Inside IPAutumn/Winter 2013Venner Shipley’s Intellectual Property Magazine

From beer to eternity: a history of brewing patents

Protecting graphical user interfaces

Challenges faced by the EPO in keeping up with life science technology

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What’s inside?From beer to eternity: a history of brewing patents – page 4 Anton Hutter discusses the 140th birthday of the first ever brewing patent.

Protecting graphical user interfaces – page 7 Rob Cork and David Paton explore the ways in which GUIs can be protected.

Trade Mark Clearance Searches: an optional luxury? – page 10 Yoann Fouquet discusses the risks caused by prior word marks.

Myriad update – page 12 Matt Handley updates on a pending referral to the US Supreme Court which could have significant implications for the biotechnology industry.

HTC vs Apple update – page 13 Kirwin Lee provides an update on the ongoing HTC vs Apple case.

Challenges faced by the EPO in keeping up with life science technology – page 14 Tanya Heare and Kate McNamara explore some of the issues which test the EPO when dealing with the developments in the life science sector.

Applicant friendly rule changes at the EPO: a trend? – page 17 Simon Taor highlights the recent trends in rule u-turns from the EPO.

New starters – page 18

Making the Unified Patent Court System benefit industry – page 20 Paul Derry provides an overview of the recent Unified Patent Court news.

Specs appeal – page 22 Peter Dawson updates on the Specsavers v Asda trade mark case.

UK Supreme Court rejects ‘Unilin Principle’ – page 24 Ruth Shelton offers an insight into the recent Virgin Atlantic Airways v Zodiac Seats case where the ‘Unilin Principle’ was rejected.

G2/13 – the “broccoli” case continues… – page 26 Tanya Heare updates on whether plants resulting from biological processes that involve the crossing and selection of plants can be patented under the European Patent Convention (EPC).

New alternative “fast-track” UK TM opposition procedure – page 28 David Birchall explains the new “fast-track” opposition procedure.

10 years of community registered designs – page 29 George Hudson takes a look back at the Community design system on its 10 year anniversary.

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A word from the editorIn our last issue, I mentioned that Venner Shipley had grown strongly since the previous issue, and this trend has continued. As detailed on pages 18-19 we have had ten new starters joining us since the summer. Eight of these new starters are new to the profession, and are split across our three patent teams. Colm Murphy and Anwar Gilani have also joined bringing with them a wealth of experience.

In this issue we have a number of articles that may be of interest. On pages 4-6, Anton Hutter discusses IP in the brewing industry, something close

to the hearts of many patent attorneys. Other notable articles include Rob Cork and David Paton’s article on protecting graphical user interfaces (pages 7-9), and Tanya Heare and Kate McNamara’s article on the challenges that the EPO faces in keeping up with developments in life science technology.

In our last issue we focused on the UPC and on pages 20-21 Paul Derry provides an update on the latest draft Rules and how these may affect industry. The ratification process for the UPC seems to be on track, and we will keep you informed of how things develop.

I am also happy to note that the EPO has issued two recent applicant-friendly updates to its rules. The first concerns the time limits for filing divisional applications, and the second concerns searching of European regional phase applications. I briefly discuss these on page 17, and more details can be found on our website.

As always, if you have any queries regarding any of the articles in this issue, please feel free to contact me or the authors at any time.

Simon TaorPartner

About Venner Shipley:

Venner Shipley is one of the leading firms of European patent and trade mark attorneys, representing a broad range of clients including major domestic and international corporations, SMEs, universities and individual inventors.

We are ranked among the best firms in both patents and trade marks by the Legal 500, Chambers Directory and Managing Intellectual Property Magazine and we pride ourselves on our high standards of service and quality.

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This year marks the 140th anniversary of Louis Pasteur’s pioneering US patent (US135,245), which changed the course of the brewing industry. Issued in 1873, it concerned a novel system for cooling fermenting broth such that it was protected from unwanted airborne contamination. His patented process, although long since devoid of any patent protection, is still being used today by many major breweries.

Although Pasteur’s invention was devised many years ago, the ability of yeast to ferment sugar to alcohol has in fact been exploited throughout the ages, dating as far back as 6000 BC to the Sumerians and the Babylonians. Indeed, the ancient Babylonians are credited with inventing the first ever recorded recipe for making beer, a commodity so valued at that time that it was often used as a form of wages to pay workers. Egyptologists have proposed that beer was a dietary staple throughout Egyptian history, as well as being brewed for medical purposes, the alcohol in the beer making it safer to drink than water. By the 14th century AD, the production of more concentrated liquors was widespread, this being made possible by the inclusion of a final distillation step, thought to have originated from either China or the Middle East, at the end of the brewing process.

