QMJIP

Queen Mary Journal of Intellectual Property

Month: January, 2015

February IP Events

by Pedro Malaquias

Here is the list of Intellectual Property events occurring in February 2015. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP #IPEvents and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM

  • 2 February – London – QMUL CCLS – Copyright law and freedom of creative expressionLink.
  • 2 February – London – QMUL CCLS – School of Law Doctoral Research Seminar Series 2014-15: Copyright law and freedom of creative expression (Paula Westenberger)Link.
  • 2 February – London – LSE Law Society – The Heart of the Matter: Original Works and Copyright – Link.
  • 3 February – London – Taylor Wessing – Trade Mark Litigation Seminar – “Fight the Good Fight”Link.
  • 3 February – London – CIPA – Personalised MedicineLink.
  • 4 February – London – Bristows – The Role of Patents in treating Alzheimer’s: Reconnecting the dotsLink.
  • 5 February – London – Dentons – International Healthcare Masterclass: strategies for protecting your intellectual propertyLink.
  • 10 February – London – QMUL CCLS – School of Law Doctoral Research Seminar Series 2014-15: To what extent does the current law on copyright reflect the needs of conceptual art practices? (Shane Burke)Link.
  • 10 February – London – QMUL CCLS – To what extent does the current law on copyright reflect the needs of conceptual art practices?Link.
  • 10 February – London – IALCI – Intellectual property – How to protect, manage & monetize the know-how & intangible capital of luxury & fashion brands?Link.
  • 11 February – Coventry – Coventry Law School – The International Registration of Trademarks under the Madrid System and the Role of the International Bureau of World Intellectual Property OrganisationLink.
  • 11 February – Oxford – FLGS – Patent Policy in Genomics and Human Genetics: A Public Health PerspectiveLink.
  • 12 February – London – CCLS QMUL – Creativeworks London: Digital Music WorkshopLink.
  • 12 February – Liverpool – CIPA – Merseyside MeetingLink.
  • 12 February – Cambridge – CIPIL – The New European Patent Environment: an Opportunity or a Failure?Link.
  • 18 February – Coventry – Coventry Law School – Trade Mark Law in Practice – Link.
  • 19 February – Bournemouth – CIPPM – The Unitary Patent and the Unified Patent Court: a private international law perspectiveLink.
  • 24 February – London – BLACA & The IPKat – Sensory CopyrightLink.
  • 24 February – London – Managing Intellectual Property – International Women’s Leadership ForumLink.
  • 24 February – London – ITMA – Surveying the landscape – A review of survey evidence in UK trade mark mattersLink.
  • 24 February – Manchester – MBL Seminars – Trade Marks – Advanced: LitigationLink.
  • 25 February – Coventry – Coventry Law School – Intellectual Property, Fashion Design and Luxury Brand Management – Link.
  • 25 February – London – MBL Seminars – Anti-Trust & Competition Aspects of Intellectual PropertyLink.
  • 25 February – Leeds – MBL Seminars – Intellectual Property Law UpdateLink.
  • 25 February – London – UCL IBIL – Average Consumer in Trade Mark LawLink.
  • 25 February – Cambridge – CIPA – CIPA does speed-datingLink.
  • 25 February – London – Management Forum – Avoiding Pitfalls in Patent/Know-How Licences and R&D CollaborationsLink.
  • 26 February – London – Taylor Wessing – Modernising Copyright Breakfast SeminarLink.

CONTINENTAL EUROPE

  • 2-6 February – Alicante, Spain – Magister Lvcentinvs – XIII Edition of the CTM Intensive ModuleLink.
  • 5-6 February – Paris, France – UNIFAB – Intellectual property: an essential investment for growth?Link.
  • 9 February – Paris, France – IRPI – Conférences d’actualité jurisprudentielle 2015 – Droit des MarquesLink.
  • 12 February – Stockholm, Sweeden – FICPI Sweeden – Seminar on Admissible Claim Amendments in Europe, Japan, US and IndiaLink.
  • 12 February – Strasbourg, France – CEIPI – Vers la Juridiction Unifiée des Brevets – Perspectives du Comité PréparatoireLink.
  • 16-18 February – Geneva, Switzerland – WIPO – WIPO Expert Forum on International Technology TransferLink.
  • 19-20 February – Alicante, Spain – AIPPI Spain – XXX Jornadas de Estudio sobre Propiedad Industrial e Intelectual del Grupo Español de la Aippi 2015Link.
  • 23 February – Brussels, Belgium – WIPO – Roving Seminar on WIPO Services and InitiativesLink.
  • 24 February – Brussels, Belgium – European Commission – Digital for Europe Stakeholder ForumLink.
  • 24-25 February – Munich, Germany – IBC Legal – Biotech and Pharmaceutical PatentingLink.
  • 26-27 February – Brussels, Belgium – Annual Conference on EU Law in the Pharmaceutical Sector 2015Link.
  • 27 February – Munich, Germany – Insufficiently clear and clearly insufficientLink.

