The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 28 July 2017

Brexit roundtable for brand owners in the financial services industry

Via Katfriend Darren Meale comes the news that, together with Royal Bank of Scotland’s IP Legal Counsel Mark Cruickshank, he is organising a roundtable on Brexit specifically focused on brand owners in the financial services industry.

Here's the relevant flyer:

Br*x*t and brands – would you like to join the Financial Services Roundtable?

With answers to questions such as “what is going on?” and “when it is going to happen?” hard to come by when it comes to Brexit, brand owners might want to start being more proactive with engaging with the government in the hope of understanding what their IP rights will look like once the UK leaves the EU.

To that end, Darren Meale (IP partner at Simmons & Simmons) and Royal Bank of Scotland’s IP Legal Counsel, Mark Cruickshank, are putting together a “Brexit and Brands Roundtable” for brand owners in the Financial Services industry. The group will comprise trade mark/intellectual property lawyers from a number of major banks and financial institutions. The role of the group will be to liaise with the UK authorities and the wider IP industry to look at trade mark and other IP issues raised by Brexit, which has the potential to significantly impact on the IP owned by those businesses. A first meeting of the group with representatives from the UK Intellectual Property Office is due to take place in September.

The Roundtable already features a number of big names but there is room for more members. If you are an IP lawyer at a financial institution and would like to join in, Darren would love to hear from you at To give the group focus, membership is currently limited to financial services brand owners, but brand owners from other industries keen to find out more can also drop Darren a line.

More on broccoli, tomatoes, and the patentability of a plant or animal obtained by means of an essentially biological process

Further to the IPKat blog post of July 26th ("EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes"), Kat friend Florica Rus considers issues raised as a result of these amendments .

As reported, broccoli and tomatoes returned to the patent spotlight as the Administrative Council of the European Patent Office (EPO) amended Rules 27 and 28 of the Implementing Regulation and concluded that products (animals or plants) obtained exclusively from essentially biological process are excluded from patentability. This decision applies to European patent applications filed on or after July 1, 2017, as well as to European patent applications and European patents pending at that time.

To refresh the memories of Kat readers, the decisions (Tomatoes II G 2/12 and Broccoli-II G 2/13) caused a great stir within the public, the breeding industry and EU institutions. In particular, the Tomato/Broccoli II decisions created a divergence between the interpretation of the European Patent Convention (EPC) and the Biotech Directive and it was in conflict with national patent laws (France, Germany, Italy and Netherlands), which precluded from patentability products produced by essentially biological processes.

Against this background, the European Commission (see the Interpretative Notice from November 2016) intervened and took a different view from that of the Enlarged Board of the EPO, concluding that products obtained by essentially biological processes should not receive patent protection. Consequently, the need for harmonization and legal certainty led the EPO to stay ex officio all the proceedings in which the decision depended entirely on the patentability of a plant or animal obtained by an essentially biological process. Following that, on June 29, 2017, the Administrative Council of the EPO amended Rules 27 and 28 of the Implementing Regulation. So, what now?

Amendment of the Rules is welcomed. Even as the impact of these recent developments continue to surface, here are some initial considerations:

1. All the stayed cases will be resumed and even granted patents could be subject to the new Rules, considering the subject-matter of EPO opposition or limitation proceedings or national revocation proceedings. In fact, since 1980, the EPO has granted 180 patents dealing with traditional breeding methods (Patente auf Planzen und Tiere, page 7).

2. The saga of Tomato/Broccoli II will continue to play out, as they are in conflict with these new developments. However, the EPC trumps the Rules when in conflict (Article 164 EPC) and therefore, the EBA is not bound by the Implementing Regulations.

3. As the new Rules are in line with the patent laws in France, Germany, Italy and Netherlands, a decision of the CJEU would probably follow the same interpretation of the process exclusion under article 53 (b) EPC and 4 (1)(b) Biotech Directive.

4. It has been clarified which types of biological material can obtain patent protection as lying outside the exclusion under article 53 (b) EPC (Administrative Council). However, to what extent can patents on native traits be seen as non-technical has yet to be clarified. Considering the degree of innovation in the plant biosciences, there is uncertainty on whether or not to exclude generally from patentability plants with native traits.

