e-News

No.33

December 2013

International Association for the Protection of Intellectual Property AIPPI General Secretariat ¦ Toedistrasse 16 ¦ P. O. Box ¦ CH-8027 Zurich Tel. +41 44 280 58 80 ¦ Fax +41 44 280 58 85 [email protected] ¦ www.aippi.org

e-News

No.33

AIPPI Bureau AIPPI Yearbooks New releases 2012 Book 1 2012 Book 2 2012 Book 3 (AIPPI General Secretaria) The Yearbook 2012, including the Reports from the National Groups and the Resolutions discussed at AIPPI’s 43rd World Intellectual Property Congress in Seoul, is now available online. AIPPI 2014 Toronto AIPPI 2014 Toronto World Intellectual Property Congress, September 14-17, 2104 (Philip C. Mendes da Costa, Bereskin & Parr, LLP, Toronto, Canada) The Canadian AIPPI Group thanks all the organizers and participants for the excellent Forum & ExCo in Helsinki in September! In 2014, it is our honour to host the AIPPI community. We are hoping to see a lot of familiar faces as well as may new ones. The meeting is in Toronto — Canada’s world-class city - from September 14 to 17, 2014. Save the dates and join us! Sponsorship opportunity at World Intellectual Property Congress 2014 in Toronto, Canada. (AIPPI General Secretariat) Our forthcoming international Congress will take place in Toronto, Canada and we expect to welcome more than 2000 participants from all over the world, having their area of practice in all fields of intellectual property. Take advantage of this unique opportunity to reach a wide audience and become a sponsor, an exhibitor or even a media partner for this event. Forthcoming Events February 2014: Commemoration of the 50th Anniversary of the Spanish Group of AIPPI (Spanish Group of AIPPI) To commemorate the 50th anniversary of the Spanish Group of AIPPI, the Board of Directors of the Spanish Group agreed to issue a commemorative book with studies on intellectual property, as a tribute to the excellent publications that have characterized the Association over the past 50 years. In addition, on the occasion of the XXIX Conference for Study of Intellectual Property, which will be held on 13 and 14 February 2014 in Barcelona, a commemorative dinner has been organized in the “Llotja de Mar”, the location where the Spanish group held its Conference for many years. Registration forms will be ready in a few weeks. All members of all AIPPI Groups are welcome and will have a special fee. The Spanish Group will be glad to share the celebration with you. Download the programme April 2014: AIPPI Turkey - 3rd IP Seminar, 7-8, April, 2014, Harbiye Military Museum and Convention Center, Istanbul (Turkish Group of AIPPI) For more information, please see: http://www.aippiturkey.org/aippi_2014/en/ April 2014 French-Brazilian Seminar on the Functions of Intellectual Property Rights With AIPPI support, a French-Brazilian Seminar will be held in Belo Horizonte on April 8 and 9, 2014 and in Rio de Janeiro on April 11, 2014. This Seminar will be an opportunity to share the experiences of academics and professionals of both countries. Articles and notes Australia: Will the Australian courts Resolve Patent-Eligibility of “Business Methods”? (Mark Summerfield, Watermark Intellectual Asset Management, Melbourne, Australia) On 18 November 2013, a Full Bench of the Australian Federal Court heard an appeal that will decide whether computer-implemented business methods, and other software processes, are eligible for patent protection. The status of “business method” patents has been in doubt for several years, and it is hoped that this decision will end the uncertainty.

