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Issue 06/2006 of the Official Journal of the EPO has been Published on the EPO Website.

Today,

Issue 06/2006 of the Official Journal of the EPO has been published on the EPO website. Inter alia, a Communication from the Enlarged Board of Appeal concerning case G 2/06 is published therein. Moreover, the Decision of the Legal Board of Appeal dated 27 April 2005 (J 25/03 - 3.1.01) is printed. In the headnote the decision states that a request for retraction of a letter of withdrawal of a patent application is no longer possible if the withdrawal has been mentioned in the Register of European Patents at the time its retraction is applied for if, in the circumstances of the case, even after a file inspection there would not have been any reason for a third party to suspect, at the time of the official notification to the public, that the withdrawal could be erroneous and later retracted.

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U.S.-PTO: Proposal for Fast-Track-Examination.

I just have learnt from the

Patently-O Blog operated by

Mr. Dennis Crouch on a new initiative of the U.S.-PTO to speed up patent examination in certain cases promising a 12 month final decision on patentability. To qualify, a patent applicant must:

File the application electronically with a petition to make special (with fees paid and appropriate declaration);
Conduct a search of prior art;
Submit all prior art that is closest to their invention;
Explain what the prior art teaches and how their invention id different;
Explicitly discuss how the invention is useful and show how the written description supports the claimed invention;
Include only 20 claims (3 independent);
Agree to have an interview with the Examiner; and
Agree to base claims of patentability only on the independent claims.

The applicant will only be given one-month (non-expendable) to reply to any office action.For details, see here.

Should this theoretically also be considered as an option for the examination proceedings before the EPO? Would it be desirable?

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Monday, June 26, 2006

Grandfather's War Memoires.

Some weeks ago, Mr. Florian Müller had put

his memoirs on the history of the EU Draft Directive on the patentability of CII on the Internet for free download. Now he has indicated directions on

ecommercetimes.com. Ms. Jennifer LeClaire had introduced the interview with Mr. Müller as follows:

"[...] Florian Mueller is at it once again. The founder of the NoSoftwarePatents.com campaign that led to the European Union's landslide vote against a proposal for a software patent directive is ready for the next battle.

The same forces that supported the software patent directive he successfully defeated are now trying to pass the European Patent Litigation Agreement. This new war over software patents in Europe will officially break out on July 12 at a hearing to be held by the European Commission in Brussels, Belgium.

As this new legislative process begins, Mueller has released a memoir-style book called No Lobbyists As Such - The War over Software Patents in the European Union to tell the behind-the-scenes story of his last victory. [...]"

Well, Mr. Müller's opus is a voluminous recollection of events of the public dispute on the patentability of CIIs in 2000 to 2005 but it is without any critical reflection of the structure and doctrines of patent law. Underlying his book, there is a set of first principles which is never called into question, and on top of that list there is the assertion that the EU intended to 'legalise software patents' which of course are, in Mr. Müller's view, very, very bad. Not even a shadow of an analysis of the underlying concepts of law is given, and Mr. Müller clearly does not intend to discuss the problems arising out of the distinction between pre-grant measures (exclusions), on the one hand, and post-grant measures (exemptions), on the other hand. He also does not intend to discriminate computer-implementable inventions from computer-implemented inventions. And he does not discuss the different effects of the patent system on the enormous variety of business models out there. He simply tells a mostly anecdotal story on how he achieved that what he thinks is a success.

Surely patent people reading Mr. Müller's book could gain some insight into the way Internet based lobbying can work today. As he puts it in his interview:

"[...] LinuxInsider: Do you feel that small lobby groups can replicate your success in the EU parliament?

Mueller: Small lobby groups only stand a chance if they have leverage, and our leverage was the Internet. We utilized it to build a virtual network of activists throughout the 25-member union, and any other group that takes on a similar challenge will have to do something similar if it wants to build pressure on a pan-European basis. [...]"

In 2005, Mr. Müller and his allies could well have crippled the entire patent system. It was a very narrow escape, indeed. If some last-minute efforts of the industry had not been successful in catalysing an emergency exit to the proceedings of the second reading, the Parliament might well have voted in favour of very detrimental amendments to the Draft Directive, effectively ruining the patent system in its entirety for decades. And some of the patent people from outside of the industry appeared not to have really understood the importance of the Internet in political disputes of the twenty-first century. Setting up and maintaining a static website updated from time to time by inserting some euphonic and balanced statesmanlike formulas might perhaps no longer be sufficient to convince politicians, journalists, and the general public.

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Sunday, June 25, 2006

OHIM: Communication No 2/06 of the President of The Office of 19 June 2006 Concerning the Enlargement of the European Union in 2007.

In a

Document titled "Communication No 2/06 of the President of the Office of 19 June 2006 concerning the enlargement of the European Union in 2007", Mr. Wubbo de Boer writes:

"[...] I. Two new Member States

On 1st January 2007, the European Union will be enlarged for the sixth time since the establishment of the European Community in 1957. The Treaty of Accession was signed with Bulgaria and Romania on 25 April 2005.

This event follows the accession of ten Member States in May 2004, a challenge which the Office successfully met while bringing enhanced benefits to users of the Community Trade Mark and Design systems with the minimal of disruption.

Based on the experience gained in relation to that, the Office launched in July 2004 the implementation of the necessary internal preparations ('the road map towards the 2007 enlargement') to prepare for the changes anticipated as a result of the forthcoming accession, notably the impact of the new languages (in particular, Bulgarian which has a Cyrillic alphabet).

The present communication refers to the main consequences of enlargement on both the CTM and CD systems, as well as the additional preparations made by the Office to cope with this new enlargement round.

II. Consequences for holders of Community trade marks and Community designs

The results of the negotiations with Bulgaria and Romania as regards the Community Trade Mark and Designs systems are the same as the ones agreed with the ten Member States which joined in May 2004, notably the automatic extension of CTMs and CDs and the grandfathering of earlier rights.

