Sunday, 14 September 2014

#AIPPI2014 Canada joins the 21st Century

I am writing this at an airport boarding gate on my way to Toronto for the AIPPI conference. I am mainly thinking trade mark issues as I contributed to the UK response on Madrid system central attack Question 239. You can find all the national Group reports here.

Although Canada is hosting the conference it is one of the few territories that does not use WIPO's Nice Classification or belong to the Madrid Protocol,  but it seems that is all set to change now that the Canadian government has passed its Budget Implementation Act which included the necessary amendments to Canadan law to allow Canada to join Nice, Madrid and the Singapore Trade Mark Treaty. The changes do not include abolition of relative grounds examination or the three year use period. So it's not surprising that the Canadian group support the basic mark requirement in Madrid, but like the idea that dependency should shrink to three rather than five years.

With a five year dependency, late starting Canadian businesses would otherwise have a greater vulnerability to central attacks on their International registrations, than their counterparts in European countries, for example, that require five years to pass before their national marks can be challenged for non-use.  It would be interesting to know how many central attacks have been made on non- use in territories where this could happen now. I can only think of China. Their group report does suggest it may be a concern as they note:
The Madrid filing might focus on worldwide use instead of national use, then non-
use cancellation against basic registration may bring risk of central attack, which
woud be unreasonable to the trademark registrant.
The UK Group also discussed that a three year dependency would be sufficient.

One interesting aspect of many reports s that central attack is little used. This seems odd as in my practice, which is necessarily modest I see several cases a year where it is under consideration. It would be useful if central attackss were required to be notified to WIPO while they are in progress rather than just when they succeed.

I hope I will b able to discuss these and other issues with fellow travelers when you arrive in Toronto

Sunday, 7 September 2014

Grace Periods for Patent Applicants

Safety net by Andrew Skudder 
We have been here before, last year when AIPPI decided to support the idea and more recently when the UK IPO held a round table on the subject on 1 July 2014.  Now the UK IPO is trying to decide which scenario to support and their relative desirability.

We are offered various definitions of a grace period.

A. “All disclosures” grace period: A grace period of 12 months calculated from the filing date, applying to all disclosures, with no mandatory declaration required and prior user rights not applying throughout the grace period.

B. “Non-safety net” grace period: A grace period of 12 months calculated from the priority date (if applicable), applying only to disclosures made by (or derived from) the applicant, with no mandatory declaration required and prior user rights not applying throughout the grace period.

C. 6-month “safety net”: A grace period of 6 months calculated from the priority date (if applicable), applying only to disclosures made by (or derived from) the applicant, with mandatory declaration required and prior user rights applying throughout the grace period.

D. 12-month “safety net”: As above but with a duration of 12 months.

E. 12-month “safety net” with no declaration: As above but with no mandatory declaration required.

What makes it a safety net grace period is the business of prior user rights. While I have used the safety net idea hitherto as a reference to the safety net that a grace period provides for the patentee not the the third party user (sorry about the confusion).

Prior users might be those who have derived their information from the inventor. There is already protection in the UK in section 64 of the Patents Act for good faith prior users, so, I suppose we are saying if at the time you saw something and thought great idea and started to implement it and managed to do so before the inventor got to the Patent Office were you acting in good faith? Now at present when we see a good idea we may not know its in the patent process. Is it any different if we have a grace period? I think not. Lets not mess with prior user rights. Clearly they are needed though if other countries don't have them and we are playing for harmonisation across the IP5

Personally I am totally against declarations. They require full disclosure to the attorney and a burden of enquiry. They suppose there is certainty about whether a particular disclosure is confidential or not. If I speak to a novice inventor, they may tell me about various soundings they have made. Typically these would be with trusted confidantes. Sometimes there is a written NDA but not always. Even for the large IPO customer, completing disclosures is going to be hard for the Patent Department, so let's eliminate them. Who will advocate for them - the prior user not in terribly good faith perhaps. A patentee may want to make a disclosure to emphasise that something is not prior art. I would write that into the specification and it could be considered good practice and I rather like the idea. However voluntary declarations are a very different proposition than a mandatory one. I bet our insurers will advocate against any costly mandatory traps.

I think that means I support E - What do you think?

CIPA will no doubt be making representations. If you are lucky enough to have your August CIPA journal you will have the secret diary. Representatives of larger organisations seem to be against grace altogether as it encourages indiscipline among their already spirited inventors. They also cite desire for certainty - but even with first to file there is no certainty when we delay publication as realistically we must.

If we are looking to promote innovation and more specifically the implementation of innovation then the grace period  benefits the eager innovator and some of those eager innovators are the ones who are best for the economy.

Do comment. The IPO also want your help, preferably before Wednesday.

Wednesday, 3 September 2014

So whose non-law job are you supporting?