Brewing usually involves steeping a starch source in water to release the sugars and flavours, and then using the eukaryotic micro-organism, yeast, to ferment the sugar into alcohol. Up until Pasteur’s invention, the sugar-containing liquid (the “wort”) was always boiled and then exposed to air for cooling, before the yeast was introduced to initiate alcoholic fermentation. However, Pasteur found that not only did the wort contacting with atmospheric air reduce the quality of the beer that was produced, due to contamination with stray wild yeasts

From beer to eternity: a history of brewing patents

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floating in the air, but it also resulted in less beer being produced from a given amount of wort. Pasteur therefore developed and patented an apparatus (left) that enabled the efficient brewing of beer, always ensuring that the wort stayed protected from the harmful external influences in the air, right up until the point of final distribution of the resultant beer. In Pasteur’s process, the wort was stored and cooled in vessels that were themselves cooled by spraying the outside of each vessel with cold water. A brewing yeast was then introduced into wort after it had cooled, thereby preventing unwanted contamination of the wort with wild yeasts in the air. Pasteur found that his process resulted in the production of much greater volumes of beer, and that the beer was of a better quality, and taste.

Brewing yeasts are classified as either “top-fermenting” or “bottom-fermenting” yeasts. Top-fermenting yeasts (e.g. Saccharomyces cerevisiae), often used for creating ales, form a foam at the top of the wort during fermentation and produce higher alcohol concentrations at higher temperatures, producing sweeter and fruitier beers. Bottom-fermenting yeast (e.g. Saccharomyces carlsbergensis), on the other hand, ferment more sugars, creating drier beers and grow well at low temperatures. Lager is a cool-fermented beer usually produced by bottom-fermenting yeasts and, as a result, prior to 1877, brewing lager was predominantly seasonally-dependent and/or geographically-dependent due to the requirement for cooler temperatures. However, just four years after Louis Pasteur’s invention, in 1877, the German engineer, Carl von Linde, obtained his German patent protecting his invention for the continuous process of liquefying gas in large quantities, which paved the way for refrigeration. Incorporation of von Linde’s invention into the brewing industry further revolutionized beer making, as it enabled cool fermentations to be conducted for producing lager throughout the year as well as in warmer climates.

Although beer became increasingly popular throughout the 19th Century, brewers faced an ongoing problem associated with bottling the beer, because the stoppers that were traditionally used failed to effectively seal the brew, which therefore quickly lost its carbonation and went flat.

“His patented process, although long since devoid of any patent protection, is still being used today by many major breweries.

”This problem was elegantly solved in 1892 by the American inventor, William Painter, who invented and patented (US468,258) his “Crown Cap” bottle top (see page 6). Although there have been many different designs of bottle top since Painter’s invention, his “Crown Cap” is still one of the most popular today, and is instantly recognizable.

Although the availability of beer increased through the 20th Century, the brewing process using batch fermentation was still regarded as being quite onerous and time-consuming, but this all changed in 1953 when the New Zealander, Morton Coutts, invented and patent-protected his technique of continuous fermentation. The invention scrapped the traditional batch-operated open vat system, and replaced it with a series of enclosed sealed fermentation vessels. His continuous fermentation technique allows the brew to flow from one tank to the next, fermenting under pressure, and never coming into contact with the atmosphere, even during the final bottling stage. Coutts’ invention was able to reduce the time required for brewing beer from a four-month long process, when using traditional batch fermentation, to a remarkably fast 24-hour method, which is still being used by many major breweries today.

Since these early experiments, and in the advent of molecular biology, many researchers have turned their attention to the use of genetic engineering approaches in an attempt to influence alcoholic fermentation rates and improve the flavour of beer. For example, one research group obtained a European patent (EP1,009,837) for an improved method of producing alcohol, which involved the use of respiratory-deficient nuclear petite yeast cells. Such yeast mutants were rendered unable to respire, due to the deletion of a gene which was necessary for respiration to take place, but were still able to survive using their alternative metabolic system for generating energy for growth, i.e. fermentation.

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As these yeast mutants were genetically constrained to using fermentation, and because alcohol is the direct product of the fermentation process, the researchers found that the mutants displayed increased alcoholic fermentation rates that were over 40% higher than that exhibited by the corresponding wild-type yeast strains, which were able to produce energy via respiration instead of fermentation.

These nuclear petite mutants had a full complement of mitochondrial DNA, which was hoped to result in their ethanol tolerance remaining uncompromised. However, unfortunately, it was found that it was not possible to increase the final ethanol

ceiling in the fermentation with the mutants, because the cells were always killed when a certain maximum ethanol concentration was reached. Indeed, the holy grail of producing higher ethanol concentrations from yeast fermentation is likely to be found when the genetics of yeast ethanol tolerance is finally unraveled.