From a technical point of view, this has been achieved by amending the list of Member States provided by Article 159a(1) CTMR and 110a(1) CDR, leaving the rest of the provisions as they were.

Therefore, the consequences explained in detail in the Communication No 05/03 of the President of the Office of 16 October 2003 concerning the enlargement of the European Union in 2004
(http://oami.europa.eu/.../05-03.htm) apply mutatis mutandi to the 2007 accession. The text of the relevant provisions can be found at the Office's website, in its enlargement section (http://oami.europa.eu/.../enlargement2007.htm).[...]"

No surprise, but worth to be noted.

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OHIM

IP Professionals Excoriated: "The Market is Overcrowded With People Who Have Developed One-Dimensional Competencies".

Patent professionals live in a challenging time now. While in former times the field of IP Law had mattered only in quite esoteric circles of experts, it now is well within the focus of public political attention.

The latest issue No. 18 of the (off-line only) printed magazine IAM ("Intellectual Asset Management") mostly consumed by IP management people is devoted to the question

"Time to break free - Why the world needs a new type of IP manager".

This motto appears, however, to be somewhat ambiguous: On the one hand, this can be understood as a call for some limited reforms within, in particular, but not limited to, the existing system of patent protection. Mr. Roya Ghafele of WIPO and Mr. Alexander Wurzer of PATEV report:

"[...] Although intellectual property is becoming recognised as an important business asset, we are not yet in a position to maximise its potential. One of the main reasons for this are the silos that have developed in the IP creation and exploitation process. In order to achieve maximum value, what is needed is a new type of IP professional. People who are able to see things in the round and who have an inter-disciplinary approach. [...] The market is overcrowded with people who have developed one-dimensional competencies. The current educational system does not lead to the training of IP professionals in a multi-dimensional way. There are few programmes that aim to train students in IP across various disciplines. While we have clearly succeeded in building up a solid labour force of IP lawyers, as well as general managers and engineers, there is a clear need for IP entrepreneurs who can think and act across disciplines. [...]"

Is there some "presumption of validity" for this hypothesis? I won't dare to disclaim outrightly. The training of the patent professionals indeed is quite limited, providing some aptitude to bring together technology, on the one hand, and law, on the other hand. But aspects of economy or politics are, in general, exterritorial to the realm of the patent attorneys.

Even more radical assertions are given by Ms. Sharon Oriel of Talisker & Associates in the same issue of IAM:

"[...] Today's patent system has developed over a period that can be measured in centuries. However, it may not be able to cope with the challenges of tomorrow. [...] Here is a prediction: Intellectual property is going through a transition; global patent law cannot keep pace with innovation and business models, within 20 years, therefore, patents as we know them today will be obsolete. Through unrestrictede access, knowledge goods become public goods. How do companies then make a return on knowledge?

Companies and countries will develop barter, license and variations on the open source model to create value fairly from intangibles. Fundamentally, intellectual property, when protected, provides incentives for economic gain for a limited time. The legal protection will be replaced by speed to market, which gives the incumbent a limited leadership advantage.

In the interim, we need to think about intellectual property much more broadly. Post-protection, the property enters the public domain and potentially becomes a raw material for the creation of new intellectual property. Even the publication of patents offers material for new ideas to be developed upon the foundation of prior art. In this manner, intangibles can contribute to a web of innovation which involves many companies and countries. Furthermore, patents may be understood as a form of currency- they are a business asset allowing for the transfer of knowledge while creating a market for that knowledge. Business people, policy makers and economists must all recognise that knowledge is the raw material for economic growth, whether we have patents or not. [...]"

For the time being, I do, however, not share this kind of twenty years doom perspective in view of the patent system. The views of Ms. Oriel might perhaps be unterstood by some as resembling a few proposals of FFII. She is a retired professional of The Dow Chemical Company, where her tenure included experience in Central Research, Plastics Technical Service & Development and Plastics Marketing. In addition, she spent over twelve years in Intellectual Capital Management, where her focus was on creating, aligning, and leveraging intangibles for sustainable growth. Currently, she is founder of Talisker & Associates, where she consults with companies and institutions seeking to create sustainable growth using intangibles, and is one of the company co-founders of the Intellectual Capital Managers Gathering. Hence, she apparently can't simply be addressed as a follower of Mr. Stallman and most probably she won't be on FFII's member list. This makes her contribution the more worrisome.

Patent professionals should well be aware of the changing overall climate. The debate on the so-called "software patents" is

dead but this does not mean that the general dispute on IP is over. To the contrary, it appears to have just started.

In this context, I think that it is exciting to learn that one of the three big Patent Offices of the world, namely the European Patent Office (EPO),

is extensively dealing which long-term scenarios which, at least in part,

might have gloomy sides. (Strange enough, however, that the server access statistics of this Blog tell me that only a minor portion of the visitors of this Blog are interested in that matter). And, what about certain rumours saying that the elected President of the EPO, Ms. Brimelow (due to take Office in about twelve months time from now) had given a presentation to AIPPI UK earlier this year, indicating that she was quite frightened about a presentation of Mr. G. von Krogh under the title "A World without IP", Co-moderation with D. Kirkpatrick and J. Zittrain, on the Annual Meeting of the World Economic Forum in Davos dated January 27, 2006?

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UK Patent Attorneys Oppose Move to Criminalise Patent Infringement.

Ms. Vicki Salmon on behalf of

CIPA:

"[...] However, in their enthusiasm to clamp down on counterfeiters, governments do need to be careful to avoid turning patent infringement into a crime. People who infringe patents are not normally involved in a deliberate attempt to mislead the public or to sell them sub-standard goods. Criminalising patent infringement can stifle innovation as it increases the penalties and risk for business if it misjudges the very complex and technical issues as to whether patent infringement has occurred or not. Trying civil patent actions in the UK has always been restricted to a handful of specialised and highly skilled judges and, even then, there is disagreement on patent infringement issues. It therefore appears very probable that giving this topic to lay magistrates and juries with no experience in this field is likely to prove very costly and create massive uncertainty. [...]"

