression. This occurs without necessarily giving thought about the proper metes and bounds of such a term. One notable such term is "design around." As used in connection with patent law, the notion embodies a basic aspect of the patent system. We are taught that the "right" of a third party to design around a patent is part and parcel of the patentee's exclusive rights in the invention. The inventor agrees to disclose the invention in exchange for enjoying certain exclusive rights for a fixed period of time. A third party can certainly wait until the patent registration expires and the invention enters the public before making use of the disclosed invention. But the patent incentive system is not limited to post-expiry activity. Instead, it seeks to incentivize third parties to invent during the pendency of the patent, i.e., to design around the existing patent. In this way, both inventors are rewarded for their inventions in the short term, while the public benefits from the teaching of not one but two (or more) inventions in the longer term. Seen in this light, "design around" is an unabashedly positive notion, which contributes to a robust patent system.

So imbued is this Kat with the idea that "design around" is something to be encouraged that he never gave much thought to the possibility that there might be circumstances in which something akin to "design around" might be viewed in less positive IP terms. But this Kat's complacency was jarred earlier this week in connection with a talk that he gave about the U.S. case, WNET v Aereo. On 1 April 2013, the Second Circuit Court of Appeals affirmed a decision by the lower court to deny a request for a preliminary injunction against Aereo for the operation of its distinctive content retransmission system, here. Under this system, a farm of coin-sized antennae was set up in Brooklyn to enable Aereo to download broadcast content for retransmission, without permission of the content owner. For each user, there is a separate and distinct antenna that enables the user either to view content virtually simultaneously with transmission or to enable viewing at a later time.

The majority reasoned that a retransmission broadcast to individual users under such circumstances is not a public performance under the U.S. Copyright Act, as construed by the court in 2008 in the so-called Cablevision decision here. As such, it was not captured by the retransmission provisions of the Act. This result was vigorously objected to by the respected Judge Denny Chin. In his dissent, he called Aero’s “technology platform” a “sham,” describing it as a “Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act and to take advantage of a perceived loophole in the law.” In short, as one of the members of the audience then noted, what Aereo had done was to “design around” the Copyright Act. “What an intriguing idea”, I thought to myself—“One can “design around” a law as well around a patent. Here, however, at least in the view of Judge Chinn, “designing around” the Copyright Act was an unashamedly undesirable activity.

What exactly accounts for this stark difference in approach? One might be tempted to say that “designing around” a patent is by its very nature a productive activity, while “designing around” a law is not. But that seems too facile. After all, not every successful effort to design around an existing patent yields an invention of any practical value (indeed, the same can be said of patents in general). At most, only a relative handful of issued patents are ultimately of any material significance. When one adds to that the uncertainty in the scope of claims and the relatively limited amount of time that an examiner can actually devote to any given patent application, one is tempted to argue that “designing around” has the potential to add to the already overabundance of problematic patents, depending upon the circumstances..

As for “designing around” a law, this Kat feels a bit uneasy at Judge Chin’s characterization that the Aereo system is merely a “sham.” A “sham” is defined by as “a confidence game or other fraudulent scheme, especially for making a quick profit; swindle.” Whatever one thinks about Aereo’s retransmission system, calling it a “sham” seems both a bit over the top and inapt. Moreover, at least in principle, if Aereo’s system is viewed as” unfairly” exploiting the current provisions of the Copyright Act with respect to retransmission, there always exists the opportunity to correct this "error" by amending the copyright legislation. (As well, there have been suggestions that the case may be ripe for an appeal to the Supreme Court.) Indeed, there is much less flexibility with respect to an invention that has successfully designed around an existing patent, whether for good or for bad. Unless the patent is not renewed or is cancelled, it will be around for a 20-year period. The broader point is that, when we use extra-statutory terminology to communicate notions about intellectual property, we all too infrequently think about the full panoply of meanings replete by the use of such term. This richness of possibilities both enriches our IP vocabulary, but at the same time it can also undermine the precision of language to which we presumably aspire.

More on Rube Goldberg here.