Other groups have obtained patents for inventions involving the use of genetic manipulation to influence the degree of yeast flocculation, i.e. the clumping together of the individual brewing yeast cells once the sugar in the beer has been fermented into alcohol. Top-fermenting yeasts flocculate and create a crust on the top of the liquid, whereas bottom-

fermenting yeasts form flocs which sink to the bottom of the vessel at the end of fermentation. Wheat beers, on the other hand, have a cloudy appearance due to the use of generally non-flocculating yeasts and because such brews are not filtered following the fermentation process, and so the yeast cells remain suspended within the beer. Careful modification of the genes controlling the flocculation process has resulted in novel, patented yeast strains, which can be harnessed for making beers with different colours, flavours and textures.

As well as brewers being able to obtain patents drawn to genetically engineered yeast strains, many breweries are actively protecting their fermentation apparatuses, processes and recipes. For example, one group has protected the idea of immobilizing the fermenting yeast on a support structure within the fermentation vessel. The advantage of immobilization is that it simplifies the separation of the yeast from the brew at the end of the fermentation process. One brewery has patented a method for improving and sustaining the flavour of their beer by using a specific combination of different yeast species, and another brewery has managed to protect the careful selection of certain yeast strains which result in levels of compounds sufficient to exert an antioxidant effect on the resultant beer. Yet another group has successfully patented the manufacture of a flavoured beer in which certain plant species are introduced into the fermentation tank during the fermentation process. The extraction of various compounds in the plants is potentiated, and this imparts a unique flavour and aroma onto the resultant beer.

Although the very simple idea of using yeast to convert sugar to alcohol to produce beer has been carried out for millennia, many modern day breweries continue to obtain commercially useful patent protection for their novel and inventive modifications to this age old process.

Anton Hutterahutter@vennershipley.co.uk

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Protecting graphical user interfacesWith the advent of high-resolution, low-cost displays, Graphical User Interfaces (GUIs) have become integral to a wide variety of products, including smart phones, televisions, in-car satnav receivers, and even white goods such as fridges. The way in which a user interacts with a device can help to differentiate a particular product from that of a competitor, and GUIs often feature prominently in advertising campaigns. Clearly GUIs are of huge commercial importance, but how can the investment that goes into developing a new interface be protected?

Different aspects of a GUI may lend themselves to different types of protection. In this article we review current European case law in the field of GUI inventions, to help understand which types of GUI features can be potentially patented. In addition, we review the use of registered design rights to protect aspects of the appearance and behaviour of a GUI.

Patent protection for GUIsTo qualify for patent protection in Europe, a GUI-related invention must of course pass the usual tests for novelty and inventive step. That is to say, the invention must be new, and must not be obvious in view of the prior art. However, it is also common for GUI-related patent applications to have to contend with so-called ‘excluded matter’ objections. This represents an additional hurdle that must be overcome before the patent can be granted.

When considering whether a new GUI will be patentable, it is important to distinguish between the outward appearance of the GUI, and the underlying software or hardware that drives the GUI. For example, a new GUI may process data in a new way which is more efficient than prior art methods, before displaying the end result to a user. The new processing

method may well be patentable in its own right, regardless of how the result is actually displayed. Of course, it could be argued that in this case what is being patented is not really a GUI, but rather a method of processing data. In the rest of this article we will focus primarily on protecting the visual aspects of a GUI.

The ‘presentation of information’ exclusionEuropean patent law is set down in the European Patent Convention (EPC). The EPC defines certain types of invention which are excluded from patentability. The most relevant of these for GUIs is the ‘presentation of information’ exclusion, which prevents a patent from being granted for an invention which relates solely to a presentation of information.

In general, an invention will usually be objected to as being a mere presentation of information if the only difference between the claimed GUI and the prior art is the way in which information is displayed. To determine whether this is the case, an EPO examiner will consider whether any ‘technical’ features are present. In the context of GUIs, the following quote from the Guidelines for Examination at the EPO gives an indication of the sort of features that are not normally considered to be technical:

“For example, the colour, shape, size, layout, or arrangement of items on the screen is usually not a technical aspect of a graphical user interface.” (Guidelines Part G-II, 3.7.1)

This is not to say that all visual aspects of a GUI are not patentable. The crucial word in the above quote is “usually”. The Guidelines go on to say that a technical effect may be present when such features are combined with interaction steps, or when they concern technical information. So, what is meant by a technical effect?

