16th EIPIN Congress: The Innovation Society and Intellectual Property (event review)

by María Victoria Rivas Llanos

Last 9-11 April, the 16th EIPIN Congress took place in Munich, Germany. The first two days the event was held at the European Patent Office (Isar building) and the last day’s session took place at the Max Planck Institute for Innovation and Competition. Each day’s presentations were covered under a general module which presented several open questions in the field of intellectual property and innovation.

Among the speakers there were distinguished university professors from the five EIPIN institutes, namely: Queen Mary Intellectual Property Research Institute, Queen Mary University of London; Magister Lvcentinvs, University of Alicante; Munich Intellectual Property Law Center (MIPLC); Intellectual Property Law and Knowledge Management (IPKM), Maastricht University; and Centre for International Intellectual Property (CEIPI), University of Strasbourg.

The congress was an invaluable experience for the most promising students from the aforementioned institutions to meet their neighbouring counterparts, in order to exchange views and work together in a co-operative project. The students were divided in 10 groups, each of them composed by one member of each of the participating institutes. Each group of five students was given a research topic, in relation to which every student was able to present questions to the speakers. Once the projects are submitted in the forthcoming months, a winner team will be nominated and will present its topic in the EIPIN Congress next year, such as did in this occasion the winning team from EIPIN 2014.

All in all, it could be qualified as a highly enriching opportunity for students and academics to get updated on the “hot topics” in the world of IP, in an atmosphere which fostered the intellectual and multicultural exchange.

The topics were divided as follows:

Thursday 9th April

Professor Josef Drexl (Max Planck Institute for Innovation and Competition, Munich) opened the session with a warm welcome to the participants and thankful words to the EPO for hosting and “co-organising” the first two days of the event.

Subsequently, Professor Drexl dedicated a few words to the new Pan-European Seal Professional Traineeship Programme, promoted in partnership by the OHIM and the EPO, in which the five EIPIN institutions are already participating.

Next, Professor Drexl presented an overview of the topics that would be discussed in the congress, as possible solutions to the so-called “value of death” problem and the ways in which Intellectual Property Rights (IPRs) might be understood to hinder innovation and creativity.

Mr. Carlo Pandolfi (Director of the International Co-operation Department of the European Patent Office) talked about the role of the EPO in the innovation society and strengthened also its character as coordinating entity at the service of the society in general and users of the system in particular. Mr. Pandolfi then presented the international projects in which the EPO is currently involved and the tools that it shares with its collaborating States, with the common goal of approximating individual practices towards the harmonisation of the patent system.

After Mr. Pandolfi’s speech Professor Ulrich Gassner (Dean of the University of Augsburg) introduced the first module of the congress, headed “A need to limit the expansion of intellectual property”. The module was divided in the following questions:

Test data protection as IP: A tool for generating innovation?

Professor Meir Perez Pugatch (Intellectual Property Law and Knowledge Management, Maastricht University) presented Test Data Protection (TDP) in the pharmaceutical sector as a parallel system to patent law, with particular influence in those countries where patent protection is not available. Professor Pugatch strengthened the significance of TDP especially in the area of biosimilars, where generic companies would no longer be able to rely on other innovators’ data for their bio-equivalence test. From the innovators perspective, Professor Pugatch affirmed, TDP constitutes a supplementary form of protection which mitigates the risk run by pharmaceutical companies that their investment was in vain (the aforementioned “value of death”).

Utility patents – A useful national strategy for promoting innovation?

Professor Uma Suthersanen (Centre for Commercial Law Studies Queen Mary University of London) presented two case studies of national implementation of utility models, Australia and Japan. Both cases demonstrated that a system that presents a low threshold to obtain protection does not necessarily foster innovation. There need to be certain limitations in the subject matter of protection and there need to be substantial examination, the lack of these two elements was the cause of failure of the Australian and Japanese systems. Professor Suthersanen concluded pointing out that although regimes of the kind might have some advantages for local innovation, they also run the risk of abuse of the system by the big players in the industry that can lead to “patent thickets”.

UPOV- style plant variety protection – Does it fit for developing countries?

Professor Mrinalilini Kochupillai (Munich Intellectual Property Law Center) exposed the Indian Protection of Plant Varieties and Farmers’ Rights Act, 2001 as an example of national implementation of the International Convention for the Protection of New Varieties of Plants, 1991. Professor Kochupillai argued that granting equal rights to farmers and breeders in India, as the 2001 Act does, might not be a fair solution to the small farmer who must compete with big breeding companies in the same terms. Professor Kochupillai pointed out that the 2001 Act, by giving the same rights to people unequally placed, does not meet its function of promoting innovation, but rather creates a culture of non-sharing which is in contrast to the local traditions in countries like India.

Friday 10th April

The second day of the congress gave commence to the second topic for discussion: “The need to limit the scope of intellectual property”. It was divided in the following questions:

Safeguarding the public domain in the interest of innovation

Professor Alexander Peukert (Goethe University Frankfurt am Main) discussed the legal status of the Public Domain (PD) as information non-protected by IPRs, with reference to his book “The Public Domain: Theory, Function, Doctrine”. Professor Peukert defined the PD regime as a non-rights-concept or “legally protected freedoms” (following the theory of Professor Robert Alexy) and presented two approaches for its protection:

  • A negative approach, which appeals to public authorities to protect the PD through limitation of IPRs. This approach conceives IPRs as an exception to the basic principle of equal negative liberty to use PD information by everyone under equal terms for every lawful purpose.
  • A positive approach, which protects the PD against private actors claiming exclusivity where there is none, through procedural safeguards (against invalidation or infringement proceedings) or through substantive law (contractual and non-contractual).