More ...

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Thursday, June 22, 2006

UK: Patent Office Published 2005 National Intellectual Property (IP) Enforcement Report.

The UK Patent Office has just published the second

National Intellectual Property (IP) Enforcement Report (2005 report) on the Internet:

"[...] This year has been the first full year of the National IP Crime Strategy, and it has seen the laying of the foundations for an effective joined-up approach to tackling IP Crime across the country. The range of contributors to this report shows the variety of stakeholders committed to working together to tackle this problem, and the contributions themselves give evidence of how progress has already been made.

Looking to the coming year, a number of priorities can be identified:
The approach taken by the National Strategy on bringing together industry, government, and enforcers is widely seen as the way forward, and is already bearing fruit.
The legislative framework is broadly right, although there are specific issues still to be resolved, and the key is ensuring that this is translated into effective enforcement 'on the ground'.
Good intelligence is the key to effective targeting of criminal activity, and the TellPat database will be a vital tool.

Action at international level is every bit as important as within the UK. We are dealing with an international phenomenon, not a domestic cottage industry alone.
The role of the Internet is becoming more and more significant, and work with internet auction sites is going to be crucial.
More work needs to be done to build on recent initiatives to convince the public that counterfeiting and piracy is not a victimless crime.
This year will give the opportunity to build on the firm foundations now in place to translate the Strategy into further action against Intellectual Property Crime. [...]"

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Mr. Charlie McCreevy, European Commissioner for Internal Market and Services, on Intellectual Property.

Mr. Charlie McCreevy, European Commissioner for Internal Market and Services, today

has argued before the European Parliament Committee on Legal Affairs (JURI)as follows:

"[...] I would also like to say a few words on intellectual property rights.

Intellectual property rights are at the heart of a knowledge-based economy. Innovation is key for Europe's chances to remain competitive. Protection of intellectual property stimulates and rewards innovation. A solid legal framework is essential. We must get this right. We also need to keep up. Compared to others, Europe is losing ground. We need to see where progress can be made.
The Community Patent remains blocked in the Council pending a solution on the language regime. No workable consensus on the patentability of Computer Implemented Inventions was possible. Opinions remain divided on this question. From my side I maintain the position I gave when the Parliament rejected the Common Position. I will not bring a new initiative forward on this during my time as Commissioner for the Internal Market. I will leave this choice to my successor.

Recognising the economic importance of patents, I felt it was not a good thing to leave the entire patent agenda in limbo. For this reason we launched early this year a broad consultation on future patent policy in Europe. The consultation was a considerable success in terms of stakeholders' participation. We have received 2000 replies.

The next step is a public hearing on 12 July. The hearing will focus on four topics: the principles and values that underpin the patent system; the proposed Community patent; non-Community initiatives such as the London Protocol and the European Patent Litigation Agreement (EPLA); and possible areas for harmonisation at Community level. I am very pleased that the European Parliament has shown interest in this consultation, in particular, that your Chairman, Mr Gargani, has agreed to be the first speaker at the hearing.

We intend to publish a report summarising the outcome of the written consultation and of the public hearing. I hope to come back here to discuss the conclusions with you in the autumn. One thing is certain, progress in the patent field has to be made. Businessmen, faced with a 21st century global economy, scratch their heads in disbelief when they see us stuck in discussions about language regimes and regional distribution of courts. What they want is a cheaper and reliable patent system. That's why I think we should look at all possible routes forward, be they Community or non-Community initiatives.

On the related issue of design protection, the so-called 'spare parts proposal', we have seen little progress. I can only regret this. Over-protecting the designs market does nothing to stimulate competitiveness - on the contrary, this may just perpetuate 'economic rents'. I have no doubt that the adoption of this proposal would result in more choice and lower prices. There are economic benefits to be gained - for consumers as well as industry. Consumers will benefit from lower prices and more choice. Business will benefit because newcomers will have a chance to enter this market and create growth and jobs.

Safety issues have been raised repeatedly. Safety must remain a primary concern, but let me stress that this concern has already been addressed by other EU laws, for instance by the type approval framework directive in the automobile sector. I hope that discussions on the 'spare parts proposal' can resume quickly. Businesses and consumers are waiting for concrete results. This is what they are entitled to.

On copyright, I look forward to your opinion on the Recommendation on Online Music which the Commission adopted last year. We are now monitoring its impact. I am pleased to be able to report that things already seem to be moving forward. We have seen a number of deals for EU-wide licences struck since the start of this year, and we are also seeing moves towards improved governance in the more forward-looking collecting societies.

In bringing forward the Recommendation, we wanted to inject a bit of pace into the online music market. It is an area with rich potential for growth, to the ultimate benefit of all concerned - business, rightsholders and consumers. We are also looking at the question of copyright levies. This is on our work programme for later this year. We fully share the view that copyright holders deserve to be rewarded for their work. But we need to ensure that this is done in a fair, efficient and equitable way.

Levies - on media and equipment - impose a cost on both producers and consumers. We need to be sure that this is the most appropriate way to reward rights holders and to examine whether it is putting a brake on innovative products and services. Through digital rights management, there are new technological means through which rights holders can, more directly, protect their interests. The key question is whether existing levies imposed on digital devices should be reduced or phased out and be replaced by direct payment systems. We have launched a consultation to get the views of consumers and stakeholders. I have written to your chair about this and would very much welcome your views on this process.

Finally there is the question of the term of protection for sound recording and its role in fostering a more competitive EU phonogram industry. Currently, the term of protection for performers and producers is fifty years from the time of a recording. The question is whether this should be extended possibly to match the USA which offers 95 years' protection.
Performers feel that they are entitled to greater protection, at least for their own lifetimes. The European music industry claims an extension is vital for its competitiveness. The results of an impact assessment will be available by the end of 2006. We are consulting all stakeholders during this process with an open mind. [...]"