In the context of GUI inventions, an argument commonly used by applicants is that the technical effect is to provide a more intuitive user interface, for example by displaying information in a more logical manner. Decision T49/04 of the Boards of Appeal, dated 18 October 2005, is often cited in support of such arguments. According to this decision, conveying information in a manner which enables a user to perform their task more efficiently can be considered to be a technical solution to a technical problem. Historically, the EPO Guidelines referred to this as ‘lowering the cognitive burden on a user’.

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“When considering whether a new GUI will be patentable, it is important to distinguish between the outward appearance of the GUI, and the underlying software or hardware that drives the GUI.

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principle patentable, provided that the usual requirements of novelty and inventive step are met.

Three-dimensional iconsEP1,209,651 concerns the use of alternating light and dark stripes to confer a three-dimensional effect on an icon (see example below). The invention related particularly to icons for display on mobile devices, which at the time usually had low-resolution displays. The application included independent claims to the icon itself and to a method of displaying the icon. The application was initially refused on the grounds that the three-dimensional effect depended only on the perception of the viewer, and thus related to presentation of information.

On appeal (T1749/06) the presentation of information objection was successfully overcome, although the application was eventually refused for lack of an inventive step over more relevant prior art. Regarding the presentation of information issue, the appeal board held that a presentation of information arises when “what is displayed” is claimed without specifying “how it is displayed”. In this particular case, it was decided that the cognitive content of the icon was the image represented by the icon, for example a butterfly, whereas the use of alternating dark and white stripes having a three-dimensional effect related to how the icon was displayed.

Good practice for patent applications?In order to be patentable under current European practice, a GUI-related invention should provide a clear objective technical effect over the prior art, which is not dependent on how information is perceived by a user. In view of this, it would be good practice when drafting new GUI patent applications to avoid describing advantages in terms of an improved user experience. Ideally, the described advantages should be more clearly technical, for example, a reduction in processing time, reduction in volume of data stored, and so on. When prosecuting existing applications, if all that is claimed is the way in which information is displayed, it may be necessary to add other technical features to the claims in order to provide a clear technical effect over the prior art.

Claim 1 included three characterising features, which can be summarised as: (a) an enlarged guide mark (G1) for the currently selected player, (b) a pass guide mark (G3) indicating a player to which a pass can be made, and (c) wherein a portion of the pass guide mark (G3) is displayed at the edge of the screen even when the corresponding player character has moved outside of the display area. At appeal (T0928/03), it was considered whether these constituted technical features. The application was allowed on the basis that feature (c) solved the technical problem that, when displaying a zoomed-in portion of interest, the display area of the screen may be too small to show the complete zone of interest (i.e. the entire football pitch).

In addition, it is interesting to note that features (a) and (b), although ultimately considered to lack an inventive step, were still found to relate to technical subject matter. In particular, when discussing the enlarged guide mark (G1), the appeal board noted that:

“Making a possibly concealed indicator clearly visible on a display screen to the user of an interactive video game does not exclusively address a human mental process (i.e. it is not exclusively determined by the cognitive meaning of the information presented) but contributes an objective technical function to the display.” (Reasons for the Decision, section 4.1.1)

This case suggests that a new GUI layout which makes previously concealed information visible is in

Unfortunately, however, T49/04 is not consistent with many other decisions from the Boards of Appeal, and has been criticised in later decisions. According to T1741/08, dated 2 August 2012:

“…the mere fact that a particular choice of information to display or of how to display it is particularly clear, lucid, or “lowers the cognitive burden” of the user is not sufficient to demonstrate that the choice has a technical effect.” (Reasons for the Decision, section 3.2)

It is worth noting that in the latest revision of the Guidelines, the reference to ‘lowering the cognitive burden of a user’ has been deleted. This suggests that the EPO no longer considers providing a more intuitive interface to constitute a technical effect.

So, given the hard line taken by EPO examiners and the Boards of Appeal on what constitutes a technical effect, under what circumstances might visual aspects of a GUI still be patentable? The key appears to lie in identifying a technical effect that does not rely on subjective considerations. To understand how a new presentation of information can give rise to an objective technical effect, it may help to look at a couple of case studies in which visual aspects of GUIs have been found to be technical.

Video gameEP844,580 concerns a video game in which a user controls a player character through the interface shown below:

a case-by-case basis to ensure that the best scope of protection is sought.

Animations and Transitions in a GUIIt is generally possible to obtain registered design protection for animations or transitions in an RCD. This is achieved through the use of a series of snapshots of the transition or animation. The order in which they are registered generally shows the sequence in which the snapshots progress. However, it is important to recognise that only seven views may be registered for each design article in an RCD.

