New Patent County Court Rules

At the beginning of this month CPR Part 45 and 63 and the corresponding practice directions were amended to limit the costs that can normally be awarded in claims before the Patents County Court. In an article on my IP/IT Update blog on Blogger. I have analysed those changes and considered the effect on small and medium enterprises in the UK.

I tried to publish the article on this site too but the WordPress template make it impossible.   Since January I have been publishing my update articles on the law on this site.  Blogger and Google sites have improved tremendously in the two years that I have been using them and I intend to revert to them for all future posts on the substantive law.  More

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Circ & Variete Globus Bucureşti v Uniunea Compozitorilor şi Muzicologilor din România – Asociaţia pentru Drepturi de Autor – U.C.M.R. – A.D.A.

I am on the IPO’s mailing list for news of preliminary references to the Court of Justice of the European Union (“CJEU”). I tend not to mention them until they are reported but every so often a particular case catches my eye.

One such case is C283/10 Circ & Variete Globus Bucureşti v Uniunea Compozitorilor şi Muzicologilor din România – Asociaţia pentru Drepturi de Autor – U.C.M.R. – A.D.A. which was referred by the High Court of Cassation and Justice of Romania. According to the IPO the case concerns communication of musical works to the public and collective management.

In particular, it concerns the interpretation of art. 3 (1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001:

“Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.”

That is the so called communication and making available right which is transposed into English law by s.20 of the Copyright, Designs and Patents Act 1988. The reason it interests me is that the meaning and effect of s.20 was one of the issues in Twentieth Century Fox Film Corporation and Others v Newzbin Ltd [2010] EWHC 608 (Ch) (29 March 2010) in which I represented the defendants.

The precise issue that has been referred to the Court is:

“Is Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 to be interpreted to the effect that ‘communication to the public’ means:

  • exclusively communication to the public where the public is not present at the place where the communication originates, or
  • also any other communication of a work which is carried out directly in a place open to the public using any means of public performance or direct presentation of the work?

In the event that point (a) represents the correct meaning, does that mean that the acts, referred to in point (b), by which works are communicated directly to the public do not fall within the scope of that directive or that they do not constitute communication of a work to the public, but rather the public performance of a work, within the meaning of Article 11(1)(i) of the Berne Convention?”

I have tried unsuccessfully to find a transcript or press report of the case in which the reference was made.  All I have been able to find out is that the first party mentioned in the case appears to be a circus and I think that the other fellows are a collecting society. There have not been many cases on the communication right which derives from art 8 of the WIPO Copyright Treaty and art 10 of the WIPO Performances and Phonograms Treaty  so I will await the Advocate-General’s opinion and the judgment of the Court with interest.

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Interesting Slip: Leo Pharma v Sandoz

CPR 40.12 (1) provides:

“The court may at any time correct an accidental slip or omission in a judgment or order.”

It is known as the “slip rule”. It has a very venerable history. It replaces RSC O20 r.11 which provided:

“Clerical mistakes in judgments or orders, or errors arising therein from any accidental slip or omission, may at any time be corrected by the Court on motion or summons without an appeal.”

What constitutes an “accidental slip or omission” has generated a large body of case law to which Mr. Justice Floyd’s judgment in Leo Pharma A/S & Anor v Sandoz Ltd [2010] EWHC 1911 (Pat) (27 July 2010) is the latest addition.

In Leo Pharma A/S and Another v Sandoz Ltd [2009] EWHC 996 (Pat) (15 May 2009), Mr. Justice Floyd found that the claimants’ patent was valid and infringed. He granted the claimants the usual relief, namely an injunction, orders for delivery up and the choice of an account of profits or inquiry as to profits. A minute of order was drawn up and agreed by counsel. It included the following paragraph:

“9. The Defendant shall pay to the Claimants any sums found due on the taking of said inquiry into damages or account of profits together with interest at the judgment rate (being 8%) from the date of this Order.”

As the judge said:

“Normally an order made after judgment directing an enquiry or account would not specify the rates or periods of interest. On occasions an order will specify interest under the Senior Court Act or under the inherent jurisdiction of the court without mentioning a rate. Again, in the general case, interest runs from the date on which the cause of action arose. Paragraph 9 specified interest from the date of the order only. It therefore represented interest at a high rate but over a shortened period.”