5. It remains questionable if the EPO really found the answer to the continuously innovating breeding system and whether it was a good option to avoid defining in a clear-cut fashion between traditional breeding methods (crossing and selection) and breeding methods that involve technical steps in the crossing and selection processes. In other words, it is still open for discussion whether it is the right approach to treat products obtained by a process that involves technical steps even in the crossing and selection processes (See Tomato I/Broccoli I decisions) in the same way as products obtained by purely essentially biological processes (“entirely natural phenomena” Rule 23b (5) EPC), the latter not being patentable.

6. The fear of traditional breeding falling under patentability will still persist. Modern breeding is based on traditional breeding
methods; it is considered predictable and therefore technical. Having this in mind, one can ask whether an identical result cannot be reached upon a repeated breeding process. Is there any difference if this process occurs naturally or is directed by a human? Consequently, there is room to develop best practices for patent examinations and patent drafting.

7. Apparently, small breeders have more freedom to operate without the fear of having traditional breeding put under “patent siege” from big companies.

8. GMOs face in Europe strong and constant opposition. Can it be that after these developments, GMOs will gain more popularity?

In the end, it looks like the current legal changes offer a sensible solution but arguably not a final answer. The implications of Tomato/Broccoli II are far from being totally revealed and breeders will continue to explore the boundaries of Article 53 (b) EPC.

Picture at the middle left by David Monniaux licensed under GNU Free Documentation License

Picture at the lower right by Softeis licensed under GNU Free Documentation License

Around the IP blogs

MARQUES is participating in the China Trademark Festival 2017, where we are conducting a Sub-Forum. 

The China Trademark Festival 2017 is being held in the Guilin International Conference and Exhibition Center, 22 Lijiang Road, Guilin, Guangxi. The Sub-Forum itself takes place on Sunday 3 September and it lasts all morning (9 am to 12.30 pm, to be precise). The title is "Effective trade mark and brand protection and enforcement strategies from national to regional and going global: brand owners’ needs v legal obligations and available procedural means". 

To learn more about the China Trademark Association and the Festival itself, do please visit the China Trademark Association’s official website here.

The China Trademark Association has generously agreed to apply the special registration fee of USD 650 to all MARQUES members who wish to register for the Festival. The registration form can be found hereFor those interested in attending the sub-forum, please contact Alessandra Romeo directly on

Deep in the Guilin, Guangxi, China

“An extra-terrestrial alien visiting Earth in 2007 and returning, now, one decade later, might, at first glance, notice little difference in smartphones between times.” – Recent new technology deployments with Gigabit LTE at Telstra in Australia, Sprint in the US and EE in the UK highlight how much cellular communications technologies have improved since the introduction of mobile data services with circuit-switched and then packet-switched offerings from around 20 years ago." On the IP finance blog, Keith Mallinson congratulates the 10-year anniversary of the iPhone for its significant successes on innovation and IP protection. 

In the blog Art & Artifice, a very readable guest post is brought to readers from Sonia K. Katyal and Joan Kee, who recently co-wrote the article "How Art and Law can work together beyond the marketplace" on the role of art law in engaging with the work of minorities. 

“Beyoncé and Jay-Z are continuing the trend of celebrities looking to legally protect their children’s names in order to either capitalize on them or prevent others from doing so. The music industry power couple registered their daughter’s name Blue Ivy Carter as a European Union trademark back in 2012. They were unable to secure a registration in the U.S., where applicants must prove that they are actually using the mark on goods or services before the U.S. Patent and Trademark Office will grant a registration.” – Check out the analysis on the Fashion Law blog.

“On Monday, news washed up that this "famous" sari of the Nobel laureate nun, who died in 1997, has been trademarked to prevent "unfair" use by people for commercial purposes. India's government quietly recognised the sari as the intellectual property of the Missionaries of Charity in September last year, when the nun was declared a saint by the Vatican” – see the India correspondent Soutik Biswas’s report on BBC. 

Extending reading: IPKat Eleonora formerly provided a commentary here on “Can a colour be considered akin to a shape, so that a sign that consists exclusively of a colour ‘which gives substantial value to the goods’ cannot be registered as a trade mark?”