Good practice for design applications?So, what is good practice when preparing registered design applications for GUIs? In the first instance it is important to consider which aspects are important to the appearance of your interface. Furthermore, due consideration should be given to which elements of the GUI contribute to the overall impression on an informed user, and whether these elements should be included or excluded from the design filing. If possible, line drawings of the GUI should be provided and not screen shots, and these should be in black and white to ensure that any colours do not contribute to the overall impression, unless colour shows an important aspect of the design. Finally, consideration should be given to filing different design articles within the same application to maximise the scope of protection provided.

Rob Corkrcork@vennershipley.co.uk

David Patondpaton@vennershipley.co.uk

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Registered design rights for GUIsRegardless of whether or not the new GUI is patentable however, it is worthwhile considering whether any other form of protection is available. In such circumstances it may be possible to rely on another area of intellectual property to protect a new interface – registered design rights.

Registered design rights (also known in some jurisdictions as “design patents”) provide protection for the appearance of the whole or part of a product. Therefore, a GUI that is unlikely to be patentable due to being a mere presentation of information may be suitable for protection by registered design rights. In addition, as the appearance of a GUI can play a very important role in the distinctiveness of a GUI, companies are increasingly choosing to protect their GUIs through registered design rights.

The situation in EuropeA Community Registered Design (RCD) provides protection for designs throughout the European Union. According to the Manual of Design Practice:

“designs of screen displays, icons and other visible elements of a computer program are eligible for registration.”

Therefore, in general, GUIs are explicitly protectable by RCDs. In addition, obtaining registered design protection in Europe is a relatively low-cost alternative to seeking patent protection, especially as it is possible to include multiple design articles in a single application. Furthermore, RCDs provide design protection in all 28 member states of the EU upon registration.

Obtaining the best scope of protection?Although it is relatively straightforward to obtain design protection for a GUI in Europe, the scope of protection afforded by such protection can vary considerably. Due to a lack of substantive examination in Europe, it is possible to obtain a registered design with little or no consideration of the scope of protection that the right will provide. Furthermore, as RCDs are just over a decade old, there is limited case law available to provide guidance on the best course of action for protecting

GUIs. With this in mind it is imperative that due consideration is given to the correct approach.

Screen shots are commonly used in design filings seeking protection for new interfaces. Although this approach is relatively straightforward, it is likely to result in a narrower scope of protection than desired. For example, a screen shot may include one or more objects, for example images, that are not particularly relevant to the GUI. According to European practice, the scope of protection of a design includes any design which does not produce on the informed user a different overall impression. Therefore, it is readily apparent that the one or more images may have an effect on the overall impression on an informed user, and so may limit the scope of protection to a GUI including these images.

It is possible to exclude elements from the scope of protection using, for example, dashed lines, which are generally considered to indicate elements for which no protection is sought, or by removing the elements from the drawings completely. However, such amendments may have an effect on the scope of protection afforded by the registered design. In the following example, it is worthwhile considering which of the three images of an exemplary computer icon – (a), (b), or (c) – would provide a good scope of protection?

Although image (a) may protect the exact arrangement of the computer icon, the scope of protection may be limited by the specific text included in the Figures. It is debatable whether image (b) affords better protection than image (c), because the text shown in dashed lines is excluded anyway, however without any reference to the text the design loses some of its context. For example, the exclusion of a block of text in an RCD may result in a GUI which includes such a block of text having a different overall impression on the informed user, and therefore which falls outside the scope of protection afforded by the registered design. In light of this, it is good practice to file an application including multiple design articles, for example, design articles showing each image of the computer icon in the above example. In any event, GUIs should be considered on

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Trade Mark Clearance Searches: an optional luxury?Branding is an important marketing tool for a business. A lot of time, effort and money will usually be spent finding the perfect brand name for new products. Yet, this may not be the hardest bit...

There are a number of legal risks involved with the launch of a new brand. You may be prevented from using your brand if it conflicts with a registered, or simply pending, trade mark, or if it

conflicts with an (unregistered) trade mark that is already in use. You may also be barred from use if your brand contains a figurative element (like a logo) which is identical or too close

to somebody else’s work. This article will concentrate on the risks caused by prior word marks since they are the main source of potential conflicts when adopting a new brand.

Clearance searches: the basicsThe way to minimise the legal risks associated with the use of a new brand is to conduct a clearance search to highlight potential conflicting marks. The extent of the search can vary: you can restrict it to identical marks or also include marks that are visually, phonetically or conceptually similar to your brand. Similarly, you can limit the search to registered (or pending) marks or extend it to marks which, although already in use, are not registered.