2

e-News

No.33

Italy: Special jurisdiction in tort, delict or quasi-delict—Action for a negative declaration of liability (Chiara Gaido, Gutierrez Law Firm, Milan, Italy) The Italian Supreme Court, in a decision made public on June 10, 2013, held that the Italian Courts have jurisdiction in a case involving a declaration of patent non-infringement of both the Italian and the German portions of a European patent, despite the fact that the parties were all foreigners. Mexico: The Trans-Pacific Partnership(TPP), the next trade frontier and an opportunity for Mexico to review and improve its intellectual property system (Alejandro Luna F., from Olivares & Cia., Mexico City, Mexico) After 20 years of NAFTA, Mexico has the opportunity to review and improve its entire IP System due to the negotiations and imminent execution of the Trans-pacific Partnership (TPP). TPP is an ambitious free trade agreement between eleven countries, that would represent more than the 30% of the international GDP. Spain: Draft of a new Spanish Patent Law (David Pellisé, Pellisé Abogados, Barcelona, Spain) On October 8, 2013 a Draft of the new Spanish Patent Law was issued by the Spanish Patent and Trademark Office (SPTO). On the same day, the Spanish Group of the AIPPI was invited to submit observations. A report has been issued by the Spanish Group with comments and proposed amendments. UK: Court of Appeal (London) addresses the concepts of “a sign” and “graphical representation” in the context of exotic marks (Jonathan Moss, Hogarth Chambers, London, UK) The Court of Appeal has decided that neither Cadbury’s famous shade of purple, nor Mattel’s Scrabble tile were valid trade marks. Neither mark was “a sign”, nor were they described with sufficient clarity or precision to satisfy the requirement of graphical representation. US: Common Knowledge and Common Sense Impact Patentability in the US (Marina V. Zalevsky, Sughrue Mion PLLC, Washington, United States of America) According to the recent U.S. court decision of Randall Mfg. v. Rea, 2012-1611 (Fed. Cir. 2013), common knowledge and common sense are important factors in determining the patentability of the purported invention. National and Regional Groups Chile: Report on ABPI meeting, Rio de Janeiro August 18 to August 20 (Article by Sergio Ellmann, Assistant to the Secretary General) The Brazilian National Group celebrated its 50th anniversary from August 16 to August 20 in the wonderful city of Rio. Committee activities and general panels, both plenary and concurrent, were ably delivered by the speakers who also enjoyed the warm weather of the Barra de Tijuca beach and the grandeur of the Copacabana Palace Hotel where the opening took place. Germany: 1st joint French-German Seminar (Jochen Bühling, RAe. Krieger Mes & Graf v. der Groeben, Düsseldorf, Germany) On November 7 and 8, 2013 the French and the German Groups discussed the latest developments in their national laws with a special focus on harmonizing the enforcement of intellectual property rights. The lively presentations and debates provided excellent opportunities to exchange views and ideas. Israel: From IP to NP—AIPPI International Conference in Tel-Aviv (Ron Klagsbald, Ron Klagsbald, Law Offices, Herzliya, Israel) In a two-day conference entitled “From IP to NP” in Tel Aviv, Israel, prominent and leading figures in the global IP arena shared their views and experience with multinational attendees from over 15 countries. Sessions encompassed a wide range of practical IP issues, in the first international IP conference of this kind in Israel. The organizers of the “From IP to NP” International Conference are proud to have welcomed you to the AIPPI-Israel event held in Tel-Aviv during November 10-11, 2013. Link to the conference site.

3

e-News

No.33

AIPPI 2014 Toronto World Intellectual Property Congress, September 14 — 17, 2014 (Article by Philip C. Mendes da Costa, Bereskin & Parr, LLP, Toronto, Canada) The Canadian AIPPI Group thanks all the organizers and participants for the excellent Forum & ExCo in Helsinki in September! In 2014, it is our honour to host the AIPPI community. We are hoping to see a lot of familiar faces as well as may new ones. The meeting is in Toronto — Canada’s world-class city - from September 14 to 17, 2014. Save the dates and join us! Peter Ustinov once described Toronto as “New York City, run by the Swiss”, and our American neighbours describe Toronto as “clean, safe and friendly”. Toronto, with a population of 2.6 million, is one of the most multicultural cities in the world with more than 140 languages and dialects spoken. Toronto’s diversity extends to its restaurants and pubs. Within a short walking distance, you will find cuisine from virtually every part of the world. Also, if you have some extra time, you can take in a show. Toronto boasts more theatre footlights than any other city, except for London and New York. The Working Questions which will be discussed during the Congress are as follows: • Q 238 - Second medical use or indication claims • Q 239 - Basic mark requirements under Madrid • Q 240 - Exhaustion issues in copyright • Q 241 - IP licensing and insolvency In addition, the Congress will offer a wide selection of workshops covering a wide range of topical issues. After the Congress, please join us for an optional tour of Niagara Falls. You can take a stroll along the edge of the world famous Falls or, for the more adventurous, see them from above in a helicopter. We are sure that your visit to the cultural, entertainment and financial capital of Canada will be both informative and enjoyable. Don’t be a stranger! French-Brazilian Seminar on the Functions of Intellectual Property Rights The French-Brazilian Seminar on the Functions of Intellectual Property Rights is a joint effort of academics and professionals of both countries and will be held in Belo Horizonte on April 8 and 9 and in Rio de Janeiro on April 11 2014. The functions of IP rights have been discussed in various jurisdictions for several decades and are essential to determining their importance to society. As part of a broader legal system, concurrent rights will always influence the protection of IP rights. Harmonizing IP rights and concurrent rights is not an easy task and will vary depending on the particularities of each jurisdiction. For example, the functions of IP rights might not be the same in developed and emerging countries. Therefore, the purpose of these conferences is to gather IP rights holders, professors and professionals to discuss and compare developments in the functions of IP rights in France, the European Union and Brazil. During these conferences, speakers will discuss the functions of patents, trademarks, industrial designs and copyright. Program: Welcome speeches General Introduction • Social Function of Intellectual Property Rights • Consumers and Intellectual Property Rights 4