This blogger's attention was riveted by a media release from the Law Society for England and Wales, which reads in relevant part:
"Every 100 legal services jobs support 67 more in the wider economy

In his first speech [which you can read in full here] as Law Society deputy vice-president, Robert Bourns told an audience of City lawyers, financial services firms and think-tanks that for every 100 jobs in the legal services sector, 67 are supported in other areas of the economy.
Robert Bourns also told delegates that:
· Every £1 of output of the UK legal services sector underpins £2.39 of output in the UK economy as a whole.

· Growth in the UK legal services sector is expected to increase to near pre-recession levels in 2015. ..."
Carrying an extra burden:
some folk just grin
and bear it
The SOLO IP blog has 258 email subscribers.  Assuming that just 50 of them are practising IP as solicitors in England and Wales [having made appropriate deductions from the 258 in respect of patent and trade mark attorneys, practitioners from other jurisdictions, IP administrators, students and people who have signed up to read this blog under a misapprehension that it's to with something completely different], this rather suggests that, while they struggle to earn their humble crust and then extract it from their clients, they are actually paying the wages, national insurance contributions and other outgoings for 33.5 others.

Apart from accountants, book-keepers, sellers of replacement printer cartridges and Starbucks baristas, what callings might these fortunate by-products of even solo IP practice have?  Suggestions, anyone?

Friday, 29 August 2014

Diversity for Solos

We have been having ever such fun over on twitter debating diversity in the patent profession. Our newest, youngest, most diverse CIPA council member, Simone Ferrara is concerned about the diversity of the profession. His interest was triggered by the BBC news post about the elitism in British society. Now we are all aware that CIPA is very interested in its role in building up the Status of the profession and other things like Learning and Influence and something beginning with C. That has been debated over on LinkedIn.

IPReg has some duty to understand the diversity of the profession. However, why should our representative body be haranguing us to recruit from other universities. It seems to me that recruitment strategies are something that CIPA could genuinely be interested in because they are interested in Learning training. The purpose of this blog is therefore to provide a platform with a little bit more space so that recruitment experts can have their say. How about it @EIP_Careers?

Students aspiring to be patent agents also need to know what attributes make a good patent attorney. In my opinion, there are some that need to be inherent in the candidate when the kitten arrives. One of those, that is most significant to me, is a quick mind that is receptive to new information. This means looking for high-end academic ability. Strangely, Oxford and Cambridge select on a similar basis. The sloggers of this world are going to have difficulty catching up with our inventors. I'm not looking for super high-end. I have known all too many Ph.D.'s who think they know far more than the inventor about a subject. What I want is a bright enquiring open mind.

On that foundation, many things can be taught. The law for one. An ability to write would be a superb starting point. Even that can be taught. Business issues and Marketing are skills the kitten will need to learn. Client facing skills are an interesting topic and Advocay is dear to my heart for the neglect it has suffereds.

The LinkedIn debate contains a suggestion that there is evidence that nearly all current patent agents have the personality characteristics of INTJ on the Myers Briggs test, which makes them bookish and not inclined to use twitter or social media. This makes getting them to debate a challenge. In many ways this may be the measure of diversity we want to change rather than the names of Univerisites on the CV. A few more outgoing, entrepreneurial members of the profession would be very welcome.

Hopefully the advent of ABS will allow kittens of wider skill sets to find homes within the patent profession. One way of encouraging such diversity would be to encourage patent agents to do a little bit more than boring old agency work, however profitable that might be. We need to open our minds and offer our clients more. In short, you might find that the solos you have excluded have something to say.

Wednesday, 27 August 2014

Background Copyright troubles Sally Cooper

From time to time I remember the essay question : “Original research = intelligent plagiarism. Discuss”. Particularly, it comes to mind whenever I come across disparate pieces of information and want to link them. The link in what follows is Sunday (day of the week) and buildings (or rather pictures of buildings) : no claim is made to originality (or intelligence).

On Sunday last (so August 2014) I went to the exhibition at the National Portrait Gallery titled “Virginia Woolf : Art, Life and Vision  A few days earlier I had read the exciting post of Eleonora Rosati on IPKat [ Thursday, 21 August 2014 : Taking a selfie inside the National Gallery: a copyright infringement?  ] which brought the news that “following similar moves by a number of other UK institutions .... the National Gallery in London has changed its strict no-photos-(please) policy”.

Was it the case (I asked myself) that the National Portrait Gallery was one of the “other UK institutions” ? Could I (for example) place myself in front of T.S. Eliot in this photograph and take a selfie of Virginia Woolf leaning towards me (replacing T.S. Eliot)?   Alas, the website of the National Portrait Gallery is clear that
“Photography is not permitted in temporary exhibitions or displays with loans”

So no photograph. But two thoughts :
1) on period of copyright : the line (bottom of the photograph on the website) is (C) National Portrait Gallery London. Lady Ottoline Morrell took the photograph of Eliot and Woolf in 1924. She died in 1938. So copyright expired in 2008 ?