Of course, the broader the scope of the search, the higher the cost. A search for identical (pending or registered) marks costs far less than a search which also includes similar marks. Searches for unregistered marks can be done by businesses themselves but are usually best conducted by specialist investigators.

Once a few names have been shortlisted as potential candidates for the new brand a good starting point is to do an identical search so as to exclude the ones that will face major obstacles. You can then concentrate on the other names knowing that at least you are not spending time developing a brand bound to fail the legal test.

Conducting a search before you start use of your new brand is crucial: if you realise after launch that your brand infringes somebody else’s rights the consequences could be extremely serious. In some instances you may be lucky and manage to find an “amicable” solution with the other party so as to continue with the use of your brand.

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Reviewing the results of a similar search is also time-consuming because this type of search will usually reveal a large number of marks. This is the reason why there is a difference in costs between searches for identical marks and searches that include similar marks.

ConclusionTrade mark clearance searches should not be seen as an optional luxury and the money spent on a search could save you much more if you discover that the brand you wanted to use infringes a prior mark.

In some instances you may have to find a new name for your products but this will be far cheaper than having to re-brand once your mark is “out there” with all your marketing materials distributed and your products on stores’ shelves.

More importantly, highlighting a potential risk of conflict does not automatically mean that you will have to find a new brand. In a lot of instances spotting a risk of conflict will enable you to find a way around it, or to minimise this risk. The search may also reveal ways to attack the conflicting mark, which could be extremely useful when trying to negotiate a safe use of the brand.

Each solution will depend on the circumstances of the case. However, it is best to know about a potential risk and to be able to minimize it, rather than spending money promoting a new brand not knowing whether somebody with prior rights will come knocking one day. Now that’s a luxury you cannot afford.

Yoann Fouquetyfouquet@vennershipley.co.uk

“It seems odd to many clients but you can end up liable for using a mark which you successfully managed to register.

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This will almost certainly involve a payment to the other party, which could, depending on the strength of the other party’s arguments, be very high. In the worst scenario however, you could be forced to stop use of your brand immediately, recall and destroy all your marketing materials, change your brand name, change your labels and packaging and pay damages to the other party.

This should sound bad enough, yet, despite all these risks, clearances searches are sometimes overlooked by businesses who view them as an expensive, superfluous luxury. Two common misconceptions explain this (very) flawed view and I will discuss them below:

Registration: the “be all and end all” of trade mark protection?The first misconception is that the new trade mark will be secure, and free to be used, if registration was achieved without challenge. This is, unfortunately, incorrect.

The fact that your trade mark application proceeded to registration without opposition is by no means a guarantee that it does not conflict with somebody else’s rights. Under the application procedure for UK and Community trade marks for instance, the office will conduct a search for prior registrations but this is not a thorough search and your application will not be refused even if it conflicts with other prior marks. Your mark will be accepted and published and it will then be for the owners of these prior marks to oppose the mark if they want to prevent its registration.

In practice there are many reasons why the owners of prior conflicting marks sometimes fail to oppose an application: they may not have subscribed to a “watch service” (which is a service that notifies you if a new application conflicts with your existing mark) and so may simply be unaware of the application. Even when notified, trade mark owners sometimes fail to realise that a new application could conflict with their own mark. In other instances opposition is considered but the strict deadline to oppose simply missed.

Your new application may therefore proceed to registration simply because the owners of prior conflicting marks

were not actively monitoring and defending their rights. This situation may however change as soon as they discover that you have launched competing products under a brand name which resembles one of their marks. If it turns out that your mark was indeed registered in breach of these prior marks then it is highly likely that your registration will be invalidated, giving you no protection and meaning that you will be held to be infringing. It seems odd to many clients but you can end up liable for using a mark which you successfully managed to register.

Are identical marks the only risk?The second misconception is that only identical marks can constitute a risk to the use and registration of a new brand. This is also incorrect: Your brand could be in conflict with another trade mark if it is similar and is used on products or for services that are either identical, or simply similar, to the products or services for which the prior mark is protected.

The test to determine if there is a risk of conflict with another mark in these instances is whether consumers could be confused or deceived into thinking that there is a link between the two marks (or their owners). Various factors must be considered such as for instance, the visual, phonetic and conceptual similarities between the marks, the similarity of the products and/or services, the perception of the average consumer and the distinctive character of the marks. You also need to take into consideration existing differences in languages if your mark is filed in jurisdictions where English is not the first language.

Analysing whether a similar mark could be a potential risk is not straightforward. From time to time we may highlight the mark of a competitor as a potential risk only for the client to realise that they knew about this mark all along, but never thought it could be a legal obstacle to the use of their new brand.