This month Colombia joined the network of the Global Patent Prosecution Highway (GPPH). This network has 22 members from Europe, North America, Asia, Oceania, and now Latin America. From that side of the pond United States and Canada are members [full list of members can be found here]. Patent applicants who have obtained protection in Colombia may request that the same application be reviewed in any of the other members that are part of the GPPH. This global pilot was launched back in January 2014 allowing ‘patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot’.

Photo courtesy of Trey Ratcliff.

Thursday, 27 July 2017

CREATe Summer Summit 2017: Open Science, Open Culture & the Global South (and everything between)

Former Intern Kat Eleanor Wilson attended the CREATe's inaugural seminar on the issue of openness in science, culture, and everything between. The relevancy of the topics considered warrant publishing Eleanor's summary of the event.

IPKat readers may be familiar with the CREATe centre based in the University of Glasgow. To use its full title, the Research Councils UK Centre for Copyright and New Business Models in the Creative Economy, it has explored numerous research areas within this impressive remit. I was lucky enough to attend CREATe’s inaugural Summer Summit from 26 – 30 June, which was jointly organised with National Law University (NLU) Delhi by Dr Sukhpreet Singh (CREATe, University of Glasgow). The theme of the summit was ‘Open Science, Open Culture & the Global South’, and openness was discussed from every possible interpretation – from open access to open exceptions, from open policy making to open education. This post contains just some edited highlights of an intensive week.

The week kicked off with a keynote from Dr Peter Jaszi (American University Washington, DC), who argued that what is sometimes seen as “gaps” in copyright law are part of its fabric and design. Apart from describing copyright as a luxurious piece of lace, he raised some serious concerns about the constrictiveness of closed-list exceptions against the impetus for openness. It quickly became clear that, while it means different things to different people, “openness” is much more than a buzzword. Openness is, it seems, a very broad church which includes the concept of “free as in beer” and “free as in speech”, and embraces openness to access, remix, re-use, and often more.

This concept was developed in the conversations which took place around open education and science. It was clear that openly available education was viewed by Professor G. S. Bajpai (NLU Delhi) as a global mandate, and not an optional extra for universities, particularly when state funding is involved. It was interesting to then contrast the E-Pathshala ["Pathshala" is a Sanskrit term for education] with the Massive Open Online Courses offered by the University of Glasgow.

On the theme of open science, Dr Arul Scaria (CIPPC) highlighted the risks of fraud and harm when scientific research is not transparent, which is also evinced by the woeful statistics for private scientific journals: 90% of papers are never cited and as many as 50% are only ever read by the authors and editors. In the light of this, the preference of scientific authors for the “impact factor” over open access appears to be ripe for a review.

This view was consolidated by Prof Roberto Caso (University of Trento) who acerbically criticises the scientific community’s apparent obsession with metrics and commodification at the expense of open access and pedagogy. All of this was fleshed out by policy-oriented presentations from Claire Fraser from HEFCE and Chris Banks FRSA of Imperial College, both of whom explained in detail the current practicalities and challenges of supporting open access to research outputs and data.

Continuing the discussion on open science enabling a more open culture, Dr Thomas Margoni (CREATe, University of Glasgow) queried why the InfoSoc Directive should mandate a “high level of protection”, rather than a “balanced” or “proportionate” one, and whether one-size-fits all copyright protection remains viable. Particular obstacles to academic research across all fields are the limitations of the newish non-commercial text and data mining copyright exception, since it potentially conflicts with the licenses under which academic works are published.

To remedy the situation, CREATe’s Dr Giulia Dore demonstrated a new tool supported by Horizon 2020 funding, namely OpenMiNTeD, which is designed to support researchers intending to undertake computational analysis of large volumes of material by text and data mining, and is developing a novel “traffic light” system, which will reveal the compatibility of text and data mining with various forms of licence. This was, of course, made possible by employing text and data mining of license terms themselves(!).

This was just one of various new web tools showcased last week, all of which work to further increase openness and indeed are generally available (at least as Creative Commons). There was the Copyright Evidence Wiki, a database for empirical copyright research; Online Media Behavioural Analytics (OMeBA) survey data; and – my personal favourite, and well worth a look – the digitisation of Edwin Morgan’s scrapbooks.