For details concerning the public hearing, see

there. Please note that deadline for registration has already expired on June 5, 2006.

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EPO Doing Basic Research - Cont'd.

an earlier posting I had reported on an interview given by Mr. Konstantinos Karachalios of the European Patent Office (EPO) discussing some of its concerns about the future of the intellectual property system tackled by EPO by launching a major study of the "critical issues" ahead. Now

another Document CA/116/06 drawn up by the President of the European Patent Office, Mr. Pompidou, has come to my attention.

According to the Document, on April 18, 2006, 40 delegates from various contracting states of the European Patent Organisation and 15 representatives from the EPO met at Hohenkammer, outside Munich, to examine the work currently being undertaken on the EPO Scenarios project. The aim was to collectively use this information to reflect on how the future of patenting and intellectual property might evolve over the next 15-20 years, at both European and global levels.

Topics addressed in Hohenkammer included:

Future of the patent system;
Role of Europe;
Language issues;
Role of the National Patent Offices;
The role of the public;
The need for IP education of the public;
Enforcement; and
Theological views, perspectives of young people and cooperation with the private sector.

Concerning the future of the patent system and according to the Document, views of the participants ranged from denial, i.e. that possible threats were an "incorrect perception" in one group to agreement that system would undoubtedly change in another. It was felt that the patent system was likely to be used as a "surrogate" or lightning rod for other issues not directly related to IPR. The different means of raising budgets within the patent offices was raised, as well as problems and misuse of the system. Moreover, the report says there were many comments on the inability of society to understand the complexity of the system. One group held the belief that the power of pressure groups was overestimated: "decisions on the future of IP would be taken on sound judgement rather than single interest groups". Technology has enabled individuals to identify their needs, so creating new tensions within kaleidoscopic society.

So, my interpretation of this sentence "Technology has enabled individuals to identify their needs, so creating new tensions within kaleidoscopic society" would be that at least some of the participants have eventually arrived in the age of the Internet. It is interestng to see that, in this very special and privileged round, the current status of the European patent system apparently has been discussed quite frankly and without overly relying on sedating euphemisms.

There are other interesting statements in the Document, e.g. like this one:

"[...] There were no recorded positive views regarding the future of Europe. Issues such as decreasing role on the world stage, growing acquis, aging population, market fragmentation due to lack of harmonisation and the need for legal certainty within European industry were aired. It was suggested that if Europe were not so innovative in the future, it might shift its point of view regarding IP to one more characteristic of developing countries. There was also mention of the 600,000 European scientists working in the United States, a tribute to the success of its system. [...]"

"[...] The 'language paradox' was raised: i.e. countries such as Japan have big language problems (e.g. Chinese and Korean prior art) and are prepared to address them, whilst Europe, with the most obvious language issues of all fails to recognise or address them. Comments on the language issue included 'problem insurmountable' and 'too early to be thinking of this'. [...]"

I am really curious to learn more on the results of this EPO project.

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Wednesday, June 21, 2006

Petition to the WIPO Regarding the Broadcast Treaty as it Affects Podcasting and Podcasters.

"[...] This is a petition to the World Intellectual Property organization (WIPO) regarding the Broadcast Treaty as it affects podcasting and podcasters.

This treaty as it stands gives broadcasters (not creators or copyright holders) the right to tie up the use of audiovisual material for 50 years after broadcasting it, even if the programs are in the public domain, Creative Commons licensed, or not copyrightable.

We consider this to be an infringement of the right of the originator of a work to determine its form of licence, future usage and copyright status. [...]"

More ...

See also my earlier posting

there.

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WIPO Broadcasting Treaty

EU - U.S. Summit in Vienna: EU and U.S. Step Up Joint Fight Against Counterfeiting.

"[...] US Commerce Secretary Carlos Gutierrez, European Commission Vice President and Commissioner for Industry Gunter Verheugen and EU Trade Commissioner Peter Mandelson will on Tuesday June 20 launch a joint EU-US action programme to tackle global intellectual property piracy. The programme was conceived in 2005 and will be endorsed by the EU-US Summit in Vienna on June 21. The joint strategy is an important reinforcement of the global fight against counterfeiting and intellectual property theft. It is the first EU-US joint enforcement programme of its kind. [...]"

More ...

Among the key EU-US proposals are commitments to:

Closer customs co-operation including joint border enforcement actions where EU-US customs officials will cooperate to tackle intellectual piracy.
Joint enforcement in third countries, including the creation of teams of EU and US diplomats in third country embassies specially tasked with data and intelligence sharing and joint surveillance responsibilities.
Strongly increased collaboration with the private sector, which has strongly advocated improved intellectual property protection as the key to EU competitiveness.

At least with regard to patents and utility models I can only hope that IP enforcement will not be turned into something new with massive shift towards involvement of covert forces, out-of-legality actions, and progressive replacement of civil law by criminal law as a basis of enforcement. See my earlier posting

there. And, police-like powers should never be shared with private entities.

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Intellctual Property

Tuesday, June 20, 2006

EU: Discussions on Criminal Measures Aimed at Ensuring the Enforcement of Intellectual Property Rights.

The EU Council recently has partially disclosed the contents of

Document 8319/06

concerning the Proposal for a Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights and the Proposal for a Council Framework Decision to strengthen the criminal law framework to combat intellectual property offences. The Document covers the outcome of the

proceedings of the Working Party on Substantive Criminal Law held on March 07, 2006. In particular, the Working Party met in order to proceed to the examination of those proposals.

Replies of the delegations to the request of the Presidency as included in

Document 5979/06 (plus

Corrigendum):

"[...] The vast majority of delegations replied to the request by the Presidency. The delegations that had not reacted yet, flagged their intention to do so soon. The Chair, in an attempt to proceed to a synthesis of the Member States replies indicated that two delegations were against the incrimination of the sui generis right of a database maker, four delegations were against the incrimination of the rights of the creator of the topographies of a semiconductor product, one delegation was against the incrimination of the trademark rights, two delegations were against the incrimination of the design rights, ten delegations were against the incrimination of patent rights, five delegations were against the incrimination of geographical indications, ten delegations were against the incrimination of the utility model rights, five delegations were against the incrimination of the plant variety extracts and ten delegations were against the incrimination of trade names. [...]"