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Myriad updateIn the last edition of Inside IP we discussed a pending referral to the US Supreme Court which could have significant implications for the biotechnology industry. The Supreme Court has now ruled that isolated genes per se are not eligible for patent protection in the United States.

“the case has generated considerable debate as to whether isolated gene sequences per se should be eligible for patent protection in the US ”

To recap, US biotech firm Myriad Genetics had obtained granted patent claims covering two isolated human genes associated with breast and ovarian cancer (BRCA1 and BRCA2). The patentability of these isolated genes was subsequently challenged by the Association for Molecular Pathology and others. At the end of a long-running saga, the issue was finally referred to the US Supreme Court.

It is worth noting that the US Supreme Court did not consider the eligibility of method claims or claims relating to the application of knowledge about isolated genes. However, the case has generated considerable debate as to whether isolated gene sequences per se should be eligible for patent protection in the US.

On one side of the debate, it is argued that the monopoly right provided by patents provides an incentive to encourage medical innovation and investment, which ultimately saves lives. Furthermore, isolated genes should be patentable because they require human intervention to be 'discovered', in other words, to be identified and isolated from a genomic sequence.

On the other hand, it is claimed that allowing individuals to obtain patent protection for isolated genes increases the cost of therapies and diagnostic tests.

In Europe, gene sequences per se are considered to be patentable as long as they have been isolated from their natural environment and the description of the patent sets out a function and use for the sequence.

In contrast, in the Myriad case, the US Supreme Court has now found that

isolated, naturally occurring genes are not eligible for patent protection in the US. Furthermore, because the genetic sequence and genetic structure of DNA are “products of nature”, the gene sequences themselves were held not to eligible for patent protection. Thus, patent claims for isolated DNA sequences per se will no longer be patentable in the US.

For example, it is not clear how much modification is required before something is no longer considered to be a product of nature. Although cDNA was held to be eligible for patent protection, short stretches of synthetic DNA may be considered to be indistinguishable from natural sequences, and thus may not be entitled to patent protection. On the other hand, genetically modified seeds and transgenic plants are probably sufficiently far removed from their natural counterparts to be considered products of nature, and are therefore likely to be considered eligible for patent protection.

In addition, it is not clear to what extent the Myriad decision may be applied to other classes of naturally occurring isolated products. Observers generally agree that claims to recombinant or synthetic proteins, vectors including isolated gene sequences, transgenic organisms or cells, and methods of making these will probably all still be considered patentable. However, the first step towards testing this understanding in the Courts may already have been taken. In the Court of Appeals for the Federal Circuit (in Consumer Watchdog v. Wisconsin Alumni Research Foundation) it was recently argued that patent claims to human embryonic stem cells are invalid under the Myriad decision because they are products of nature. If the Federal Circuit decides to rule on the patent eligibility issue, it will be the court's first application of Myriad’s ‘product of nature’ analysis, and may provide additional guidance regarding the patent eligibility of products derived from natural materials. We shall of course keep you fully informed as this highly contentious field develops.

Matt Handleymhandley@vennershipley.co.uk

The US Supreme Court did, however, indicate that claims directed to non-naturally occurring aspects of the chemical structure would be eligible for patent protection. One interpretation of this could be that human genes that have been modified beyond mere "isolation" may be patentable. In support of this view, the court held that complementary DNA (cDNA), which it defined as “synthetically created DNA” is potentially patentable because it is not a product of nature. However, the Court left open the question of whether simply producing cDNA requires a sufficient level of inventive input to meet the requirement for patentability. This and many other questions still need to be considered before the full impact of the Myriad decision is clear.

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HTC vs Apple updateWhile it appears that the smartphone patent wars may never come to an end, HTC and Apple jointly announced in November last year that they have reached a global settlement which includes the dismissal of the ongoing patent litigations. In the announcement, the two companies confirmed that they have entered into a ten-year joint licensing agreement that covers all current, pending, and future patents.

“The appeal decision is of interest to patent practitioners and software technology companies, as it is believed to affect the UK IPO’s interpretation of the “computer program” exclusion from patentability. ”

In May this year the Court of Appeal heard a case that had resulted from an earlier HTC-Apple patent dispute. The patents at issue in this case were: EP2,098,948 relating to multi-touch input interface, and EP1,964,022 relating to the famous “slide-to-unlock” feature. The appeal decision is of interest to patent practitioners and software technology companies, as it is believed to affect the UK IPO’s interpretation of the “computer program” exclusion from patentability.

In our Autumn/Winter 2012 edition of Inside IP, we reported the decision of the High Court on HTC Europe v Apple Inc (“The Smartphone patent wars continue: HTC v Apple in the UK” by Alex Bruce). The original trials involved four patents owned by Apple and it was held that three of the patents were not

valid (in the UK) and the remaining one was not infringed.