However, nobody gave that paragraph any thought at the time because the judge granted the defendant permission to appeal.   He stayed the final injunction continuing instead a narrower pre-trial interim injunction pending the appeal.  As the injunction was partially stayed, the claimants did not resist the defendant’s request for a stay of the remainder of the order – including paragraph 9.

The defendant appealed unsuccessfully to the Court of Appeal (see Leo Pharma (a/s Leo Laboratories Ltd) v Sandoz Ltd [2009] EWCA Civ 1188. After the appeal failed the stay to the order, including paragraph 9, was removed. Faced with an order to pay interest at 8% the defendant applied for the words relating to interest to be omitted under the “slip rule”.

The slip rule, which is described in the White Book notes as “one of the most widely known but misunderstood rules”, exists primarily to correct typographical or other careless errors.   Although the rule can be used to correct a minute of order that fails to implement the intention of the court (as in Bristol Myers Squibb v Baker Norton Pharmaceuticals [2001] RPC 45, (2001) 24(6) IPD 24035, [2001] EWCA Civ 414) it cannot put right a mistake made by a party’s legal representative (see SmithKline Beecham and others v Apotex Europe Limited and others [2006] 1 WLR 872, [2005] EWHC 1655 (Ch)).

The defendant argued that the order did not give effect to the intention of the court because the judge had said nothing about interest.   Though that was true, the judge made clear at para [24] that “it was entirely within the scope of the court’s intention for the parties to agree the precise terms of the order as to interest.”

Concluding that the problem arose because the defendant had been optimistic about its chances of success on appeal which, if successful, would have rendered the contents of the order about interest academic, the judge could find no “accidental slip” in the order.    He therefore dismissed the application.

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Copyright: SAS Institute Inc v World Programming Ltd.

Although SAS Institute Inc v World Programming Ltd. [2010] EWHC 1829 (Ch) (23 July 2010) ended inconclusively (and some say disappointingly) with a preliminary reference to the Court of Justice of the European Union under art 267 of the Treaty on the Functioning of the European Union, this case broke new ground.   That is because the trial judge Mr. Justice Arnold held that art 9 (2) of TRIPS and art 2 of the WIPO Copyright Treaty now require courts in the UK to interpret the Copyright Designs and Patents Act1988 so as to protect “expressions” and not “ideas, procedures, methods of operation and mathematical concepts as such”. That is in contrast to the position taken by Mr. Justice Jacob (as he then was) in response to my submissions in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR. 275 based on the American cases Lotus Dev. Corp. v. Borland Int’l, Inc., 788 F.Supp. 78 and Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693.

In SAS the defendant, World Programming Ltd (“WPL”), perceived that there would be demand for software that could be able to execute application programs written in the SAS Language. The SAS language is a language in which the claimant, SAS Institute Inc. (“SAS”), had written an integrated set of programs that enabled users to process and analyze data. WPL therefore created a product called World Programming System or WPS to do this. In developing WPS, WPL sought to emulate as much of the functionality of the SAS software as possible. In particular, it set out to ensure that the same inputs produced the same outputs. There was no suggestion that WPL had access to SAS’s source code, that WPL have copied any of the text of that code or that WPL had copied any of its structural design.

The case against WPS was that:

  • WPL had copied the manuals for the SAS System published by SAS Institute (“the SAS Manuals”) when creating WPS and thereby infringed the copyright in the SAS Manuals;
  • by copying the SAS manuals when creating WPS, WPL had indirectly copied the programs comprising the SAS Components and thereby infringed the copyright in the SAS Components;
  • WPL had used a version of the SAS System known as the Learning Edition in contravention of the terms of its licences, and thereby both acted in breach of the relevant contracts and infringed the copyright in the Learning Edition; and
  • WPL had infringed the copyright in the SAS Manuals in creating its own documentation, namely a manual (“the WPS Manual”) and some “quick reference” guides.

None of the allegations of fact was seriously challenged.