The EU Council does not want to let us know the EU Member States from which the ten delegations opposing the incrimination of patents and utility models originated.

Nevertheless, it is good to see that at least the inclusion of patents and utility models into the scope of the Draft Directive is controversly debated. I do not see that it would make any sense to incriminate patent and utility models as provided by the original draft. Patent and utility model disputes are too complex an issue in general, and it is very difficult to assess if there is indeed infringement or not. Making every wilfull patent or utility model infringement a criminal offence would effectively discourage the dissemination of patent documents - managing directors or members of the Board would likely think twice before they read any patent document if this could make the difference between payment of compensation of damages, on the one hand, and going to jail, on the other hand. See also my earlier postings

here and

there.

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(4) comments

Monday, June 19, 2006

EPO Annual Report 2005 is Available for Download.

The EPO Annual Report 2005 is available for download as

PDF document. The patent filings have increased by 7,2% from 2004 to 2005. The European Patent Office and the European Union will

closely co-operate to promote innovation.

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UK: New Paper on Online Management of IP Services.

A. Gordon et al have

published on

Script-ed a paper under the title "Patent Remedies: Online Management of IP Services":

"[...] This paper was inspired by work currently in progress under a DTI (Department of Trade and Industry) funded KTP (Knowledge Transfer Partnership) Project between Kennedy's Patent and Glasgow Caledonian University. The project offers a unique opportunity to study the interplay between the firm's business exigencies, and the constantly evolving legal and procedural framework within which the firm operates. The particular focus of the paper is the issues raised by the provision of online legal/quasi-legal services in an 'e-government' context. The paper focuses on the practical issues and changes wrought by the incorporation of information and communications technologies (ICTs) in the form of electronic filing within a case management system in the patent and trademark law domain. In addition to exploring the drivers for, and management of, this change process, it considers the implications of such processes, not only in the relationship between the firm and the patent offices involved, but also between the firm, its clients and other agents. The paper attempts to extrapolate wider lessons of more general application to the provision of legal services.

The topic under discussion in this paper is but one element - albeit an important element - of a wider project to review the management processes in the work of a patent agents' office. Even at this early stage of the project, it is clear that the emergent electronic environment for online filing in the process leading to the creation of intellectual property rights will impact on those management processes. Thus, whereas in the past our preoccupation has been with the drivers for change internal to the firm that encourage the adoption of ICTs in such management processes, our focus in the project and for the purposes of this paper will be on the external drivers for change in the context of online filing. We must also point out that the work under the project covers intellectual property rights management in general and is not restricted to patents. Neither time nor space permits the consideration of other intellectual property rights - most particularly trademarks and designs - in this paper, even though similar issues arise in relation to the registration of trademarks and the registration of design rights.

Susskind predicted that by 2005 most major law firms would be using ICTs to provide clients with a wide variety of services online. That has not been fully realised, despite clear benefits to firm and client. This is as true for patent and trademark agents as for other providers of legal services. Unless there is customer demand for such services, or a competitive edge to be acquired, drivers for change to implement such technologies and to provide such services are unlikely to arise. That is not to say that ICTs have not made any kind of impact in the domain of patent and trademark agents. Like other professional legal service providers, they are under similar pressures to implement ICTs to manage and deliver the services they do provide.

We have elsewhere been variously involved in considering the use of ICTs in the management of legal services and the automation of the legal office. The most observable driver for change in general terms was the internal dynamic of the firm and that, in turn was influenced by the need to acquire competitive edge, to improve the service to the client. Even where we have also been involved in project work dealing with the interface of the law office with other, notably government agencies there was little to suggest that there was much pressure for this beyond that internal dynamic, whether from clients or the agencies themselves. [...]"

The article describes many aspects of current electronic filing technology from a UK / European perspective but is somewhat silent on some very important specific issues, i.e. cross-plattform inter-operability (Microsoft Windows only policies etc.) and reliability issues.

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Electronic filing

US and Europe to Take Joint Action Against Fakes.

Mr. Andrew Bounds

writes on FT.com:

"[...] The US and Europe will on Tuesday pledge to take joint action to stem the world's swelling tide of fake goods. [...]"

[Link thanks to

IPKat.]

Obviously the EU Council does not want us to know further details for the time being. There appears to exist some

Document 10131/06 under the title "EU-US Action Strategy for the Enforcement of Intellectual Property Rights" the content thereof being unavailable to the public. Perhaps this should be seen in relation to

that here and

that there.

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Wednesday, June 14, 2006

Presentations of FICPI World Congress Now On-Line.

FICPI (

"Fédération Internationale des Conseils en Propriété Industrielle" or "International Federation of Industrial Property Attorneys") had organised a large event called "FICPI World Congress" held in Paris from May 22-26, 2006. Many of the presentations given in Paris are now

available on-line.

Topics dealt with at the conference include:

Balancing patents with economic development;
Balancing fair protection of inventions with a reasonable degree of certainty to third parties;
Balancing fair protection on shapes and the needs of third parties for their free use;
Balancing the interests of all participants in the patent system;
Balancing IP rights with public policy;
Balancing fair protection for trademarks with the necessity for their fair use by third parties;
Balancing the activities of national and supra-national offices; and
Balancing the interests of all participants in the patent system.

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DE: Lawyers and The Internet - HTML Source Code, Metatags, and Trade Marks.

Today I just stumbled across

a decision of the German Supreme Court ("Bundesgerichtshof", BGH) in Karlsruhe dated May 18, 2006, and concerning the case I ZR 183/03. I won't go into all of the details of that matter; the decision was given in proceedings interdicting the Defendant to make use on the Internet of some sign "impuls" protected by a trade mark registration of the Plaintiff.