e-News

No.33

Panel on Distinctive Signs Law • Trademark functions in Brazilian Law — The Social Function • The Ascent of Trademark Functions in European and French Law Panel on Patent Law • Limitations of Patent Rights in Europe and France • Patent and Public Interests in Brazil Panel on Design and Copyright • Design and Copyright Functions in France and Europe • Harmonizing Design and Copyright Rights with Public Interest in Brazil Closing Ceremony More details will be available soon. Supporting institutions: • Federal University of Minas Gerais • Universidade Cândido Mendes • Centre d’Études Internationales de la Propriété Intellectuelle — CEIPI • CERDACC — Université de Haute Alsace • AIPPI - Association Internationale pour la Protection de la Propriété Intellectuelle • CNCPI • Associaçao Brasileira da Propriedade Intelectual — ABPI Supporting firms: • Cabinet d’Avocats Fidal • Cabinet d’Avocats AKHEOS • Martignoni, Tinoco & Moraes Advogados Associados • Leao Propriedade Intelectual • De Lima Assafim Advogados Associados Will the Australian Courts Resolve Patent-Eligibility of “Business Methods”? (Article by Mark Summerfield, Watermark Intellectual Asset Management, Melbourne, Australia) The patent-eligibility of so-called “business methods” is a contentious issue in many jurisdictions. Methods of organising human affairs which involve only the manipulation of legal or financial instruments, without technological assistance, are increasingly found ineligible for patent protection[1]. However, when technical means are employed, typically in the form of a programmed computer, in the implementation of an otherwise unpatentable process, the position remains unresolved. In the US, the Court of Appeals for the Federal Circuit (CAFC) recently split over the issue of whether technical implementation of a method is sufficient, in itself, to satisfy the patent-eligibility requirements of 35 USC § 101[2]. Now an appeals court in Australia is grappling with the same issue. Computer-Implemented Inventions and Australian Patent Law Following a number of key decisions during the 1990&039;s and early 2000’s[3], the availability of patents in Australia for inventions implemented by computer software, across most fields of endeavour, was considered largely settled. In its 2006 Grant decision, a Full Bench of the Federal Court of Australia refused a patent to a scheme for asset protection via specified legal and financial transactions. However, this was not initially considered to have any impact on inventions implemented in software, even when applied in the financial services sector, or more generally directed to improving the efficiency of organisational processes in any sector.

5

e-News

No.33

Changing Approach in the Australian Patent Office This understanding changed in 2010, when IP Australia (the authority incorporating the Patent, Trade Marks and Designs offices) issued a decision rejecting a patent application claiming a method for the commercialisation of inventions[4]. The claims were found ineligible for patent protection under Australia’s “manner of manufacture” subject matter test on the basis that the use of a computer in the method was incidental, and did not perform any processing which resulted in the creation or transformation of information, or any other synergistic effects. The Invention Pathways decision was the first in a line of decisions issued by IP Australia rejecting applications directed to inventions which it regarded as computer-implemented ‘business methods’. Federal Court Appeals Two of the Patent Office decisions have been appealed to the Federal Court of Australia. The claims in the first of these cases, Research Affiliates[5], are directed to a computer-implemented method of generating an index defining a portfolio of financial securities. In the second case, RPL Central Pty Ltd[6], the invention involves the gathering of information relating to recognised competency standards over the internet, which is then processed and used to present a more user-friendly questionnaire for evidence gathering and skills assessment. Research Affiliates’ appeal was rejected[7], while RPL Central’s was upheld[8]. Both first-instance decisions have been appealed to a Full Bench of the Federal Court of Australia. The hearing before the Full Court in the Research Affiliates appeal was held on Monday, 18 November 2013. It appears likely that the court will be required to decide whether or not the use of technological means, such as a programmed computer, in the implementation of a claimed invention is sufficient, in itself, to ensure patent-eligibility. Conclusion Hopefully, the Australian Federal Court will be able to avoid wading into the same morass as the US CAFC. If the Full Court in the Research Affiliates case is able to articulate clear principles for assessing patent-eligibility of computerimplemented “business methods”, and other software-based inventions, this will provide patent applicants in Australia with a degree of certainty, whatever the outcome for Research Affiliates itself. A decision in the Research Affiliates appeal is expected in the first half of 2014. The RPL Central appeal has been adjourned pending this decision. * Watermark acts for RPL Central Pty Ltd, and Mark Summerfield drafted the patent specification which is subject to the ongoing appeal. References 1. See, e.g., Bilski v Kappos 561 US (2010) in the US, Grant v Commissioner of Patents [2006] FCAFC 120 in Australia. 2. CLS Bank v Alice Corp, No. 2011-1301 (13 May 2013) (en banc). 3. IBM Corporation v Commissioner of Patents [1991] FCA 625; CCOM Pty Ltd v Jiejing Pty Ltd[1994] FCA 1168; 2. Welcome Real-Time SA v Catuity Inc [2001] FCA 445. 4. Invention Pathways Pty Ltd [2010] APO 10. 5. Research Affiliates, LLC [2010] APO 31; Research Affiliates, LLC [2011] APO 101. 6. Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48. 7. Research Affiliates LLC v Commissioner of Patents [2013] FCA 71. 8. RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871. Special jurisdiction in tort, delict or quasi-delict — Action for a negative declaration of liability (Article by Chiara Gaido, Gutierrez Law Firm, Milan, Italy) In a recent judgment, the Italian Supreme Court recognized the Italian jurisdiction over an action for a declaration of patent non-infrigement based on the place where the harmful event may occur. The German company Asclepion Laser Technologies GmbH filed, before the Court of Rome, a claim seeking a declaration of non-infringement of both the Italian and German portions of a European patent owned by The General Hospital Corporation and licensed to Palomar Medical Technologies Inc., both U.S. companies.

