I have been working on the UK Group's contribution to the question on liability for contributory infringement of IP rights Q204. Its an interesting subject in connection with patents but AIPPI's desire to broaden the remit of the association means the scope of the question is impossibly broad and a lot of valuable time has been wasted arguing whether there is such a thing in relation to design protection. It all depends how you interpret the question but in my view contributory infringement is - like the doctrine of equivalents - a concession to poor patent claim drafting. However it sometimes creates rights that could not otherwise exist - a point very recently made by Kitchin J in the Astron decision on the acceptability of software claims in January when he said:
"As can be seen, the applicants all exploit their inventions by selling computer programs stored on a computer readable medium or by Internet download and competitors can, of course, do the same. This presents the applicants with the problem that, without computer program claims, they can only protect their inventions by invoking the contributory infringement provisions of section 60(2)of the Patents Act. What is worse. those provisions give no protection against the production and sale of programs in the United Kingdom if they are intended for use abroad."
Hopefully there will be some interesting debate amongst delegates as to how the situation differs across Europe and the world.
I shall not be part of the official UK delegation. Solo practitioners are not in the clique.
Barbara Cookson and Tim Freeman will be staying at the Intercontinental Hotel in Berlin for the duration of the INTA meeting
Filemot will be exhibiting at the ITMA International Meeting at the Royal Garden Hotel Kensington in conjunction with TransGlobal Payment Solutions - the smart way to make foreign currency payments. See how using Marco and the PayFac® service makes payment management and control simple.
The 8:15am train from London to Cambridge on a Saturday morning is not the place you would immediately look to find the cream of the IP profession and me. We were off to a day long intensive conference organised by CIPIL on Trade Mark Dilution: putting an end to (all the) confusion. Proceedings were chaired by Lord Justice Jacob. The title was perhaps a bit optimistic as Lord Justice Jacob commented in closing that he still did not know how he was supposed to decide the cases. However our Professors in ties, Graham Dinwoodie from the US, Ansgar Ohly from Bayreuth in Germany and Martin Senftleben from the Free University of Amsterdam, ensured that we had a better understanding of the problems he will continue to face, particularly after the Easter break when the much commented on Esure/Direct Line conflict comes to the Court of Appeal.
We began with a survey of the current state of the law in the UK at OHIM, the US, Germany Benelux and France. Let's start with France. No harmonisation there. Emmanuel Baud from Latham & Watkins showed how the directive had been implemented differently from the rest of Europe. The "without due cause" condition simply isn't there but there has to be use in the course of trade by the alleged infringer so Greenpeace can enjoy their free speech in France, which is at least the same outcome in Germany. France, it seems, believe there is no reputation without a survey.
Graham Dinwoodie explained with speed and erudition the limited scope of
dilution in the US.
Whereas Europe accepts a reputation amongst the relevant
public, the US has the other alternative from Article 4(1) of the
WIPO Joint Recommendation and requires the mark to be
well-known to the public at large. In many ways this is a fairer standard.
However since parody and free speech are due cause, it takes a mean free-rider
to breach the law's high thresholds. Perhaps in the US that cute esure mouse
would be parody?
Filled with much to digest on the fundamental concepts of dilution before lunch and sensing a reluctance amongst those prepared to give personal opinions of a rolling back of scope of protection for trademark, the afternoon presentation by John Noble of the British Brands Group showed just how far the desires of brand owners and the protection judged fair and justified by both judges and professors had diverged. While comparative advertising is legal and design protection of trade dress is limited, it is only to be expected that supermarket brands will dress like the branded competition.
This was a brilliant seminar
The start of the New Year and the first year that Patent Attorneys have been obliged to record Continuing Professional Development Points meant a good attendance at this seminar. The subject for discussion was determining inventorship and entitlement as between employer and employee. There is really not a lot to say on this issue. The IDA v Southampton University case before the Court of Appeal clarified in 2006 that you have to look at what is patentable and discover who contributed that. Applying this to the facts can be awkward especially as the inventive contribution may not be clear to the attorney when he submits the first application. The man from GSK in the audience made a useful contribution on their procedure. Clearly patent applications for a range of molecules do present some interesting challenges and the need to be able to demonstrate that a proper enquiry has been made especially if mistakes can create problems in the USA that could result in loss of the entire patent. Interestingly the most recently published GSK applications for compounds demonstrate a staggering number of inventors, from which we might infer that the inventive contribution is not particularly well focussed at the moment.
Mark Elmslie - a local solicitor digressed about whether inventorship disputes should be handled by solicitors or patent agents. His case that we were incompetent was not helped by the removal by the House of Lords in the Yeda case in October 2007 of a requirement for the claimant to prove he was entitled under some "other rule of law". In practice Jacob J was probably right in the IDA case when he made the point that "This sort of dispute is particularly apt for early mediation" or please don't bother the UK-IPO or the court go sort it out yourselves.
Dr Alan Bates gave us a good scare story suggesting that if we got the inventorship wrong the US priority claim would fail. This happened in the August 2007 US Appeal case Boston Scientific v Medtronic which insists on a “nexus…between the inventor and the foreign applicant at the time the foreign application was filed.” As you can see from the acrimonious discussion on the Patently-O blog this is not a pretty precedent and the facts were far from normal.
Following the seminar Mike Knight explained the work he had done helping prepare ITMA and CIPA for their new regulatory role. Since the Institutions maintain their separate identities it is clear that people such as myself who advise in both areas will need to be regulated four times - once as a registered trade mark agent, once as a patent attorney and because I am incorporated once again for the entity Filemot as each of these. Since the only privilege for non-litigators (Filemot does have litigation rights in both fields) is the right to a title and to prepare deeds of assignment, we can expect most practitioners to exit the legal profession smartly.
Unlike the European Patent Office which does require representatives to be on the register, the UK IPO has no constraints on who can represent patent and trademark applicants. Amazingly I am told that the Ministry of Justice thinks it can find parliamentary time to make use of the title trademark attorney by an unregistered person a criminal offence despite the fact that anyone can offer that legal service without restraint. I find this amazing. Nevertheless I suppose it is consistent with the announcement that the for a mere Ł300 trademark applicants can have their applications fast-tracked - a service which will maybe cut a few days off the time to registration unless the office deliberately slows the normal track to make more profit.
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17 August 2008