Relying heavily on Mr. Justice Pumfrey’s decision in Navitaire Inc v easyJet Airline Co Ltd. [2004] EWHC 1725 (Ch), [2006] RPC 3 his lordship was of opinion that, notwithstanding the replication of a large part of the functionality of the SAS Components, there had been no infringement of copyright in those components. WPL had not even reproduced the design of the components let alone the actual source code.  As the SAS licence agreement permitted the licensee to use the software on one workstation at a time for self-training and non-production purposes only, the judge took the view that the licence had been exceeded.   However, those conclusions were subject to the extent of the protection for computer programs provided by the Software Directive (Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs) and the Information Society Directive (European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society).

The judge’s conclusions were as follows:

“i) Although I am not persuaded that Pumfrey J was wrong to conclude in Navitaire that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer programs does not protect programming languages from being copied, I agree with him that this is a question on which guidance from the ECJ is required (see paragraphs 211-218 above).

ii) Although I am not persuaded that Pumfrey J was wrong to conclude in Navitaire that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer programs does not protect interfaces from being copied where this can be achieved without decompiling the object code, I consider this is also a question on which guidance from the ECJ is required (see paragraphs 219-227 above).

iii) Although I am not persuaded that Pumfrey J was wrong to conclude in Navitaire that, on the true interpretation of Article 1(2) of the Software Directive, copyright in computer programs does not protect the functions of the programs from being copied, and although his decision on that point was upheld by the Court of Appeal in Nova, I consider that this is also a question on which guidance from the ECJ is required (see paragraphs 228-238 above).

iv) On the assumption that Pumfrey J’s interpretation of Article 1(2) of the Software Directive was correct, WPL has not infringed SAS Institute’s copyrights in the SAS Components by producing WPS (see paragraphs 245-250 above).

v) I consider that the reasoning which supports Pumfrey J’s interpretation of Article 1(2) of the Software Directive also applies to Article 2(a) of the Information Society Directive, but again this is a question on which guidance from the ECJ is required (see paragraphs 251-256 above).

vi) On the assumption that Article 2(a) of the Information Society Directive is to be interpreted in the same manner as Article 1(2) of the Software Directive, WPL has not infringed SAS Institute’s copyright in the SAS Manuals by producing or testing WPS (see paragraphs 257-267 above).

vii) WPL’s use of the SAS Learning Edition falls outside the scope of the terms of the relevant licences (see paragraphs 276-290 above).

viii) The interpretation of Article 5(3) of the Software Directive is another question on which guidance from the ECJ is required (see paragraphs 291-311 and 314 above).

ix) On the interpretation of Article 5(3) which I favour, WPL’s use of the Learning Edition is within Article 5(3), and to the extent that the licence terms prevent this they are null and void, with the result that none of WPL’s acts complained of was a breach of contract or an infringement of copyright except perhaps one (see paragraphs 313-315 above).

x) WPL has infringed the copyrights in the SAS Manuals by substantially reproducing them in the WPL Manual (see paragraphs 317-319 above).

xi) WPL has not infringed the copyrights in the SAS Manuals by producing the WPS Guides (see paragraphs 320-329 above).”

Links

23 July 2010   SAS Press Release   “Court finds World Programming Ltd. infringed ….”

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Does Trade Mark Law Really Stop Us from Telling The Truth? L’Oréal v Bellure

According to Lord Justice Jacob, the issue in L’Oréal SA and Others v Bellure NV and Others [2010] EWCA Civ 535 (21 May 2010) was: “Does trade mark law prevent the defendants from telling the truth?”

The “truth” in this case was that a range of cheap scents manufactured in Dubai and imported into the UK by a Belgian company for distribution in discount shops and market stalls smelt something like luxury fragrances developed and marketed at a cost of €60 to €120 million. Here is how these “smell alike” products were advertised over the internet:

“FROM CREATION LAMIS BRAND NEW BOXED AND SEALED 100ML (3.3. FL. OZ.) SWEET PEARLS (“NOA” BY CACHEREL) SPRAY EAU DE PARFUM A DESIGNER FRAGRANCE FOR A FRACTION OF THE PRICE OF THE ORIGINAL” (e.bay)

“COFFRET D’OR Compares to TRESOR®” (jnsales.com)

“ALTERNATIVE TO TRESOR BY LANCOME COFFRET D’OR” (perfumes.com)

“ONLY YOUR WALLET SMELLS THE DIFFERENCE” (theunissen-trading.nl)

“The only difference is the price!