In particular, the question of usage of such a protected trade mark sign in

HTML meta-tags was discussed, and apparently the Court might have intended to state that, at least in this particular case, usage of a sign in a HTML meta-tag may constitute a trade mark infringement or is to be banned in view of the laws against unfair competition. The reasons of the decision are not available yet.

But what is a "HTML meta-tag"? In the operative provisions of the judgement the Court simply wrote (emphasis added):

"[...] Den Beklagten wird es untersagt, [...] im HTML-Code von Internetseiten, auf denen Dienstleistungen der unter a) bezeichneten Art angeboten werden, das Wort 'impuls' zu verwenden; [...]"

I would like to offer my own translation as follows (emphasis added):

"[...] Defendant shall undertake [...] not to use the word 'impuls' within the HTML code of Internet pages on which services of the types as named under item a) are offered. [...]"

So, Defendant is obliged "not to use the word 'impuls' within the HTML code of Internet pages". No mentioning of "meta-tags" or the like. Just referring to the "HTML code".

This literally means that Defendant is barred not only from using "impuls" in the context of some <META> tag - this could well be called the core of the decision - but also elsewhere in the

HTML code, e.g. in

HTML comments, as HTML variables in

<FORM> tags, or perhaps even in

JavaScipt code lines embedded in the HTML code. No search engine would ever look at these other occurrences of the word 'impulse', and they would not enhance the visibility of the web site in question. There appears to be no legal reason at all why it should be possible to ban the use of a certain word within HTML comments or the like. We shall have to wait and see until the Court provides a statement of reasons; however, I can hardly imagine that the full text of the decision might reveal proper reasons as to why the use of a particular word should be banned even within HTML comments or the like.

The particular mishap as pointed out above probably will not have dramatic practical consequences for the Defendant in this case albeit it surely requires a very tough nitpicking walk through all lines of the HTML code of the Defendant's website in question. However, it illustrates the practical difficulties in the technical domain posed by Internet technology to the legal world even today, more than fifteen years after the invention of the World Wide Web. Even in trade mark cases there is no guarantee that all persons involved have an identical understanding of concepts like "meta-tag" or "HTML code". But if the BGH should really have intended to make clear that in general and well beyond the case as decided recently not only the visible parts to be rendered on the screen plus meta-tags devoted to attract search engines of a web site but in fact the full source code thereof must be entirely free of signs of trade marks of all competitors, then tough times would come for operators of websites acting under German law.

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Metatags

advocates the privatisation of the patent examination:

Tuesday, June 13, 2006

Mr. James DeLong: "Privatise Patents!"

I am a little bit baffled: On

IPCentral, a pro-IP blog,

Mr. James DeLong

"[...] Patent examination should be a business service, available, like express delivery, in whatever time frame you need and are willing to pay for. Increasingly, I doubt that this can be done within the framework of a government bureaucracy.

Maybe PFF should start a political movement: Privatize Patents! It'll sweep the nation. [...]"

The reason why I am a bit stunned? Hm... er... well, I have read about such proposal some time ago. Nobody else than Mr. Pilch of FFII

had brought it up. FFII finally intends to

dissolve or phase out the EPO as well as national Patent Offices.

Somewhat improbable allies out there ...

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Decision of the Second Board of Appeal of 26 April 2006 in Case R 406/2004-2:

OHIM: Silence of Applicant May Equal to Withdrawal of CTM Application.

I just saw IPKat

reporting a strange piece of case-law, namely the

"[...] In the present case, the applicant has not taken part in any stage of the opposition proceedings or the appeal proceedings. This total procedural inactivity on the part of the applicant, which has been uninterrupted from the moment it was notified of the opposition on 29 October 2002, unequivocally demonstrates that the applicant has lost all interest in registering its Community trade mark application, which implies its withdrawal and therefore, the consequent termination of the proceedings, as follows from Article 81(3) CTMR (see the decisions of the Second Board of Appeal of 18 June 2004 in Case R 661/2002-2 ocom / ACOME (FIG. MARK) and in Case R 534/2002-2 AQUAFIT / AQUAFINA). [...]"

How does this go with

Article 74 CTMR:

"Article 74: Examination of the facts by the Office of its own motion

1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned."

In my view, this means that the Applicant does not need to put forward any facts and submissions but can rely on the statutory provisions requesting the OHIM to find the facts at least to some limited extent. Maybe that the Applicant should have lost the case because the BoA, without having input from the Applicant, did not get any idea as to why they should reject the Opponent's motion not to allow the application to mature into a registration. But creating a fictive withdrawal? Very strange, indeed. In particular, I think the Board's assertion is questionable:

"[...] Nevertheless, it is conceivable that a withdrawal may be implied, as the law does not exclude it, provided that it may be inferred from the facts and circumstances, which in the Office's view unequivocally demonstrate that the applicant has withdrawn its application. [...]"

Do they really believe that they can do everything not expressly excluded by CTMR if it might be "inferred from the facts and circumstances" somehow? To the contrary, I would be inclined to assume, OHIM can do only that for what a legal basis can be found in the CTMR.

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Community Trade Mark

(3) comments

Monday, June 12, 2006

Patents, Software, and Business Models.

Mr. Noel Le has

unearthed and commented on

IPcentral.info Blog an

article from Mr. John Allison, Mr. Abe Dunn and Mr. Ronald Mann:

"[...] The question of how patents affect innovation in the software industry draws interesting debate. A recent paper from John Allison, Abe Dunn and Ronald Mann of UT Austin fills in a gap that research in the area has not addressed: how patents relate to business models within the software industry. The paper, Patents and Business Models for Software Firms, U of Texas Law, Law and Econ Research Paper No. 77 (March 24, 2006), produces important findings:
Patenting is a 'regularized and important part of a well-organized operation, rather than a random or happenstance occurrence.'