6

e-News

No.33

The U.S. companies brought an action before the Italian Supreme Court to determine whether the Italian Court had jurisdiction. The General Hospital Corporation and Palomar denied the jurisdiction of the Italian Court for two reasons: (a) all the parties involved were foreigners (none of them having their registered or their secondary office in Italy); and (b) there was no close link between the Italian Court and the action brought by the German company according to Article 5, point 3 of both the Brussels Convention of 1968 and EC Regulation no. 44/2001 (to which Italian law no. 218 of 1995 refers). Asclepion maintained that, according to Article 5, point 3 of EC Regulation no. 44/2001, the Italian Court had jurisdiction for both the Italian and German portions of the European patent. The Court rejected the arguments of The General Hospital Corporation and Palomar and confirmed the jurisdiction of the Italian Court by referring to the reasoning made by the European Court of Justice in decision no. C-133/11, Folien Fischer AG and Fofitec AG vs. Ritrama S.p.A., dated October 25, 2012. In this judgment, the European Court, in relation to a preliminary ruling concerning the interpretation of point 3 of Article 5 of EC Regulation no. 44/2001, ruled that an action for a negative declaration seeking to establish the absence of liability in tort, delict or quasi-delict, falls within the scope of that provision. In particular, the Italian Court stated that “...the Italian jurisdiction exists in respect of the action for a negative declaration, such as the one requested by Asclepion before the Court of Rome, in which a potential injury could occur, regarding both the Italian and the German portions of an European patent”. In the opinion of the Italian Supreme Court, it was not relevant to establish whether the Brussels Convention of 1968 or EC Regulation no. 44/2001 was applicable because both established the jurisdiction of the court of the place where the harmful event occurred or may occur. The Trans-Pacific Partnership (TPP), the next trade frontier and an opportunity for Mexico to review and improve its intellectual property system (Article by Alejandro Luna F., from Olivares & Cia., Mexico City, Mexico) The Industrial Property law enacted in 1991 and its modifications in 1994 derived directly from the negotiations of the North American Free Trade Agreement with the U.S. and Canada (NAFTA) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); these showed the willfulness of the Mexican Government to reach the minimum standards to protect intellectual property. In 1991 there were some changes to the IP framework but the reality is that there we no substantial changes to the entire Intellectual Property system. The digital age and the new technologies were not accurately or seriously contemplated in the negotiations of NAFTA, and even less consideration regarding the implementation of rules to govern the new relationships derived from the Internet. Nowadays, the system requires an urgent review in order to deal with claims for damages derived from the violation of industrial property rights, especially in patent infringement cases. The TRANS-PACIFIC PARTNERSHIP (TPP) On June 18, 2012, during the G20 in Los Cabos, México, the countries participating in the TPP decided to invite Mexico to join the discussions. The original TPP countries were: Brunei, Chile, New Zealand and Singapore. Since 2009 the TPP has been negotiated with the U.S.A, Australia, Vietnam, Malaysia and Peru. Mexico and Canada are also willing to be part.