This last resource was presented by Jesus Rodiguez Perez and Kerry Patterson (both CREATe, University of Glasgow) and demonstrates the potentially prohibitive costs and effort required to diligently search for orphan works, notwithstanding the progress made at the EU and UK levels in orphan works licensing and use by institutions, which were thoroughly explained by Margaret Haig from the UKIPO and Victoria Stobo, an archivist at the University of Glasgow. As a practical exercise, we participants attempted our own diligent searches for authors or owners of orphan works registered at the EUIPO and – so it seemed – came close to a breakthrough, but ultimately had to concede.

For my part, it took a couple of days to get comfortable with the different conceptions of openness without trying to reconcile them into a homogenous conceptual objective. As Dr Martin Kretschmer has mischievously noted, an optimal framework within one country is to adopt a maximally open IP framework while its international neighbours maintain a closed, narrow approach to exceptions, access and use. Evidently, this is not a universal solution to achieving openness internationally.

Two contrasting studies of openness operating in very different contexts were presented. First was on the crowdfunding platform Kickstarter, a platform which seems to reward “remix” culture according to a study by Dr Kristopher Erickson (CREATe, University of Glasgow). The second considered indigenous cultures, where Dr. Saskia Vermeylen (University of Strathclyde) advocates a more respectful approach to shared property, which incorporates fiduciary concepts of stewardship rather than importing closed-off, westernised property principles.

To draw together the strands of the summit, the benefits of “open” for stakeholders from Scottish Power to the British Library are emerging. There are practical steps that academics and businesses alike can take already, although the legal framework could be tweaked to nudge openness onto the agenda. What may be harder to shift is the received wisdom, even intuition, that high protection and secrecy necessarily lead to advantages or profits. Another potential pitfall could be conflict resulting from different expectations of a standard of “openness”, although attempting to coin a universal definition would feel somewhat short-sighted and restrictive.

Photo on lower left by Andrew Dunn and is licensed under the Creative Commons Attribution-Share Alike 2.0 Genesis license

BREAKING: BGH asks CJEU what a 'quotation' is: only unaltered reproductions or also something else?

Miami to Ibiza?
Better: Karlsruhe ...
Via Katfriend Mathias Schindler (Office of MEP Julia Reda) comes the news that today Germany's Federal Court of Justice (Bundesgerichtshof - BGH) has referred a new copyright case to the Court of Justice of the European Union: I ZR 228/15 - Reformistischer Aufbruch.

This is the third copyright reference from the BGH in less than two months: last month, in fact, this court referred the (long-running) Metall auf Metall case, and the Afghanistan Papiere case [both reported here].

According to the relevant press release (and its Google Translate translation), similarly to the two other references mentioned above, also this new case seeks guidance on – among other things – the interplay between copyright protection and the protection of third-party rights and freedoms (including freedom of the press), as well as the proper interpretation of relevant exceptions in the InfoSoc Directive – in this case, news reporting and quotation within, respectively, Article 5(3)(c) and (d) of the InfoSoc Directive.

This new reference has been made in the context of proceedings brought by a German politician who, in 1988, authored a book about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

... to Luxembourg
The publisher also released a press report on its own portal to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The author submitted that all this amounted to copyright infringement, and brought proceedings against the publisher, being successful at both first instance and on appeal.

The case eventually reached the BGH, which has now decided to stay the proceedings and make a reference to the CJEU.

Although the press release does not contain the exact questions referred, it appears that the core of the reference, which – as also noted by the BGH – is similar to the Afghanistan Papiere case – concerns the interpretation of the notions of ‘news reporting’ and ‘quotation’ within Article 5(3) of the InfoSoc Directive.

With particular regard to ‘quotation’, the core issue seems to be – by reading the press release – whether this exception requires the quotation to be an unaltered reproduction of part of the original, or also allows the reproduction not to be identical.

This question is a very intriguing one, and the answer may be anything but straightforward. There is no need to say that the resulting outcome will have a significant impact on the scope of the EU quotation exception and - with it - national quotation exceptions.

AG Wahl says that, at certain conditions, suppliers of luxury goods may prohibit retailers from selling on third-party online platforms

Yesterday Advocate General (AG) Wahl issued his Opinion in Coty Germany GmbH v Parfümerie Akzente GmbH, C230/16 [the Opinion has already received a thorough and interesting commentary by leading competition law blog Chillin’Competition].