Firms patent more, or less, depending on their reliance for revenue on selling hardware, software and services, respectively.

R&D intensity positively correlates patenting activity more in the software industry than other industries.
Especially noteworthy is the implication that patenting in the software industry results from profit motivated decisions companies make based on their business models. This is important, considering the deterring effects on discourse caused by the principals-based arguments of open source advocates (see Eben Moglen in Open Source politics are American as Apple Pie, and Lawrence Lessig in A War Against the Freedom to Innovate). While the open source movement argues that open source development is more innovative than software protected by intellectual property and patents, what they really advocate is their business model. However, how much business models innovate depends on their performance in the marketplace, not debates about 'freedom' or the 'spirit of open source.' [...]"

And, some business models are favoured by patents while others are not.

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statistical machine translation software:

(1) comments

The True Babel Fish: The Economist on 'Statistical Machine Translation' Software.

The Economist

writes (registration required) on

"[...] IT IS arguably the most useful gadget in the space-farer's toolkit. In 'The Hitchhiker's Guide to the Galaxy', Douglas Adams depicted it as a 'small, yellow and leech-like' fish, called a Babel fish, that you stick in your ear. In 'Star Trek', meanwhile, it is known simply as the Universal Language Translator. But whatever you call it, there is no doubting the practical value of a device that is capable of translating any language into another.

Remarkably, however, such devices are now on the verge of becoming a reality, thanks to new 'statistical machine translation' software. Unlike previous approaches to machine translation, which relied upon rules identified by linguists which then had to be tediously hand-coded into software, this new method requires absolutely no linguistic knowledge or expert understanding of a language in order to translate it. [...]

Within the next few years there will be an explosion in translation technologies, says Alex Waibel, director of the International Centre for Advanced Communication Technology, which is based jointly at the University of Karlsruhe in Germany and at CMU. He predicts there will be real-time automatic dubbing, which will let people watch foreign films or television programmes in their native languages, and search engines that will enable users to trawl through multilingual archives of documents, videos and audio files. [...]"

Well, I'm quite seceptical. Reliable machine translation for real-world texts is announced to come soon since many years but up to now it appears to be a somewhat wonky thing. But IF, yes, IF The Economist should be right with this announcement, yes, then ... this would cause a little revolution with regard to the translation of legal texts, in particular patent documents.

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Statistical Machine Translation

Wednesday, June 07, 2006

More EPO BoA Case Law on "Technical Effects".

Recent decision

T 0049/04 - 3.4.03 of one of the Boards of Appeal of the European Patent Office (EPO) is related to a

patent application 97935052.7 claiming, inter alia, a method for enhancing text presentation from a machine readable natural language text based on reader specific parameters including at least the viewing field dimensions which appears to be quite close to the borderline between patentable inventions and non-patentable non-inventions. The headnote goes as follows:

"[...] Following T 643/00 rather than T 125/04, the presentation of natural language text on a display in a manner which improves readability, enabling the user to perform their task more efficiently, relates to how, ie by what physical arrangement of the text, cognitive content is conveyed to the reader and can thus be considered as contributing to a technical solution to a technical problem; reasons 4.5 to 4.7. [...]"

More in detail, the reasoning is as follows:

"[...] 4.6 It is instructive to compare this decision with T 125/04 (Assessment system/COMPARATIVE VISUAL ASSESSMENTS 10 May 2005, not published in OJ EPO) also decided by Technical Board of Appeal 3.5.01 albeit in a different composition. The latter concerned a comparative visual assessment system for aiding a user in selecting a desired product by representing relevant product aspects, such as maintenance expenses or quality of engineering, as a string of vectors. The horizontal length of a vector was proportional to the score attributed to the component, and the angle the vector formed with the horizontal indicated the importance of the component for the user's choice; reasons 2.

4.6.1 Whereas the conclusion was drawn in T 643/00 that an arrangement of menu items or images on a screen may be determined by technical considerations, it was held in T 125/04 that, in general, the task of designing diagrams was non-technical, even if the diagrams arguably conveyed information in a way which a viewermay intuitively regard as particularly appealing, lucid or logical; reasons 4.5.

4.6.2 These somewhat divergent conclusions from the two decisions T 643/00 and T 125/04 appear to stem from the different assessment of the features relating to the arrangement of images and diagrams, respectively. In T 643/00 the functions and steps of processing the images in a specific format and allowing selection and display of an image at higher resolutions were considered to provide information to the user in the form of a technical tool for an intellectual task he had to perform, and therefore contributed to the technical solution of the technical problem of an efficient search, retrieval and evaluation of images; reasons 17. In T 125/04 on the other hand the features corresponding to the representation of the respective relevant product features as a string of vectors were considered to be non-technical on the grounds that only the information conveyed by the images was relevant. These features had to do with how this content was represented. Thus, unlike the situation in T 643/00, no information was provided about the computer system itself, such as the location where the data were stored; reasons 4.8.

4.6.3 The present board differs at this point from the conclusions drawn in T 125/04. Firstly, the board concurs with the view expressed in T 643/00 that technical aspects cannot be ruled out in the design and use of a graphic interface. Furthermore, the board finds that a feature which relates to the manner how the "cognitive content", such as images, is conveyed to the user can very well be considered as contributing to a technical solution to a technical problem. This would in particular be the case when, as the situation was in T 643/00, this particular manner of conveying the information enables the user to perform their task more efficiently; T 643/00, reasons 17. For these reasons, the board is also unable to subscribe to the ratio of T 125/04 which posits that the task of designing diagrams is basically non-technical even when the diagrams convey information in a way which a viewer may regard as particularly lucid and logical.

4.6.4 Hence the board finds it more appropriate to apply the ratio of T 643/00 to the present case.

4.7 Applying the above to the present case, the board judges that the means for analysing the text and dividing it into text segments relates to the physical arrangement of the overall image structure of the displayed text with a view to solving a technical problem, namely to improve the text presentation, ie readability, on a display. Therefore, the board concludes that the claimed features, viewed as a whole, do not relate to a non-invention listed in Article 52(2) EPC as such.