7

e-News

No.33

The eventual eleven partners of the TPP will represent the 30 % of the world GDP, 19 % of the worldwide exports, 22 % of the worldwide importations and a market of 198 million of potential consumers without counting the U.S. population. While writing this article, Japan expressed its desire to join TPP. The leaders of the partners of the TPP have stated that the agreement will “be a model for ambition for other free trade agreements in the future, forging close linkages among economies, enhancing our competitiveness, befitting our consumers”. The main topics regarding intellectual property are the following: • Non-traditional trademarks. • Madrid Protocol/International trademark applications. • Appellation of origin and geographic indications. • Efficient and prompt civil and criminal enforcement. • Effective customs measures. • Pharmaceutical patents. • Agrochemical patents. • Copyrights and the digital era. Mexico has implemented the first steps toward fulfilling the TPP requirements by entering the Madrid Protocol in early 2013. The rushed process of approval of such an international treaty, without an entire review of the trademark system (and assuming IMPI is prepared to properly adopt the Madrid system) is a sign that the Mexican Government is willing to fulfil the standards of the TPP, just as it enactedthe IP Law of 1991 when NAFTA started to be discussed. In conclusion, due to the negotiations and eventual integration of Mexico into the Transpacific-Partnership, Mexico has a new and valuable opportunity to review and change its entire intellectual property system and adopt higher, and even more important, efficient standards of IP protection. The TPP can’t go below the standards of IP protection in NAFTA and TRIPs. Therefore, it can’t be worse, but we just don’t know how much better it will be. Draft of a new Spanish Patent Law (Article by David Pellisé, Pellisé Abogados, Barcelona, Spain) The current Spanish Patent Law, adopted in 1986 at the time of the accession of this country to the E.U., modernized not only substantive aspects of the law, but also the enforcement regulation applying to all industrial property. Although some specific amendments have been introduced since its enactment, further changes are needed, at least in order to adapt the text to recent developments in the international and E.U. frames. The current Patent Law provides protection with respect to both national patents and utility models, with different granting procedures. On the patent side, applicants for a Spanish patent can choose between (i) a procedure including both an examination of formal requisites and a report regarding the prior state of the art; and (ii) a procedure which includes a further examination of novelty and inventive activity. The first option is chosen by 90% of applicants, which are largely from Spain (95%). With respect to utility models, the granting procedure only includes an examination of formal requisites, and a further call for opposition from third parties. The SPTO has taken the initiative to launch the new Patent Law with the aim of not only incorporating recent international and EU developments, but also changing the current granting procedure on national patents and utility models. The Draft of the new Law is available. 8

e-News

No.33

As soon as the Draft was launched, the General Directress of the SPTO, Mrs. Patricia García-Escudero Márquez, personally invited the Spanish Group of the AIPPI to file observations within a short period of 21 days. A Working Group was urgently set up, while all the associates were called to send their observations to the Working Group in order to expedite the requested report. The report issued by the Spanish Group contains general comments and some more specific observations, with proposals of amendments. The Spanish Group of the AIPPI unreservedly supports the SPTO initiative to improve, as necessary, the Spanish patent legislation. It is questionable whether updating the current patent regulation requires a new Law, or whether it would be sufficient to reform the existing one. In any case, the Draft has the unquestionable wisdom of maintaining the basis of the preceding Law, keeping its structure and an important part of its content, even with literal reproduction of many of its rules. As to the granting procedures of national patents and utility models, the main changes introduced by the Draft concern (i) the generalization of an extensive granting procedure for the national patents, with an examination of novelty and inventive activity; and (ii) the implementation of a system of post-grant opposition for national patents and utility models (currently, the opposition is only open to utility models, and on a pre-grant basis). Whereas the post-grant opposition system is generally applauded (both for patents and utility models), there is a division of opinion among our associates regarding the generalization of the procedure involving an examination of novelty and inventive activity for national patents. In fact, there are solid arguments supporting both options. In order to know which would be preferable, the Spanish Group of AIPPI recommends that a comprehensive study be conducted to decide which is the most effective option to promote innovation and industrial development, particularly among the SME. There is a consensus in the Spanish Group of AIPPI about the extraordinary importance of preventing failed systems. The limitation of the current options provided to the applicant should only be implemented if the quality of the patents and registrations granted is ensured. Moreover, the Spanish Group also recommends that a study be conducted of the advisability of enlarging the scope of the subject matter that may be covered by a utility model, since the current regulation excludes not only processes, but also products in fields like chemistry or biotechnology. Court of Appeal (London) addresses the concepts of “a sign” and “graphical representation” in the context of exotic marks (Article by Jonathan Moss, Hogarth Chambers, London,UK) In two separate judgments but conjoined appeals, the Court of Appeal reversed previous decisions allowing Cadbury’s UK registration of the colour purple as a trade mark and upheld the cancellation of Mattel’s UK registration for a Scrabble tile. Both appeals, heard by the same court, turned on the issue of whether there was “a sign” registrable as a trade mark and capable of “graphical representation” in accordance with Article 2 of the Trade Marks Directive 2008/95/EC. Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174 In 2004, Cadbury applied to register a trade mark for the colour purple (Pantone 2658C) “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” for a range of chocolate-based products in Class 30 (the “Purple Mark”). Nestlé, whose opposition had been dismissed, appealed. The Court of Appeal allowed the appeal. Sir John Mummery, giving judgment on behalf of the Court, found that use of the word “predominant” in the description opened the door to a multitude of different visual forms as a result of its implied reference to other colours and visual material not described in the application. Allowing registration of the Purple Mark would therefore in effect have allowed the registration of multiple signs with different permutations, rather than a sign. Further, the Purple Mark lacked the required clarity, precision and objectivity required for graphical representation. 9