This is a reference for a preliminary ruling from the Higher Regional Court, Frankfurt am Main (Germany), seeking guidance from the Court of Justice of the European Union (CJEU) on how to interpret relevation competition law provisions [Article 101(1) TFEU and of Article 4(b) and (c) of Regulation (EU) No 330/2010] in the context of selective distribution agreements.

This case is linked to, on the one hand, the increasing popularity of electronic marketplaces over which producers have no influence [eg Amazon, eBay] and, on the other hand, the question whether a supplier may prohibit authorized resellers from making use of non-authorized third undertakings over fear that the relevant products would otherwise lose or risk losing their ‘luxury’ image.


As readers may imagine, the latter is indeed the core issue in the background national proceedings, brought by Coty Germany [an undertaking that supplies luxury goods and is certainly not new to having its cases referred to the CJEU: eg herehere, and here] against one of its authorized distributors (Parfümerie Akzente), which has been selling Coty’s products for years both at (Coty-approved) brick-and-mortar locations and online (through When Coty sought to extend the control that it has over physical retail to the online sphere, Parfümerie Akzente refused.

As a result, litigation ensued.

In 2014 the first instance court sided with Parfümerie Akzente, and held that the objective of preserving a prestige brand image does not justify the introduction of a selective distribution system which by definition restricts competition.

The decision was appealed to the Higher Regional Court, which was unsure whether the one at first instance was a correct application of CJEU case law, notably the 2011 judgment in Pierre Fabre Dermo-Cosmétique. The court thus decided to stay the proceedings and refer the case to the CJEU.

AG Wahl
The AG Opinion

AG Wahl noted at the outset that the decision in Pierre Fabre Dermo-Cosmétique has been subject to divergent interpretations by national competition authorities and courts: this case is therefore an opportunity for the CJEU to clarify the meaning and scope of its earlier jurisprudence.

According to the AG, the interpretation given at first instance in the background national proceedings is not the correct one: the seller of luxury products is not prevented at the outset from requiring its authorized retailers to sell products at certain conditions and locations – whether offline (brick-and-mortar shops) or online.

This is because price competition is not the only form of effective competition [para 33], and – indeed – “it is on the basis of that premise that selective distribution systems [based on qualitative criteria] should be seen” [para 34].

The CJEU has recognized the legality of selective distribution systems based on qualitative yet objective criteria (determined uniformly and applied in a non-discriminatory fashion – including preserving a certain product image) since the seminal decision in Metro.

The AG also recalled that it has been gradually accepted that selective distribution systems of this kind may even have positive effects on competition: by favouring and protecting the development of the brand image,

“[t]hey constitute a factor that stimulates competition between suppliers of branded goods, namely inter-brand competition, in that they allow manufacturers to organise efficiently the distribution of their goods and satisfy consumers.” [para 42; on intra-brand competition, see para 44].


“Selective distribution systems are, especially for goods with distinctive qualities, a vector for market penetration. Brands, and in particular luxury brands, derive their added value from a stable consumer perception of their high quality and their exclusivity in their presentation and their marketing. However, that stability cannot be guaranteed when it is not the same undertaking that distributes the goods. The rationale of selective distribution systems is that they allow the distribution of certain goods to be extended, in particular to areas geographically remote from the areas in which they are produced, while maintaining that stability by the selection of undertakings authorised to distribute the contract goods.” [para 43]

Eau de Toilette ... for Kats
While in principle selective distribution agreements are not contrary to Article 101 TFEU, there are some conditions [the Metro criteria] that sellers must respect [paras 52 ,65-66]:

1.    It must be established that the properties of the product necessitate a selective distribution system, in the sense that such a system constitutes a legitimate requirement, having regard to the nature of the products concerned, and in particular their high quality or highly technical nature, in order to preserve their quality and to ensure that they are correctly used.
2.    Resellers must be chosen on the basis of objective criteria of a qualitative nature which are determined uniformly for all potential resellers and applied in a non-discriminatory manner.
3.    The criteria defined must not go beyond what is necessary.