NORTH AMERICA

  • 3 February – New York, New York, USA – Kernochan Center for Law, Media and the Arts, Columbia Law School – Garcia v. GoogleCan an Actor’s Performance Support [a Share in] Copyright Ownership?Link.
  • 10 February – New York, New York, USA – Kernochan Center for Law, Media and the Arts, Columbia Law School – Aereo and its AftermathLink.
  • 12 February – Bloomington, Indiana, USA – The Center for Intellectual Property Research Maurer School of Law – Five Things Every Academic Should Know about Patents and CopyrightLink.
  • 12 February – Nashville, Tennessee, USA – CSUSA – Music Licensing in Europe and North AmericaLink.
  • 17 February – New York, New York, USA – Kernochan Center for Law, Media and the Arts, Columbia Law School – News Aggregators and News Exceptionalism Link.
  • 17-19 February – San Jose, California, USA – Global Innovation SummitLink.
  • 19 February – New York, New York, USA – CSUSA – Designing a Greater System of Protection for Fashion: The Future of Fashion LawLink.
  • 22-25 February – New Orleans, Louisiana, USA – AUTM – 2015 Annual MeetingLink.
  • 24-26 February – New York, New York, USA – IIRUSA – ePharma Summit 2015Link.
  • 26 February – Mexico City, Mexico – MARQUES – Coexistence Agreement WorkshopLink.
  • 27 February – Chicago, Illinois, USA – John Marshall Law School – 59th Annual Intellectual Property Law ConferenceLink.

ASIA & OCEANIA

  • 6 February – New Delhi, India – INTA – India Emerged: Protecting Your Brand in India’s Evolving EconomyLink.
  • 6 February – Beijing, China – Globe-Law Law Firm & INTA – Identification of “malice” in trademark squatting, malicious infringement, and the impact of malice on amount of compensationLink.
  • 14-15 February – Gujarat, India – MarkPatent – 10th Annual International Seminar: Intellectual Property Rights Business Boosters…Link.
  • 16 February – Singapore, Singapore – IP Academy – Media Producer’s IP ToolkitLink.
  • 18 February 2015 – Port Pirie, Australia – IP Australia – Protect your creative expression – a free workshop for indigenous artistsLink.
  • 19 February – Perth, Australia – ACLA – What kind of signs are registrable as trade marks?Link.
  • 24 February – Melbourne, Australia – ACLA – Capturing IP in your businessLink.
  • 26 February – Singapore, Singapore – IPOS – Project IP Partners: Know your IP in PhotojournalismLink.

@PedroMMalaquias (LL.M. in Intellectual Property Law at Queen Mary, University of London; Portuguese Qualified lawyer; Queen Mary Journal of Intellectual Property, Assistant Editor)

“Preparing for the Unitary Patent Package” (event review)

by María Victoria Rivas Llanos

On 4-5 December 2014, a conference on the hot topic of the Unitary Patent Package took place in the Old Hall of Lincoln’s Inn, in London. The conference was organised by the Academy of European Law (ERA) in cooperation with the Centre for Commercial Law Studies (CCLS), Queen Mary University of London. Professor Duncan Matthews (Chair in Intellectual Property Law at Queen Mary University of London, CCLS) and Florence Hartmann-Vareilles (Advocate and Head of the Section European Business Law at the Academy of European Law) chaired the conference.

Speakers included experts from the High Court, members of the European Patent Organisation and the European Patent Institute, law firms and companies specialising in Intellectual Property, as well as renowned university professors, making for rich discussion over the two days.

Thursday 4 December:

An introduction to the history of the Unitary European Patent by Mr. Justice Richard Arnold (Judge of the High Court of Justice, Chancery Division, London) opened the event.

It was followed by an overview and update of the work of the European Patent Organisation (EPOrg) Select Committee by Mr. Jérôme Debrulle (Head of the Belgium Intellectual Property Office and Chairman of the Select Committee of the EPOrg), who introduced the attendees to the main features of unitary patent protection, its institutional framework and the main decisions behind its implementation.

Professor Manuel Desantes (University of Alicante, Spain) presented Spain’s second legal challenge before the CJEU after the Opinion of the Advocate General Mr. Ives Bot in Case C-146/13 Spain v Parliament and Council. Professor Desantes underlined the inconsistency of the Opinion and noted that, although both a Unified Patent Court (UPC) and a European patent with unitary effect are certainly needed, it should be done on the foundations of a robust system. The unitary patent protection system is not robust enough in its current state, Desantes argued. In his view, the shortcomings are: the mix of EU and International Law procedures, the vague concept of “enhanced cooperation” in the Unitary Patent Regulation[1] and the presupposition of economical aspects.