Disclosure of emails: property in information -- or agency?

Back in November of last year, guest Kat Kate Manning posted "Emails are not property ... it's not practical!", here, in which she gave a full and instructive analysis of the decision of Mr Justice Edwards-Stuart in Fairstar Heavy Transport N V v Adkins and another (here) that Fairstar did not have a proprietary right in emails sent to it but effectively hijacked by Adkins so that Fairstar could not gain access to them in order to read them. On this basis, Adkins, who had been acting as Fairstar's CEO in the course of a corporate takeover, could not be ordered to disclose those emails to Fairstar.

Last week the Court of Appeal, at [2013] EWCA Civ 886), took quite a different view. Lords Justices Mummery and Patten and Lady Justice Black held that, given that this was a dispute between a claimant and its former agent, the trial judge was wrong to look at whether there was any proprietary right in the content of emails. Instead, the claim actually turned on the nature of the agency relationship between the parties. Under an agency relationship, a principal was entitled to require production by the agent of documents relating to its affairs. Materials held and stored on a computer, which could be displayed in readable form on a screen or printed out on paper, were in principle covered by the same rules as those which applied to paper documents. Adkins was therefore ordered to disclose the emails to Fairstar on the basis of their former relationship as agent and principal.

Says the IPKat, what is of particular interest here is what Lord Justice Mummery, delivering judgment on behalf of the court, said at paragraphs 46 to 56:
"In my view, it is unfortunate that the agreed wording of the preliminary issue introduced an unnecessary complication into the dispute. The reference to a "proprietary right" was a distraction from the centrality of the agency relationship and its legal incidents. ... The assertion of a right to inspect and copy the content of the emails on his computer relating to its business affairs arises from the legal incidents of an agency relationship that survive its termination. That question can be decided, as between those parties, without a jurisprudential debate about the legal characteristics of "property", or whether the content of the emails was "information" in which property existed in this case or could exist at all [It's not often that this Kat has had cause to express agreement with the words of Mummery LJ, but this is one such occasion. Mummery LJ then goes on to explain what he means].

Everybody knows that "property" differentiates between things that are mine and things that are not mine. The law lays down criteria for determining the boundary between, on the one hand, those rights that are only enforceable against particular persons and, on the other hand, those rights attaching to things that are capable of being vindicated against the whole world. The claim to property in intangible information presents obvious definitional difficulties, having regard to the criteria of certainty, exclusivity, control and assignability that normally characterise property rights and distinguish them from personal rights.

In my judgment, the court should decline to enter into a controversy of that kind when it is not necessary to do so in order to decide the case on its particular facts. It would be unwise, for example, for this court to endorse the proposition that there can never be property in information without knowing more about the nature of the information in dispute and the circumstances in which a property right was being asserted. Some kinds of information, such as non-patentable know-how, are more akin to property in their specificity and exclusivity than, say, personal information about private life ["Ooh", says Merpel, "is this not 'entering into a controversy of that kind when it is not necessary to do so"?].

The conclusion that I have reached on this appeal makes it unnecessary to explore the question whether information in the content of the emails is property owned by Fairstar, either as a matter of fact or law. The distinction drawn in the preliminary issue between an electronic communication and the content of it and the claim to a proprietary right in the content was not the real point at issue. It has led to some confusion in the arguments advanced and to error in the outcome. As explained below, the position is that emails and their content stored and held in the computer are, in my view, either documents or should be treated as documents, for the purposes of determining the scope of the legal incidents of the agency relationship that survive its termination.