The AG then focused on the particular case of luxury goods, and recalled [para 72] that:

“In the context of trade mark law, the Court [notably in Dior and Coty Prestige] has emphasised that luxury and prestige goods are defined not only by reference to their material characteristics, but also on the basis of the specific perception which consumers have of them, and more particularly of the ‘aura of luxury’ which they enjoy with consumers. As prestige goods are high-end goods, the sensation of luxury emanating from them is essential in that it enables consumers to distinguish them from similar goods. Therefore, an impairment of that aura of luxury is likely to affect the actual quality of those goods. In that regard, the Court has already held that the characteristics and conditions of a selective distribution system can, in themselves, preserve the quality and ensure the proper use of such goods.” 


The Opinion of AG Wahl appears both correct and sensible, including from an IP perspective [but see here for a critical take].

Readers will remember in particular that in Dior the CJEU linked the grant of a licence in the context of a distribution agreement concerning luxury products (in that case, "corsetry goods") to the exercise of Dior’s trade mark rights, notably the right to put relevant goods into circulation for the first time. In Coty Prestige the CJEU noted that the exclusive nature of trade mark rights means that any unauthorized use of a trade mark may amount to an infringement [see paras 89-90 of the Opinion].

Let’s see if now the CJEU also agrees with the AG. Stay tuned!

Wednesday, 26 July 2017

Around the IP Blogs

This Kat has been surfing about the IP blogosphere and has returned with some very interesting articles for your digestion and rumination!

Snooping for some perspectives on copyright, The 1709 Blog reported on US litigation about pre-1972 (year in which recordings started to be subject to federal copyright) copyright issues of the 60s band “The Turtles”. In The CopyKat. Friday the 13th without Jason Voorhees, sounds like a nightmare!, the actions of the association Alliance for Creativity and Entertainment and the deal with YouTube of the American Society of Composers, Authors and Publishers in this specific field of copyright law are also discussed.

In Canadian news, after years of consistent Supreme Court decisions about fair dealing in schools and universities, Federal Court Judge Hands Access Copyright Fair Dealing Victory: Micheal Geist reports on the reasoning of the court and the repercussions of the judgement.

On to trade marks, in Mexico the Tequila dispute is burning up! Are you Desperados for Tequila? The famous beer brand Desperados, which uses the appellation of origin “Tequila”, might be facing litigation as the tequila industry frowns upon the situation and, more importantly, Tequila has been granted a Certification Mark in the US. Florelia Vallejo Trujillo of IP tango reports on the news.

Maybe I could take the bike out today...
nah, window watching it is
Up for a bike ride in Christiania, Copenhagen? Well you will find yourself in the midst of an in-fight between CHRISTIANIA BIKES and CHRISTIANIA CYKLER (which happens to be the Danish translation of the former). For the Kluwer Trademark Blog, Lasse Søndergaard Christensen and Louise Thorning Ahle.

In The link between passing-off and provenance, Darren Margo and Natalie Hill of Afro-IP, talk about the Supreme Court of Appeal judgment Herbal Zone v Infitech Technologies. The South African judgement “covers that situation where an ex distributor turns competitor, and what is then required to stop that business selling products bearing the same name. It is also a reminder on the importance of registering a trade mark”.

Turning to designs and patents accordingly, BMW AG v Acacia Srl reported by MARQUES, involved the latter company manufacturing and selling on-line replicas of BMW and other car brands' wheels. Acacia sought the Italian Courts for a declaration of non-infringement. The case centered on whether the Italian Court have jurisdiction and, ultimately, the CJEU confirms lex specialis status of jurisdiction under the Design Regulation.

The second case, Intermarine v. CMC Marine, dealt with the request for the declaration of invalidity of an utility model by Intermarine. CMC counter argued that not only the model was valid but that could even be converted into a patent. The Court of Appeal of Turin (Italy) sided with Intermarine as explained by Luca Giove in EPLAW.

Anthony McCain of PatentlyO proposes some Bits and Bytes to nibble on as wells as The Copycat of The1709 Blog!

And lastly, the Journal of Intellectual Property Law and Practice proposes an interesting editorial on Control of Content in Social Media where the author Gill Grassie asks whether  the legislator could in this context learn something from the IP enforcement experience.