Ms. Bettina Wanner (Bayer Intellectual Property GmbH, Monheim) talked about the need for clarification in relation to Supplementary Protection Certificates (SPCS) on unitary patents, currently based on the national laws of the Member States. Ms. Wanner noted several points that need to be clarified under the unitary patent system: first of all, which authorities (EPO, OHIM or National Patent Offices) will be responsible for granting SPCs; secondly, which Court will be competent for Appeals of SPCs (according to Art. 32. (a)-(d) of the UPC Agreement[2] the UPC will not be competent for this); and thirdly, what are the territorial[3] and material[4] scopes of the unitary patent.

Mr. Pierre Véron (member of the Drafting Committee on the Rules of Procedure for the UPC and Partner at Véron & Associés, Paris) presented the Unitary Patent as an object of property. Pursuant to Arts. 5(3) and 7(1) EC Regulation No. 1257/1012[5], “a European patent with unitary effect as an object of property shall be treated in its entirety and in all participating Member States as a national patent of the participating Member State in which that patent has unitary effect…”. Thus, the applicable law for ownership of unitary patents will be the Member States national law[6], the European Patent Convention EPC[7] and the UPC Agreement[8].

Mr. Kevin Mooney (partner at Simmons & Simmons LLP and Chairman of the drafting committee for the rules of procedure for the UPC) spoke about the procedural rules that will govern the actions of the new UPC. The 17th Draft of Rules of Procedure of the UPC[9] will be amended subsequent to the public consultation in Trier on 26 November 2014.

Ms. Vicky Salmon (solicitor and patent attorney at IP Asset LLP and chair of the CIPA Litigation Committee, London) and Mr. Tony Tangena (President of the European Patent Institute, Munich) focused on the rights of representation before the UPC. Ms. Salmon explained the rules on the European Patent Litigation Certificate (EPLC) and other appropriate qualifications[10]. Mr. Tangena strengthened the importance of the representation of a qualified patent attorney before the UPC.

Thursday 5 December

The second day started with a round table with Mr. Alan Johnson (partner at Bristows LLP and Chair of the AIPPI Committee on the UPC and Unitary Patent Package, London), Professor Maximilian Haedicke (member of the University of Freiburg and Judge at the High Regional Court of Düsseldorf, Germany) and Mr. David Musker (partner at RGC Jenkins & Co., London). Mr. Johnson explained the transitional provisions contemplated by Art. 83 UPCA.[11] Professor Haedicke focused on two relevant areas of patent litigation before the UPC: first, the problems of the bifurcation in the UPC-System in relation to German Courts and the Rule 40 (b) of the UPC Rules of Procedure[12], and secondly, the sources of law and competent Courts under the new system. Finally, Mr. Musker explained the rules that will govern revocation and opposition procedures before the UPC and the stakeholders that might benefit the most from the outcome of these procedures.

Mr. Samuel Granata (Judge at the Commercial Court of Antwerp, Belgium) explained how actions for damages[13] and the execution of decisions[14] will be processed before the UPC.

Mr. Gleert Glas (partner at Allen&Overy, Brussels) gave a number of tips to conclude good patent settlement agreements, particularly regarding the pharmaceutical sector (e.g., “pay for delay” or “reverse payment” settlements). He also explained the effects of the revised Technology Transfer Block Exemption Regulation (TTBER)[15] on Competition Law.

Mr. Neil Feinson (Director of the International Policy Department UKIPO, London) presented the possible challenges and prospects for the future within the European patent protection system.

All in all, it was a full two days of discussion and debate at a time when so many changes are going on and questions are unanswered. The quality of the speeches from well-known personalities in the world of Intellectual Property gave the attendees an in-depth view on the current issues surrounding the thrilling project of the Unitary Patent Package.

Maria Victoria Rivas Llanos
QMJIP Associate Editor

[1] Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of the unitary patent protection (Unitary Patent Regulation).

[2] Agreement on a Unified Patent Court (UPC Agreement, 2013/C 175/01); signed on 19 February 2013.

[3] EC Regulation No.1257/2012 (n.1), Art. 5. 2

[4] Regulation (EU) No. 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplemantary protection certificate for plant protection products, Art. 5. Regulation (EU) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medical products, Art. 5.

[5] EC Regulation (n.1).

[6] ibis., Art. 7.

[7] Convention on the Grant of European Patents of 5 October 1973, European Patent Convention (EPC); Arts. 60 and 74.

[8] UPC Agreement (n. 2), Art. 32 (1) and (2) and Art. 47.