In my judgment, the judge ought to have made an order for inspection of the emails on the computer. He was not prevented from doing so by his conclusion that there was no proprietary right in the content of the emails. The absence of a proprietary right would not affect the legal right of the principal to an inspection and copying remedy against a former agent in respect of the emails. It was not necessary to decide the property issue in order to make the order for inspection or copying. To ask in a case like this the questions such as "Is there property in an email?", or "Who owns the content of an email?" is not a helpful way of stating the real issue, which is not one of ownership of property claimed against the world. The issue is one of enforcement, as between the parties, of particular rights of access by a remedy of inspection and copying, which is based on rights and duties incidental to the relationship that existed between the parties at the relevant time.
... as for the authorities cited to the judge and in this court on whether there can be property in confidential information, or whether there is property in the content of a letter, as distinct from the paper on which it is written, they relate to a point that does not need to be decided. Quite apart from the existence or non-existence of property in content, Mr Adkins was under a duty, as a former agent of Fairstar, to allow Fairstar to inspect emails sent to or received by him and relating to its business. The termination of the agency did not terminate the duty binding on Mr Adkins as a result of the agency relationship".
Quite right, says the IPKat: philosophical positions taken by Court of Appeal judges (or indeed any others) on the nature of information as property should not be encouraged, particularly if they are likely to be taken as having some degree of precedental power.  Merpel says, how about a shot at an appeal to the Supreme Court? It would be a shame to let this entertaining litigation stop short of the summit ...

Another attempt to retrieve correspondence here (comes with a 'best avoided' warning)

Thursday, 25 July 2013

Thursday thingies

Time for a Nice Notification. The IPKat's friends at the World Intellectual Property Organization have made him very happy by issuing a media release, Nice Notification No. 132, which bears the happy tidings that the Government of New Zealand, on 16 July 2013, deposited its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as variously amended, improved, upgraded and generally refreshed. The instrument in question contained a rare and unusual declaration that goes like this:
"Consistent with the constitutional status of Tokelau and taking into account the commitment of the Government of New Zealand to the development of self government for Tokelau through an act of self determination under the Charter of the United Nations, this accession shall not extend to Tokelau unless and until a Declaration to this effect is lodged by the Government of New Zealand with the Depositary on the basis of appropriate consultation with that territory".
The Nice Agreement, as revised and amended, will enter into force, with respect to New Zealand, on 16 October 2013. Until then, the IPKat wonders, and indeed thereafter, how will the good folk of Tokelau be classifying their goods and services for the purpose of trade mark registration? Does anyone know?  Merpel adds: Tokelau has a population of just 1,411 -- only 100 more than the number of staff who work in WIPO's Geneva headquarters.  That's just over 31 people for each Nice Class.

Muggins demonstrates
the best way to get stuck
into a good Greek yoghurt
Around the blogs.
The jiplp weblog features IPKat blogger Jeremy's editorial, "Picking out the bad boys", here.  In the light of Leigh Smith's current intelligence note on the Greek Yoghurt/Greek Style Yoghurt dispute in Fage v Chobani (here), the same blog is holding a "What do the words 'Greek Yoghurt' mean to you?" sidebar poll, which you can check out here.  There's plenty going on in the 1709 Blog too: from Mira comes "Crime without a Remedy" -- a powerful piece on the artist's position when his artwork is set aflame. Estelle Derclaye also asks some questions concerning collective rights managements. Can you help her? This Kat certainly hopes so.  Class 46 reports that MARQUES is looking for a webmaster, an ideal post for someone who loves trade marks, understands websites and is already drawing a pension or looking for adventure.

It is no secret that the United Kingdom is hatching an Intellectual PropertyBill which might, in the fullness of time, all things being equal, become the Intellectual Property Act. The publication of this Bill has triggered an outcome which appears quite unrelated to its content, but never mind: it appears that the Office of the Parliamentary Counsel (OPC) is currently conducting a survey into the usefulness of explanatory notes [brief explanation: UK legislation is accompanied by explanatory notes which range from the helpful to whatever the opposite of helpful is. These notes are not legally binding and are not used in interpretation, but can be useful if they say things like "This Act transposes the XYZ Directive into UK law"].  The OPC welcomes views from stakeholders, who are invited to access the survey here.  Says Merpel, if the OPC really welcomes views from stakeholders, it wouldn't get the IPO Designs Review Team to send this out on a sunny afternoon in the middle of the holiday period and give just one short week for people to respond (the survey closes at the end of the month).

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