4.8 It follows from the above that in the present case the display of the text is also not to be considered as intended to create an aesthetic effect. Hence, the comparison made in the decision under appeal with poetry must fail (cf item VI (b) above). The division of a poem into text segments is dictated by the aesthetic effect it is intended to induce in the reader. Indeed the poetic device of enjambment is an example of a line break which deliberately breaks a syntactical unit - thus hindering readability - for aesthetic effect. Furthermore, the line breaks and indentations are inserted by the poet himself and therefore form an integral part of the artistic creation. The claimed device on the other hand breaks up the text into lines without involving the author of the text. [...]"

Decision T 643/00 is available

here whereas decision T 125/04 can be accessed

there.

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Ms. Clara Neppel, EPO, on Examination of CII and Business Methods Applications.

Ms. Clara Neppel is

EPO Examiner in Munich. On the

15th International World Wide Web Conference held in Edinburgh from May 23-26, 2006, Dr. Neppel gave a

presentation (MS Power Point file) under the title "Examination of CII and Business Methods Applications". In her presentation, the requirements of the European Patent Convention are investigated. The relevant Articles and Rules are looked at and it is sketched how these are interpreted, taking into account relevant decisions of the Boards of Appeal.

The presentation in its entirety seems not to present anything unexpected. However, Dr. Neppel dares to be somewhat more explicit with regard to the meaning of the concept of "technicality". On slide 18 of her presentation, she wrote:

"What is technical?

Rather than attempting a general definition of the term 'technical', the Board's present approach is to stake out, through a series of individual decisions, the grey area requiring interpretation."

On slide 19 she assures:

"Technical is:

- processing physical data parameters or control values of an industrial process

- processing which affects the way a computer operates saving memory, increasing speed security of a process, rate of data transfer etc.

- technical character may be implied by the physical features of an entity
memory, port etc."

Then, on slide 20:

"Features relating to non-inventions within the meaning of Art. 52 (2) EPC are non technical features.

- abstract ideas

- selling, trading, insurance

- choosing amongst candidates for a job

- order placement and management"

Then, on slide 22, she gives two sets of examples:

further technical effect no further technical effect
control of a brake in a car aesthetical effects of music or a video
faster communication between mobile phones new rules for an auction scheme
secure data transmission (encryption of data) selling and booking sailing cruise packages
resource allocation in an operating system calculation of a pension contributions

Finally, on slide 23, she gives an example of a claim lacking further technical effects:

"Example: non technical

A method for evaluating leadership effectiveness, comprising the steps of:

- gathering target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel;

- comparing the target information with a standard, the standard including standard values of the domain; and identifying non-standard responses of the target."

Dr. Neppels presentation sheds some light on the internal EPO practice as seen from the Examiner's point of view. Whereas the particular examples presented by Dr. Neppel might be correct, there is a total lack of any overwhelming abstract concept concerning how to discriminate "technical effects" versus "non-technical effects". If a patent applicant considers to file for a patent concerning a CII in the borderline region between technical and non-technical effects, as a patent attorney you are lost when attempting to counsel the client as to whether or not the EPO would eventually grant such claims. Hence, on the one hand, the present situation is less than satisfactory.

However, on the other hand, it is also clear that any attempt to find a reasonable definition eligible for incorporation in the statutory law is doomed to fail under the present political circumstances. The anti-patent lobby surely would be pleased to utililise deliberations on such a definition for wrecking the patent system in its very core e.g. by insisting on ultra-narrow wordings like those mooted by the European Parliament during the first and second readings of the Draft Directive on the patentability of CIIs. And the Boards of Appel are rather silent on this topic.

Beyond Ms. Neppel's presentation I would like to hint on some interesting case-law. In Decision

T 0748/03 - 3.4.01 dated January 29, 2006, the Board of Appeal wrote:

"[...] Eine in sich geschlossene Definition des Begriffs des technischen Charakters wird von der Rechtsprechung der Beschwerdekammern nicht gegeben und vermag der Vielgestaltigkeit und ständigen Wandlung der Lebenswirklichkeit wohl auch nicht gerecht zu werden.[...]"

I would like to offer my own English translation as follows:

"[...] A self-contained definition of the concept of the technical nature is not provided by the case law of the Boards of Appeal and does not give consideration to the polymorphism and and permanent change of the reality of life. [...]"

However, somewhat erratically and in contrast to this general statement the Board of Appeal continues:

"[...] Die Kammer ist aber der Auffassung, dass für Fälle wie dem vorliegenden eine dem Patentschutz zugängliche technische Erfindung sinnvoll so abgegrenzt werden kann, dass sie eine Lehre zum praktischen Handeln unter Einsatz beherrschbarer Naturkräfte zur Herbeiführung eines kausal übersehbaren Erfolgs darstellt, was auch im Erfordernis der Ausführbarkeit der Erfindung nach Artikel 83 EPÜ seinen Ausdruck findet. [...]"

I would like to offer my own English translation as follows:

"[...] However, the Board uphelds that with regard to cases as the present one, a technical teaching eligible for patent protection can reasonably be characterised in that it forms a teaching for practical action utilising controllable forces of nature for achieving a causally predictable result, such requirement also expressed in the requirement that the invention must be workable in accordance with Article 83 EPC. [...]"

This appears to be an adoption of certain German case law of the Bundesgerichtshof (BGH, Federal Supreme Court).

What does this mean? Does the Board of Appeal in question maintain that there should be no general definition or would they like to be understood in a way that they effectively have adopted some phrases from German case law?

Finally, I would like to point out that the Board of Appeal taking this decision is not that of Mr. Steinbrenner regularly sitting over CII cases. Hence, it is absolutely unclear as to whether or not Mr. Steinberenner's Board would also like to apply such arguing with regard to further CII cases.

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