Tracey-Ann will personally guarantee you will not be able to distinguish the original” (makeup4brides.co.uk)

“Fragrances 4 Less

Compares to the designers” (auctions.overstock.com)”

It is hardly surprising that L’Oréal (and no doubt consumers who had paid good money for a premium product) found this sort of marketing somewhat galling even though nobody could point to any loss of sales or tarnishing of reputation.

L’Oréal sued the Belgian importer and its British distributors for trade mark infringement and passing off. At trial L’Oréal SA and Others v Bellure NV and Others [2006] EWHC 2355 (Ch) (4 Oct 2006), Mt Justice Lewison held that the reference to the L’Oréal marks constituted infringement under s.10 (1) of the Trade Marks Act 1994 though he dismissed most of the rest of the claim.    On appeal by the distributors L’Oreal SA and Others v Bellure NV and Others [2007] EWCA Civ 968 (10 Oct 2007) the Court of Appeal referred the following questions to the European Court of Justice:

“(1)      Where a trader, in an advertisement for his own goods or services, uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the smell) of goods marketed by him with the characteristics (and in particular the smell) of the goods marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5(1) of Directive 89/104?

(2)        Where a trader in the course of trade uses (particularly in a comparison list) a well-known registered trade mark for the purpose of indicating a characteristic of his own product (particularly its smell) in such a way that:

(a)       it does not cause any likelihood of confusion of any sort; and

(b)       it does not affect the sale of the products under the well-known registered mark; and

(c)        it does not jeopardise the essential function of the registered trade mark as a guarantee of origin and does not harm the reputation of that mark, whether by tarnishment of its image or dilution or in any other way; and

(d)       it plays a significant role in the promotion of the trader’s product,

does that use fall within Article 5 (1) (a) of Directive 89/104?

(3)        In the context of Article 3a [1] (g) of [Directive 84/450], what is the meaning of

-           take unfair advantage of

-           and in particular, where a trader in a comparison list compares his product with a product under a well-known trade mark, does he thereby take unfair advantage of the reputation of the well-known mark?

(4)        In the context of Article 3a[1](h) of the said directive, what is the meaning of

-           presenting goods or services as imitations or replicas

-           and in particular does this expression cover the case where, without in any way causing confusion or deception, a party merely truthfully says that his product has a major characteristic (smell) like that of a well-known product which is protected by a trade mark?

(5)        Where a trader uses a sign which is similar to a registered trade mark which has a reputation, and that sign is not confusingly similar to the trade mark, in such a way that:

(a)       the essential function of the registered trade mark of providing a guarantee of origin is not impaired or put at risk;

(b)       there is no tarnishing or blurring of the registered trade mark or its reputation or any risk of either of these;

(c)        the trade mark owner’s sales are not impaired; and

(d)       the trade mark owner is not deprived of any of the reward for promotion, maintenance or enhancement of his trade mark;

(e)       but the trader gets a commercial advantage from the use of his sign by reason of its similarity to the registered mark,

does that use amount to the taking of an

-       unfair advantage

-       of the reputation of the registered mark within the meaning of Article 5(2) of [Directive 89/104]?”

In C-487/07 the Court replied:

“1.        Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on  the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.

2.         Article 5(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is entitled to prevent the use by a third party, in a comparative advertisement which does not satisfy all the conditions, laid down in Article 3a(1) of Council Directive 84/450/EEC of 10 September 1984 concerning  misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, under which comparative advertising is permitted, of a sign identical with that mark in relation to goods or services which are identical with those for which that mark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the mark.

3.         Article 3a(1) of Directive 84/450, as amended by Directive 97/55, must be interpreted as meaning that an advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents ‘goods or services as imitations or replicas’ within the meaning of Article 3a(1)(h). The advantage gained by the advertiser as a result of such unlawful comparative advertising must be considered to be an advantage taken unfairly of the reputation of that mark within the meaning of Article 3 (a) (1) (g(.”