20 on Representation of certain artistic works on public display” : Section 62 Copyright,Designs and Patents Act 1988 ('CDPA') applies to “buildings” and provides that “The copyright in such .... is not infringed by ...... making a photograph ... of it”. The follow-on is that “ Nor is the copyright infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of this section, not an infringement of the copyright”. So presumably I can take a photograph of the building that is the National Portrait Gallery and include that photograph in a (greetings) card which I post (online) on social media and post (envelope-with-stamp) to family and friends and others WITHOUT risk of an allegation of copyright infringement ?

On Sunday a couple of years ago (September 2012) I visited Spa in Belgium for the F1 Grand Prix and took a seat in the stand at Eau Rouge (being an “uphill corner” on the circuit). So a chord was struck when Lee Curtis published on the Linked In Group of Automotives+ IP news that “ .... Infiniti have applied to register the trade mark EAU ROUGE in the US for cars, despite the fact the mark has been registered in the EU by the famous race track”

The detail that attracted attention was Lee’s reference to “the UKIPO practice on the registration of the names of famous buildings”. The relevant paragraph in the Manual – headed FAMOUS BUILDINGS (Pictorial representations (emphasis supplied) or names of well known buildings) - contains the text :
“traders in the area of a famous building, which is likely to be a tourist attraction, should be free to produce mementos and ornaments bearing the name or representation (emphasis supplied) of the building without infringing the rights of another."
Also the text :
“if the building is a tourist attraction then the objection should be raised”. 
As to where it leads :
A) If I take a photograph of the building that is the National Portrait Gallery and thereafter distribute this photograph – the law of copyright sanctions this activity : section 62 CDPA 1988 (above)
B) If I take a photograph of the building that is the National Portrait Gallery and try to register this (representation) as a trade mark at the UK Trade Mark Registry, there is likely to be discussion with the Registry as to whether the mark applied for is a famous building / tourist attraction : see Manual / UKIPO practice (above)
C) The interests of the National Portrait Gallery lie in the UK Trade Mark Registry coming to the conclusion that the building that is the National Portrait Gallery is a famous building / tourist attraction so that my attempt to register is refused
D) But such a conclusion means (presumably) that an Application of the National Portrait Gallery to try to register a photograph of the building that is the National Portrait Gallery must also fail.

So (I ask myself) will the public-spirited owners of buildings which have a “Photographic Policy” be amending same with the note “This building is a famous building / tourist attraction” in the hope this deflects / reduces the possibility of a photograph (representation) of that building being registered by a third party as a trade mark ?

What do you call a UPC judge?

Unified patent courts (UPCs) will be with our European readers soon, though it's too early to say precisely when. Some lucky person will, when the UPC opens its doors for the first time, become the first human on planet Earth to address a UPC judge face-to-face. This encounter raises a small but intriguing issue: how does one address a IPC judge? Something along the lines of "My Lord" would be grand, and deeply respectful, but is it appropriate for a union of countries of which many have scrapped the trappings of lordship and ladyship. "Your honour" is a possibility too -- but perhaps honour is something that has to be earned rather than accorded in the hope that the addressee may turn out to be a person of honour.  "Your Worship" is definitely a non-runner, and "Your Judgeship" sounds contrived.

Presumably the mode of address will have to sound plausible in whatever language the court operates, and will have to work in terms of gender equality.

Maybe it's time to institute a new word for a UPC judge, just as we had to mint a new word for Europe's most common currency.  Can we come up with something more original than "the Euro", though?  Suggestions?

Monday, 25 August 2014

What are my Chances?

Do you have the sort of client who wants to know the chances of success before you have the facts. Look no further than Darts-IP is the case law database for you. Not only have they collected a multitude of case reports from across the world, they have analyzed them and identified the points of law considered and the outcomes. If you wanted to know your chances of avoiding revocation in class 3 based on proper reasons for non-use, the above chart can give you some ideas but not a lot of hope. Double click on the web image to enlarge. Is it any better for class 5
or perhaps class 9
No for that class your chances are right down in the doldrums, a mere 5% at OHIM! Sample sizes are rather small. If you were a subscriber you would have all this lovely data at your fingertips and you would be able to review the decisions and translate the ones that are not in  English (works best in Google Chrome) and be better informed about the relative generosity of the Czech IPO in refusing to revoke unused marks.

As well as all this amazing but rather raw data, there is also an electronic book called Dixit Curia that gives helpful analysis on the various points of law and explains to me why its proper that proper reasons for non-use should be hard to find, but does not give many examples.

A good many UK practices are using this intriguing tool, so if you would like to join them contact Gary Cook and if you are a true SOLO remember to mention that . The Bodleian Library subscribes but the BL Business & IP Center does not seem to yet but for the less frequent user library access would be very convenient.

By the way there are little yellow stars on some cases and they do seem to be significant ones and colored bars alongside others that are not explained (or I missed it ) in the User Guide.

The databases available cover patents, domains, designs, copyright and unfair competition too.