Image credits: Cecilia Sbrolli

Book Review: Common Innovation

An emerging theme in economics of innovation is the recognition that our standard definition of innovation is restrictive and generally ignores innovation occurring outside the boundaries of businesses. Author G.M. Peter Swann seeks to further these arguments, by delving into common innovation, which he defines as "innovation carried out by 'the common man and woman' for their own benefit, in his book "Common Innovation: How We Create the Wealth of Nations."

Innovation is part of the foundations on which IP policy is built, and improving our understanding of innovation should help IP achieve its incentive-to-innovate goals. This is also the theme of another book I recently reviewed, the Cambridge University Press book on innovation in the informal economy. Innovation has classically been framed as the Schumpeterian "creative destruction," in which innovation (creation) disrupts (destroys) the status quo. Swann puts common innovation in perspective,
If [business innovation] can be described as Schumpeter's 'perennial gale of creative destruction,' [common innovation] is usually much more like a 'gentle and benign breeze.' ... some business innovations have substantial 'destructive' power because the innovator accounts for the beneftis to his business, but does not account for the damage done to other interests. ... [in common innovation], such destructive power is unusual. The interests of the innovator and the user are close, and the innovator is unlikely to pursue projects that are against the interests of the user.
A case study chapter examines common innovation and the socio-economic environment. It discusses a oft-overlooked idea in economics - social innovation.  One of the case studies which peaked my interest was the provision of pro-bono legal services as a social innovation. Swann notes pro bono work is done for the public good and has risen in prominence since cuts to Legal Aid.  However, Swann describes a chicken game (brinkmanship) between government and the legal profession, where the government argues Legal Aid savings are achievable with pro bono support, and the profession argues it can't - and yet the cuts proceed, leading to a socially inefficient outcome.

An uncommon cat,
Il gatto Briciola by Peter Forster
The book is structured with the first part detailing the theoretical concepts of innovation, followed by Parts II and III which provide a series of case studies on both types of innovation, and concluding with Part IV which considers the implications and future of common innovation. I found the case study chapters interesting (they also give an excellent overview of interesting economic theories such as Parkinson's Law and Veblen consumption), but they at times seem tangential to the core theme of the book.

Having recently got into a number of debates in my personal life (a professional hazard) about the impact of innovation and technology on workers and consumers, this is the kind of book which would equip me with more things to shout (an excellent debating tactic.) The back cover states that the book, "will be of great interest to scholars and students seeking a more expansive and insightful understandings of the economics of innovation and wealth." That sounds about right, although I would add that some basic understanding of economics would aid the reader.

Swann, G. M. P. Common Innovation: How We Create the Wealth of Nations. 2014, published by Edward Elgar, ISBN: 978 1 84720 050 1, is available here for £72 hardback or £20 paperback. Rupture factor: Low, a comfortable 260 pages.

EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes

The IPKat faces down Broccoli 
At the end of June the EPO published a notice (see here) stating from 1 July 2017 plants and animals exclusively obtained by means of an essentially biological process will no longer be patentable.  With thanks to Gemma Barrett (Bristows) who explains what this means:  
"Many readers will be aware that the EPO's Notice represents a U-turn for the EPO following the decisions of the Enlarged Board of Appeal (EBA) in 2015 in the Tomato II and Broccoli II cases (G2/12 and G2/13). Here the EBA conducted a lengthy and in-depth legal analysis leading to the conclusion that a narrow interpretation of Art 53(b) EPC was appropriate and as a result plants and animals derived from essentially biological processes were in principle patentable, even if they were inevitably derived from such processes.

The law seemed settled until the European Parliament asked the EU Commission to consider various issues concerning the Biotech Directive (Directive 98/44/EC). The exclusion to patentability in the Biotech Directive is framed much like that in Article 53(b) EPC i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission reviewed the context and provisions of the Biotech Directive and published a notice on 3 November 2016 (Notice 2016/C 411/03) concluding that the European Union legislators’ intention when adopting the Biotech Directive was to exclude such products from patentability. 
In response to the Commission Notice in November last year the EPO stayed all proceedings in relevant examination and opposition cases ex officio. This remained the situation until the EPO notice published at the end of last month.
The Commission’s Notice states that it is intended only as guidance and, in any event, the EPO is not bound by the views of the Commission nor any decision of the Court of Justice of the European Union (CJEU) on interpretation of these provisions. So why the change in position by the EPO? The EPO notice states that the decision has been taken by the Administrative Council to safeguard uniformity in harmonised European patent law. It seems the EPO wanted to avoid future divergent decisions on this issue around Europe for example between EU member states and between these member states and the EPO. In addition, the Biotech Directive itself is relevant to the EPO when considering patentability. The EPC Implementing Regulations were amended to include its main provisions and it is used as a supplementary means of interpretation (see Rule 26(1) EPC). In these circumstances the possibility of legal disharmony seemed inevitable.