[9] 17th Draft of Rules of Procedure of the Unified Patent Court of 31 October 2014

[10] Draft Decision of the Administrative Committee on the Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications pursuant to Article 48 (2) of the Agreement on a Unified Patent Court.

[11] UPC Agreement (n.2).

[12] 17th Draft (n.10).

[13] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Art. 13; UPC Agreement (n.2), Art 68; Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, Art. 4 (4).

[14] UPC Agreement (n.2), Arts. 31 and 89 (1); Regulation (EU) No. 542/2014 of the European Parliament and of the Council of 15 May 2014 amending Regulation (EU) No. 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice, Art. 71; Rules of Procedure UPC (n.9), Rule 118.9.

[15] Regulation (EU) No. 316/2014 of the European Commission of 21 March 2014

on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements.

‘Je suis Charlie’ TM applications, the public policy and the lack of distinctive character

by Axel P Ringelhann

Last Friday, 16 January 2015, OHIM published a press release on its website according to which CTM applications consisted of or which contain the phrase ‘Je suis Charlie’ could be considered ‘contrary to public policy or to accepted principles of morality’ (Article 7 (1) (f) CTMR) as well as non-distinctive (Article 7(1)(b) CTMR).

Earlier last week IPKat informed that somebody applied for a trade mark consisting of ‘Je suis Charlie’ for the goods and services in classes 3, 16, 25, 28, 32, 35 and 38 of the Nice Classification at the Benelux Office for Intellectual Property.

A check on TMView reveals that also at the USIPO, someone applied for a word mark consisting of the three words in question for services in class 35 of the Nice Classification.

As for the French IPO (INPI), on 13 January 2015, it informed in a press release that as of 7 January 2015, numerous ‘Je suis Charlie’ applications have been filed. The INPI decided not the register these applications, since the signs would lack of distinctive character. This is due to the fact that the slogan is used by the public at large, and therefore cannot be pocketed by a one single competitor.

Axel Ringelhann
QMJIP Assistant Editor

Biotechnological inventions: patentability of ova

by leapuigmal

By contrast, in the present case, the Court hold that in order to be classified as a ‘human embryo’, a non-fertilised human ovum must necessarily have the inherent capacity of developing into a human being. Consequently, the simple fact that a parthenogenetically-activated human ovum commences a process of development is not enough for it to be regarded as a ‘human embryo’. Accordingly, uses of this organism for industrial or commercial purposes may be patented.

In fact, this case opposed the UK Intellectual Property Office (IPO) to a biotechnology company called International Stem Cell Corporation (ISC). The latter applied to the IPO for two national patents regarding the processes that produces pluripotent stem cells from parthenogenetically-activated human ova. Nevertheless, the Hearing Officer of the UK IPO refused the two applications on the basis of the case Brüstle. Consequently, he concluded that these applications were excluded from patentability according to the Article 6(2)(c) of the Biotech Directive. ISC appealed the decision to the UK High Court of Justice. Considering that the question of the patentability of human embryionic stem cell was unclear, the referring court stayed the proceedings and asked to referred the CJUE whether unfertilised human ova whose division and further development which have been stimulated by parthenogenesis, and are incapable of developing into human beings, are included in the term “human embryos” under the Biotech Directive.

In the same sense that the conclusions of the Advocate General, the CJUE holds that, in order to be classified as a ‘human embryo’, a non-fertilised human ovum must necessarily have the inherent capacity of developing into a human being. The reasoning of the Court and the Advocate General follows the submissions of the applicant that a parthenote is not capable of commencing the process of the development of a human being, in the light of knowledge which is sufficiently tried and tested by international medical science. However, one caveat concerns the eventuality that a parthenote is manipulated genetically in such a way that it can develop to term and thus into a human being. For instance, certain manipulations have already been tried successfully on mouses in the UK. Hence, it cannot be excluded categorically.

In connection with this problematic, several concerns should be taken into account not only economic but also ethic. Indeed, the capacity of human embryonic stem cells to form various tissues has created hopes for finding therapies for numerous heretofore incurable diseases. As a result, it is important to find a balance between economic interests, ethical concerns and legal issues.

To conclude, this decision will remove a threat to biotech research in Europe, the unfertilised human ova whose division and further development have been stimulated by parthenogenesis do not fall under the restrictions on patentability laid down by the court in the case Brüstle. Now, it is time to the UK Court to determine whether or not the International Stem Cell Corporation’s work is patentable.

 

Lea Puigmal
QMJIP Assistant Editor

1. Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions
2. Brüstle v. Greenpeace, 18 October 2011 (case C-34/10)
3. “Parthenogenesis consists in the activation of an oocyte, in the absence of sperm, by a variety of chemical and electrical techniques and the organism thus created is called a parthenote.” (Curia, Press release No. 181/14)