e-News

No.33

However, the Court of Appeal did not rule out the possibility that Cadbury could re-file its application with a different description, hinting that, if Cadbury had used different wording such as “as applied to all or to more than 50 per cent of the whole visible surface”, it might have been successful. Mattel Inc v Zynga Inc [2013] EWCA Civ 1175 Mattel had succeeded in obtaining registration of a trade mark for “a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10” for board games and related goods/services in Classes 9, 28 and 41 (the “Tile Mark”). Once again, the Court of Appeal held that the Tile Mark was not a “sign” as it potentially covered many signs achievable by different permutations of how the letter and number appear on the tile, including the precise letter and number combinations used, the size and type of their font, and their positioning on the tile. Once again, there was no graphic representation that met the requirements of clarity, precision and objectivity. The Court of Appeal also rejected Mattel’s argument that proof of distinctive character could assist in showing that the fundamental requirements under Article 2 of the Directive were satisfied. Analysis These two decisions serve as a reminder of the importance of accompanying descriptions in trade mark applications, particularly in relation to exotic marks. Wording which is included within the description of an application defines the scope of the trade mark as graphically represented. Applicants should take great care to ensure that accompanying descriptions are not capable of different interpretations resulting in different permutations of the mark. Rather, the description should be sufficiently precise to enable anyone reading the Trade Mark Register to understand precisely how the mark will appear. In relation to applications for colour marks, the Cadbury decision does not rule out trade mark protection for colours but such applications will be heavily scrutinised. The best approach may be to confine an application for a single colour to use on the whole of the article or packaging. In a mark consisting of two or more colours, it will be necessary to specify clearly any arrangement or defining shapes or features. Common Knowledge and Common Sense Impact Patentability in the US (Article by Marina V. Zalevsky, Sughrue Mion PLLC, Washington, United States of America) On October 30, 2013, a three-judge panel of the United States Court of Appeals for the Federal Circuit (CAFC) emphasized that common knowledge, available in the art at the time of invention, is highly material in evaluating the motivation to combine or modify references in determining the patentability of the claims. The court vacated a decision of the Board of Patent Appeals and Interferences that reversed the Examiner’s determination that the claims were obvious. The CAFC stated that the previous decision too narrowly focused on four references cited by the Examiner during prosecution and failed to consider well-documented background knowledge that could explain why one skilled in the art would have been motivated to combine the references to arrive at the claimed invention. The patent in question, U.S. Patent No. 7,214,017 (‘017), is owned by FG Products and is directed to a partitioning apparatus including two separate half-width panels. The panels are independently movable in a lengthwise direction of the shipping container and may be raised and stowed against the ceiling of the shipping container. The primary reference, Aquino, cited by the Examiner, described a side-stowage method rather than a ceiling-stow-

age method. Before the Board, FG argued that one skilled in the art would not have been motivated to modify Aquino to include the ceiling stowage since Aquino already described the different stowage method.