Professor Peukert closed his speech with what he called “a sceptical conclusion” regarding the PD protection system, both in terms of the structural asymmetry that it presents and also the improbability of a strong non-rights-regime.

Enhancing creativity through copyright exceptions and limitations in the interest of authors and users 

Professor Christoph Geiger (Centre for International Intellectual Property, University of Strasbourg) exposed three case studies where new creators were able to use public domain material for their own projects under the framework of copyright limitations and exceptions; namely: SMEs in the UK media sector, Kick-starters’ media projects and Wikipedia biographical pages. These cases are examples of the high success of projects related to public domain and how there is a demand for re-using material in the public domain, which still has further innovative potential. Nonetheless, there is a need for tools that allow the user for sourcing copyright material in order to be able to find the part of it that has already fallen into the public domain.

Free-riding on the repute of trade marks – Does protection generate innovation?

Professor Ansgar Ohly (Ludwig Maximilian University of Munich) explained the essential role that trademarks play in the market. Firstly, they work as channel of communication (of quality, luxury, prestige, etc.); secondly, they interact with competition law by giving enterprises the opportunity to build up a reputation in the market and also by giving consumers the possibility to distinguish between different products; and thirdly, they have an origin function that is essential for encouraging innovation and competition since it prevents confusion between products impeding dilution or misappropriation. Professor Ohly concluded emphasising the social purpose that trademarks meet by guaranteeing transparency in the market and how they should be limited to this purpose.

Standard-Essential-Patents (SEP) – Limiting exclusivity for the sake of innovation

Professor Peter Picht (Max Planck Institute for Innovation and Competition, Munich) discussed the advantages and the risks of patent standardisation (e.g. when used in an anti-competitive way with “hold-up” or “hold-out” effect in the market). Professor Pitch explained the cases in which the conduct of a SEP holder can be considered a violation of EU competition law due to abuse of a dominant position in the market, for instance through patent ambush, violation or denial of FRAND[1] commitments, etc. Professor Pitch concluded by presenting the potential role of Standards-Setting-Organizations (SSOs) as a monitoring body in charge of determining SEP and FRAND agreements, assuring its commitment and arbitrating FRAND-related conflicts. SSOs would nonetheless have to face a number of obstacles in the development of this task, namely their domination by market participants and its little sway over non-participating patent holders, as well as the difficulty to specify FRAND terms.

Revisiting the patent misuse doctrine – Its potential contribution to maintaining incentives for innovation

Professor Daryl Lim (The John Marshall Law School, Chicago) approached the doctrine of patent misuse from the perspective of patent and antitrust policies, through some examples from the US case law, namely: Morton Salt v. Suppiger (principle of equity in patent law)[2], USM Corp. v. SPS Technologies (misuse tested under antitrust principles)[3]. With a more recent decision from 2013, Kimble v. Marble[4], professor Lim explained the complexity of the patent system in the US, particularly in what refers to the application of the misuse doctrine where sometimes there is a high punitive disproportionality (a little mistake of the patent owner can lead to the unenforceability of all his patent rights) and a great discretion of judges applying the principle of equity.

Presentation of the Report of the winning team of 2014

The winning team of 2014 exposed its research project on exhaustion of distribution rights to intangible copyright protected works, based on the 2012 CJEU decision UsedSoft GmbH v. Oracle International Corp[5].

Saturday 11th April

Under the third and last topic of the congress New Paradigms of Innovation in Intellectual Property” the following issues were discussed:

Open and Collective innovation – A different form of making use of exclusivity: the case of 3D printing

Professor Nari Lee (Hanken School of Economics, Helsinki) defined the different forms of open and collective innovation and used the example of the 3D Printing Case[6] to explain how IPRs interfere with innovation. According to Professor Lee, there are three types of IPRs that can hamper innovation:

  • IPRs on the technology (i.e. patents on the 3D scanning or printing technology itself or other computer services for data processing), which are less controversial.
  • IPRs on the object, whose protection is broad and might be controversial (i.e. patent, copyright, trademarks and design rights on the object that is reproduced using 3D printing).
  • Intermediary liability (i.e. design repositories, 3D platforms, etc.). 

Transformative use and user-generated content – Integrating new paradigms of creativity in copyright law

Professor Matthias Leistner (Faculty of Law University of Bonn) closed the event with user-generated content from copyright protected works, through the use of exceptions such as parody or fair use. Professor Matthias explained how copyright exploitation rights are fully harmonised in Europe under the InfoSoc Directive[7] (e.g. Infopaq Case[8] and Painer Case[9]), whereas adaptation rights are only harmonised in relation to computer programmes and databases. In the remaining areas, the EU Member States have liberty to regulate on adaptation matters. Professor Matthias closed the event with the following open questions:

  • Is there really a case for specific regulation of user-generated content or should it be covered under the fair use exception?
  • Should the use of copyright protected material in the context of user-generated content give raise to fair compensation?
  • Should copyright infringing source material be covered when the infringing character was not obvious?

[1] Fair, reasonable and non-discriminatory terms

[2] Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488 (1942)

[3] USM Corp. v. SPS Technologies, Inc., 694 F.2d 505 (7th Cir. 1982)

[4] Kimbell v. Marvell, 727 F.3d 856 (9th Cir. 2013)

[5] C-128/11, Judgment of the Court (Grand Chamber) of 3 July 2012

[6] Carl Deckard’s expired patents on Selective Laser Sintering (SLS)

[7] Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society

[8] C-5/08 Infopaq International A/S v Danske Dagblades Forening, Judgment of 16 July 2009

[9] C-145/10 Eva-Maria Painer v. Standard VerlagsGmbH and Others, Judgment of the Court (Third Chamber) of 1 December 2011