Now this is a very long answer to a not particularly short question but its meaning seems clear enough. If a luxury goods manufacturer spends a lot of time and money developing and promoting a premium brand it is not possible to free load on that investment by suggesting that a cheap alternative is more or less the same thing.   Yet Lord Justice Jacob complained at paragraph [2] that these answers were somehow Delphic:

“Not for the first time in intellectual property cases (e.g. British Horseracing Board v William Hill [2005] EWCA (Civ) 863, [2005] RPC 883, Arsenal v Reed [2003] RPC 696, [2003] EWCA Civ 696 and Boehringer Ingelheim v Swingward [2004] EWCA Civ 129, [2004] ETMR 90) the Court’s judgment has left enough room for the parties to disagree about what it means. It is such a disagreement which comes before us now.”

In answer to his question “does trade mark law prevent the defendants from telling the truth he concluded that the Court of Justice’s ruling was that the defendants are indeed muzzled.   Making clear that his own predilection free from the opinion of the Court would have been to hold that trade mark law did not prevent traders from making honest statements about their products where those products were themselves lawful.

The learned Lord Justice’s reasons for taking that view were surprising.

First, he lamented that it hindered free speech. He contrasted the Court of Justice’s decision with that of the Constitutional Court of South Africa in Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7; 2006 (1) SA 144 (CC); 2005 (8) BCLR 743 (CC) (27 May 2005) where the Court refused to injunct a “Black Labour” logo complaining of exploitation of African workers on the ground that it infringed the brewery’s Carling Black Label trade mark. With due respect to Lord Justice Jacob legitimate political dissent is altogether very different from promoting cheap imitations of luxury brands.

Secondly, he complained that the decision somehow harmed the poor:

“Only the poor would dream of buying the defendants’ products. The real thing is beyond their wildest dreams. Yet they are denied their right to receive information which would give them a little bit of pleasure; the ability to buy a product for a euro or so which they know smells like a famous perfume.”

“The poor” can still buy the Dubai imports if they really want to do so. No doubt consumers (who may not necessarily be all that poor) can still try testers and samples even in discount outlets and buy the stuff if they like it.   If it really is as good as L’Oréal word will soon get around. It is not just students and benefit claimants who shop at Primark and New Look. Lady members of the patent bar have been known to poke around such establishments or even the odd charity shop or buy the odd top online. I would venture to add that consumers like a bit of exclusivity. When we scrimp and save for something special we don’t want to be made to feel foolish by the reminder that there is a cheap and nearly as good alternative.

Thirdly, he argued that the ruling was anti-competitive. He said at paragraph [16]:

“ If a trader cannot (when it is truly the case) say: “my goods are the same as Brand X (a famous registered mark) but half the price”, I think there is a real danger that important areas of trade will not be open to proper competition.”

I would agree but I would place the emphasis on the words in parenthesis “when it is truly the case”.   It has to be remembered that comparative advertising was not permitted at all under the Trade Marks Act 1938 (see Bismag Ltd. V Amblins (Chemists) Ltd [1940] Ch 667, (1940) 57 RPC 209). The modern Act implementing the Trade Marks Directive (now Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks) made it possible for the first time. Unrestricted comparative advertising is still not allowed. It has to be “in accordance with honest practices in industrial or commercial matters” and there is now Directive 2006/114/EC of the European Parliament and of The Council of 12 December 2006 concerning misleading and comparative advertising to provide guidance to courts and indeed businesses.

Applying the guidance of the Court of Justice of the European Union the issues for the Court of Appeal were quite simple. Lord Justice Jacob listed them at paragraph [21]:

“(a)      Does the use of the registered marks on and in relation to the comparison lists fall within Art. 5(1)(a)?

(b)        If so does that use comply with the Comparative Advertising Directive?

(c)        Should L’Oréal be permitted to include a claim under Art. 5(2) (and its equivalent Art 9(1)(c) of the Regulation?)

(d)        If so, does that use infringe those Arts.?”