10

e-News

No.33

Randall argued that the ceiling stowage was well-known at the time of invention and was preferred in the industry, permitting moving the panels out of the way. The CAFC found the Board failed to appropriately consider the additional evidence of record demonstrating the breadth of knowledge of one skilled in the art and the industry practice favoring ceiling stowage. The record established that a prevalent and preferential method of stowing a bulkhead panel was to raise it to the ceiling. Accordingly, the CAFC believed it was transparent to see why one skilled in the art would have thought to modify Aquino to include this feature. Citing KSR, the CAFC stated that FG’s design was nothing more than the “combination of familiar elements according to known methods...each performing the same function it had been known to perform...yield[ing] predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Accordingly, the CAFC vacated the Board’s decision for failure to consider the knowledge of one skilled in the art when evaluating motivation to modify the references. This decision confirms that common knowledge is a decisive factor in determining obviousness. In the future, we will likely encounter more rejections based on the rationale that it is obvious to combine familiar elements according to known methods in view of common knowledge and/or common sense, yielding predictable results. However, the CAFC provided some guidance on how to traverse obviousness rejections based on common knowledge in the art. Specifically, FG’s invention conformed to industry standards, while Aquino was shown to be an exception to industry standards. Thus, the common knowledge and/or common sense rationale of the Examiner could be traversed when the claimed invention does not conform to industry standards and the prior art reference does, i.e., when the facts are opposite of that in Randall. Also, it may be possible to traverse the rejection by demonstrating that the elements of the invention are not combined according to known methods, or that the elements perform a function different from that of the prior art, the common knowledge, and/or the industry standards. 1st joint French-German Seminar (Article by Jochen Bühling, RAe. Krieger Mes & Graf v. der Groeben, Düsseldorf, Germany) The long grown idea of having a seminar organized jointly by the French and the German Group finally came into reality on November 7 and 8, 2013 in Paris. The French Group hosted more than 90 participants and speakers at the l’Aéro-Club de France, a venue which nicely combines tradition and modern technologies and thus symbolizes some of the ideas of AIPPI. Under the heading “IP in Germany and France — A comparison of the latest developments” external speakers and members of several groups of AIPPI debated various topics of practical significance. The panels comprised industry representatives as well as practitioners from both jurisdictions which allowed the participants to look at the issues from different angles. After the opening speeches by the Presidents of both groups, the first session dealt with the current status of the harmonization of measures relating to the enforcement of IP rights according to the EU Enforcement Directive of 2004. The focus was on the seizure of infringing goods and the right to information. It was particularly interesting to compare the French “saisie contrefaçon” to the inspection orders used in Germany. The afternoon session was divided into two parallel panels, one dealing with patents and the other with trademarks. The patent session concerned two topics which are, at first glance, unrelated, but nevertheless can be closely linked 11

e-News

No.33

to each other. The session was dedicated to infringement under the doctrine of equivalence followed by presentations on post-grant modifications of patent claims. Here the question arises how post-grant modifications may also influence the scope of protection and have an effect on equivalent infringement. The parallel trademark session concerned three-dimensional marks and in particular a comparison of the practices in light of the latest EU case law. It explained the requirements of the case law and the practical impact and revealed thoughts on strategies which companies might take in order to protect their IP in a comprehensive manner. The seminar continued with a common session on Friday morning explaining the effective use of the French and German legal procedures with regard to IP infringement. In this context, the relationship between criminal law and civil law actions was highlighted. A fine distinction should be made between “counterfeiting” and “normal infringement”. The participants were in particular impressed by a short video presentation which showed actions taken by the German customs authorities at the International Motor Show in Frankfurt where it is possible to have counterfeiting goods confiscated by the authorities during the show. The discussions among the audience and the panels showed the great interest in and the practical impact of the topics chosen by the organizers. Many different thoughts were expressed by the participants and certainly triggered the debates which continued during the lunch and coffee breaks. It became quite evident that despite the allegedly harmonized law, cultural differences still exist between the jurisdictions, which play a significant role in practice. Finally, the former President of the French Group, M. Thierry Sueur, informed the audience about the latest news regarding the Unified Patent Court and the European Patent with unitary effect. He presented some valuable first-hand information about the progress which is being made in the various fields of procedural rules and the implementation of the new regimes. Both are envisaged to come into force in the middle of 2015. Yet, a number of open questions remain to be resolved, such as cost or language issues. It could not have been more appropriate that the seminar was concluded by a short speech of AIPPI’s President of Honour and former Reporter General Geoffroy Gaultier. He highlighted the problems of harmonization and the need for comparative law studies which form the core of the work of AIPPI. After all, one will not be able to harmonize the law in an appropriate manner without properly understanding what others are doing and their reasoning. The seminar was well received by all participants and the very positive feedback is encouraging for future activities of the groups. Plans are already on the table to hold a second meeting, this time in Germany, and to continue the close collaboration between the groups at this level. It should not be forgotten that the welcoming atmosphere which was created by the French Group made all the participants feel very comfortable and contributed tremendously to the overall success of this meeting.