Following the EPO notice the Administrative Council has amended Rules 27 and 28 of the Implementing Regulations to the EPC and these changes came into force on 1 July and apply to European patent applications filed on or after this date, as well as European patent applications pending at that time. The key provision in Rule 28(2) now reads:
“(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”
This may at first sight appear to be the end of the saga but is it? The Commission Notice is clear that it is a guideline document only, merely to assist in the application of the Biotech Directive, and only the CJEU is competent to rule on the interpretation of EU law. Hence there could still be a reference to the CJEU in the future."

Copyright protection of minimalist furniture design

Cross Frame Chair (1952)
In a recent decision, the Swiss Federal Supreme Court had the opportunity to clarify the requirements for the "individual character" of (super) minimalist furniture design.

The Swiss artist and industrial designer Max Bill (1908-1994) designed among others in 1952 the "Kreuzzargenstuhl" (cross frame chair) and in 1955/1964 a bar stool (see pictures). These were produced for decades by the furniture manufacturer Horgenglarus.

After Max Bill's death in 1994, his copyrights in his works were passed on to the Bill Foundation, which entered into a license agreement with Horgenglarus. In 2001, the Bill Foundation terminated the license. Horgenglarus kept manufacturing and selling the cross frame chair and bar stool designed by Max Bill, arguing that they did not enjoy copyright protection under Swiss law because they did not have the necessary individual character to be considered "works" in the sense of copyright law.

Bar Stool (1955/1964)
The Bill Foundation sued for copyright infringement before the Commercial Court of St. Gallen and prevailed regarding the cross frame chair, but lost on the bar stool. The Commercial Court held that all elements of the bar stool were known at the time of its creation, that it did not create or significantly influence a style of furniture design (as the Supreme Court's case law seemed to require for copyright protection of furniture designs) and if in doubt, copyright protection for works of applied art should be denied.

On appeal by the Bill Foundation, the Federal Supreme Court reversed the decision regarding the bar stool. It restated that the degree of individuality (originality)  required for a work to have individual character depended on the degree of freedom the category of works permitted. If the degree of freedom was limited, even minor deviations from known designs could convey individual character. On the other hand, if the design was entirely determined by technical considerations, there was no room for individual character. For chairs and stools, the degree of freedom was quite large, certainly their form was not determined exclusively by technical considerations.

The lower court had erroneously applied a "mosaic" approach to the assessment of individual character. It was irrelevant that all the elements of Max Bill's stool - the round seat, the three legs, the angle of the legs - were known in the prior art (see picture). Relevant was the overall impression of the design. The individual elements had never been combined in the way Max Bill combined them. The work was unique.

The design was also not determined exclusively by technical considerations. While each element served a technical purpose, the same purpose could be served by other forms (e.g., a square instead of  a round seat).

Prior Art for the Bar Stool
The Supreme Court then "clarified" (overruled, really) its earlier statements that a furniture design needed to start or substantially influence a new style in order to enjoy copyright protection. This was not absolutely necessary as long as the design in question was more than a mere work of craftsmanship or industry and showed a degree of individual artistic design.

While the Supreme Court left open the question whether for works of applied art the bar for individual character should be set higher than for other works (because they could also be protected by registered designs), it appears pretty clear that the Supreme Court now applies the same (low) standard for individual character to works of applied art as to other works (see the BGH's "birthday train" decision).

While this decision concerns Swiss law, UK courts likely will soon have to grapple with the question when a furniture design is a "work of artistic craftsmanship" in the sense of the Copyright, Design and Patents Act 1988 after the repeal of section 52 CDPA.

Decision 4A_115/2017 of 12 July 2017.

Disclaimer: the firm I am working for represented the Bill Foundation in the proceedings against Horgenglarus.

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