The answers to those questions were all one way, namely that the defendants had infringed. The Court of Appeal berated what Lord Justice Jacob berated as a “pointless monopoly” but that seems to be the law.   As he acknowledged at paragraph [7] of his judgment the Max Planck Institute is reviewing European trade mark law. Maybe a consensus will arise on changing it.

Posted in Comparative Advertising, Passing-off, Trade Marks | Leave a comment

Oral Hearing for “Tomatoes” and “Broccoli” Opposition

Boards of Appeal

Art 21 (1) of the European Patent Convention establishes tribunals known as “Boards of Appeal” to hear appeals from the Receiving Section, the Examining Divisions and Opposition Divisions, and the Legal Division of the European Patent Office.  In that respect they perform analogous functions to the hearing officers who hear appeals from examiners or determine applications by other parties on behalf of the Comptroller or Chief Executive of the UK Intellectual Property Office.

Enlarged Board of Appeal

In the UK appeal from a hearing officer lies to the courts but as there is no pan-European patents court the highest tribunal of the European Patent Office is a body known as the “Enlarged Board of Appeal” that is established by  art 22 (1) of the Convention to

  • decide on points of law referred to it by Boards of Appeal;
  • give opinions on points of law referred to it by the President of the European Patent Office; and
  • decide on petitions for review of decisions of the Boards of Appeal.

Revocation

When the European Patent Office grants a European patent, it grants not a unitary intellectual property right having equal effect throughout Europe like a Community trade mark or a registered Community design but a series of national patents for each of the countries for which the “patentee” (owner of the European patent) seeks protection. Thus, a European patent designating the UK is treated for all practical purposes as a patent granted by the Intellectual Property Office in Newport.   If France and Germany are also designated, the European patent takes effect in those countries as though it were a patent granted by the French intellectual property office or the German patents and trade marks office.   If a third party in say England objects to the grant and seeks to revoke it he or she may apply to the Patents Court or counterclaim in patent infringement proceedings for revocation.   If he or she succeeds, the European patent is revoked in the UK but it remains in effect in France, Germany and all the other countries for which it is granted unless and until the patent is revoked there.

Opposition

However, there is a short period after the patent is granted in which an objector can apply for the European patent to be revoked in all the countries for which it is designated. That process is called rather confusingly “opposition”.   Art 99 (1) of the EPC provides:

“Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.”

Such an opposition applies to the European patent in all the states in which it was granted (art 99 (2)).

An application for revocation of a European patent can be made to an Opposition Division of the European Patents Office on any of the following grounds:

“(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;

(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed.”

The Division consists of 3 technically qualified examiners, at least 2 of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not chair the Division. The members of a Division may entrust the examination of an opposition to one of their number. The Division can revoke, maintain or amend the European patent.   Decisions of the Opposition Division can be appealed to a Board of Appeal under art 21 and from there a reference can be made to the Enlarged Board of Appeal.

Tomatoes and Broccoli

The European Patent Office has today announced that the Enlarged Board of Appeal will hold a public hearing on 20 and 21 July 2010 to determine whether patents granted to the Israeli Ministry of Agriculture for a method of breeding tomatoes having a reduced water content and to Plant Bioscience Ltd. for selective increase of the anti-carciogenic glucosinolates in brassica species are patentable (see “Oral Proceedings to be held in the Tomatoes and Broccoli Cases” 3 Feb 2010). Both cases are concerned with the exclusion of essentially biological processes for the production of plants under art 53 (b) of the Convention.

Importance of the Reference

The reason for the exclusion of plant or animal varieties or essentially biological processes for the production of plants or animals other than microbiological processes or the products thereof may be because plant varieties are already protected by plant breeders’ rights and animals by rules safeguarding bloodstock and pedigree. However, there is also some reticence in Europe about the idea of life forms being patentable inventions. It is significant that art 53 (b) finds itself in the same article as the prohibition of inventions that are contrary to ordre public or morality rather than art 52 (2) which excludes such things as computer programs and methods of doing business as such.

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Facebook Patent Filings

Bill Slawski has reported in detail on Facebook’s US patent filings in his blog SEO By the Sea (“Facebook Patent Filings”, 24 Jan 2010). Many thanks to Shireen Smith of Azrights for drawing this article to my attention on twitter.

Posted in US | Leave a comment