12

e-News

No.33

From IP to NP—AIPPI International Conference in Tel-Aviv (Article by Ron Klagsbald, Ron Klagsbald, Law Offices, Herzliya, Israel) IP professionals, lawyers, patent attorneys, representatives and management members of various industry sectors and State officials convened in Tel-Aviv, Israel, for a two-day international conference (November 10 and 11, 2013). The conference, entitled “From IP to NP (net profit)” (how to make IP work for businesses), was organized by AIPPIIsrael and the Tel-Aviv University Faculty of Law, with the collaboration of the World Intellectual Property Organization and the Israeli Patent Office. The attendees were greeted in the opening session by Tal Band, President of the Israel National Group of AIPPI, followed by the Secretary General of AIPPI (Stephan Freischem), the Director General of the Israeli Ministry of Justice (Dr. Guy Rotkopf) and the Vice Rector of the Tel-Aviv University (Professor Dina Prialnik). The last greeting was from Mr. Francis Gurry, Director General of the World Intellectual Property Organization (in a video recorded message). Prominent and leading professionals of the global IP scene shared their opinions, views and experience with 500 attendees from over 15 countries in sessions that covered a wide array of intellectual property issues and rights. Some of the sessions for senior management and stakeholders focused on areas such as commercialization of know-how, monetization of patents, the interface between IP and competition law, and IP trends in Asia. IP and legal professionals found special interest in sessions concentrated on specialized IP courts, enforcement of IP rights in different legal systems, design protection, service inventions (trends and developments), copyright and open source software and more. For entrepreneurs and industry representatives the conference offered sessions dealing with a variety of topics, including generating value from patents, claim construction, and IP in the digital age. The speakers and moderators (over 70) comprised members of all sectors that play a major role in the IP arena: distinguished members of the judiciary (Chief Judge Randall R. Rader of the US Court of Appeals for the Federal Circuit, Judge Dr. Klaus Grabinski of the Revision Chamber, German Federal Court of Justice and three Israeli District Court judges—Dr. Michal Agmon-Gonnen, Tamar Bazak-Rappaport and Dr. Amiram Benyamini), policy makers and state officials (former Director of the USPTO—Mr. David Kappos, the Israeli Commissioner of Patents, Designs and Trademarks—Mr. Asa Kling, Dr. Guy Rotkopf—Director General of the Israeli Ministry of Justice, Mr. Jian Liu, Deputy Director of SIPO, and representatives of WIPO and EC DG Competition, as well as other officials from the Israeli Ministry of Justice and the Israeli Ministry of Economics). Other significant speakers included leading members and scholars of academia both on law and science (including Prof. Daniel Zajfman, President of the Weizmann Institute of Science, Prof. Peter Menell of Berkeley and Prof. Yochai Benkler of Harvard Law School) and other members of senior management of different industry sectors, leading lawyers, patent attorneys, many of whom are AIPPI members worldwide, and more. Students and patent examiners were invited by the organizers to attend the sessions and familiarize themselves with the issues discussed. 13

e-News

No.33

During the gala dinner at the end of the first day, a special address on “smartphone wars” by Mr. Marshall Phelps provided a different point of view on IP rights and the enforcement thereof. The entire conference had exceptional live coverage by online blogs posted directly out of the conference room by Jeremy Phillips, one of the cofounders of the IPKat weblog. Attendees visiting from abroad enjoyed Tel-Aviv’s night life and a post-conference tour of the Negev Desert. For detailed information about the conference—please visit www.aippi.org.il.

14

e-News

No.33

International Association for the Protection of Intellectual Property AIPPI General Secretariat |Toedistrasse 16 | P.O.Box |CH-8027 Zurich Tel. +41 44 280 58 80 | Fax +41 44 280 58 85 [email protected] | www.aippi.org AIPPI’s (International Association for the Protection of Intellectual Property). AIPPI is concerned with all types of intellectual property rights (including patents, trademarks, and copyrights). AIPPI is the oldest global association for the protection of intellectualproperty and has the respect and ear ofgovernments and global organizations, such as the World Intellectual Property Organization and the World Trade Organization. Since it was founded in 1897, AIPPI has been consulted (and still is) by decision makers worldwide on current intellectual property issues. Your contribution please! Readers of these e-News are encouraged to provide us with their contributions for our future editions. Articles should comply with our current editorial policy and guidelines. Contributions may be submitted by email to [email protected] The e-News is a bimonthly electronic publication of AIPPI, International Association for the Protection ofIntellectual Property. AIPPI General Secretariat Toedistrasse 16 P. O . B O X CH-8027 Zurich Tel. +41 44 280 58 80 | Fax +41 44 280 58 85 [email protected] | www.aippi.org This issue was prepared by Ching-Ying Chen, AIPPI General Secretariat in co-operation with Stephan Freischem, Secretary General of AIPPI and the Communications Committee: Chair: Charters Macdonald-Brown Members: Johnny Fiandeiro Kristian Fredrikson Klaus Haft Bernardo Herrerias Jehyun Kim Emmanuel Larere Bianca Manuela Gutierrez Bill Mayo Petri Rinkinen Robert Sacoff Ana de Sampaio Matthew Swinn

15