During the original trial, the judge, Mr. Justice Floyd held claim 1 of EP2,098,948 to be invalid as obvious over common general knowledge alone, and claims 1 and 2 were also found to be nothing more than a “computer program as such”. EP1,964,022 was also held to be invalid for obviousness in light of the Neonode mobile telephone launched in Sweden in 2004.

HTC took no further part in the proceedings due to the settlement, but nonetheless Apple invited the UK IPO to appear on the appeal “to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register”, focussing the appeal on validity alone. Although the decision in respect of EP1,964,022 and the obviousness finding of EP2,098,948 was upheld, the Court of Appeal reversed the previous ruling and found that claims 1 and 2 of EP2,098,948 made a technical contribution to the art and were

therefore not invalid for excluded subject matter.

On appeal, Lord Justice Kitchin held that the problem addressed by EP2,098,948, i.e. how to deal with multi-touches in multi-touch enabled devices, was essentially technical. The court mentioned that the contribution made by this invention was similar to that established in the EPO appeal case T6/83.

In the judgment it was pointed out that EP2,098,948 deals with this technical problem by dividing the screen of the device into views and configuring each view as a multi-touch view or a single-touch view using flags with a specific functionality. This interface causes the device to operate in a new and improved way and at the same time makes it easier for application software writers to develop software for the device. The fact that the device is now easier for programmers to use also emphasises the technical nature of the system.

Lord Justice Kitchin stressed that it is irrelevant whether the improvements are made to the software programmed into the computer rather than hardware forming part of the computer. In paragraph 57 he remarked “an invention which is patentable in accordance with conventional patentable criteria does not become unpatentable because a computer program is used to implement it”.

The optimistic view of this decision is that it would provide further weight to the UK IPO in adopting a broader view of what constitutes a technical effect. The appeal decision demonstrates that the UK courts are taking on a more accommodating approach for assessing computer-implemented inventions, focussing on substance rather than form. This judgment certainly provided some clarity on how to determine whether or not a proposed configuration, which is implemented by software, is patentable or not.

Kirwin Leeklee@vennershipley.co.uk

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The mission statement of the EPO is “…to support innovation, competitiveness and economic growth for the benefit of the citizens of Europe”1, or, as a patent Examiner recently put it, “the EPO has the mandate to grant European patents for inventions”.

This sounds like a good start when emerging technologies are pushing the boundaries of what is possible in the life science sector. But does the EPO have a balance to strike between what is considered patentable and other considerations, such as the ethical consequences of granting patents for biotechnological inventions? Can something be considered an invention if it pre-existed in nature? And how does the EPO begin to mould stark legal provisions around our continually developing biological world?

Legal provisionsThe Operations division of the EPO is divided into 14 joint clusters, each of which relates to a specific technical area. The joint cluster for biotechnology comprises 238 Examiners, who deal with over 9,000 filings each year.

The legal framework for patenting biotechnological inventions in Europe comprises the European Patent Convention (EPC), EU Directive 98/44/EC (the ‘Biotechnology Directive’) and case law of the Boards of Appeal of the EPO.

According to the EPC, ‘biotechnological inventions’ concern a product consisting of, or containing, biological material, or a process by means of which biological material is produced, processed or used. ‘Biological material’ means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system, including living organisms and DNA2.

Like any other technology, to be patentable, biotechnological inventions have to be new, inventive and capable of industrial application. However, the EPC contains specific provisions regarding what cannot be patented in this field, namely any invention contrary to ‘ordre public’ or morality; ‘essentially biological’ processes for producing plants and animals; and methods of medical treatment or diagnosis practised on the human or animal body3. Discoveries, such as the discovery of a natural substance (e.g. a gene sequence), are also excluded4.

The Biotechnology Directive, adopted in 1998, aimed to confirm the practice of the EPO, whilst placing greater focus on ethical considerations. It affirmed that,

in principle, isolated biological material is patentable, even if it occurred previously in nature; plants and animals are patentable if the technical feasibility of the invention (e.g. a genetic modification) is not confined to a particular variety; and a gene sequence can be patented as long as its industrial application is disclosed. However, the Directive ruled out patenting of the human body in all its developmental stages, the use of human embryos for industrial and commercial purposes, and processes for cloning, or modifying the germ-line genetic identity of human beings.

Case law has added further guidance, with important decisions issued in the fields of plant varieties, antibodies, stem cell technology and personalised medicine, to name but a few.

It would nevertheless appear that the law remains several steps behind the science, with Examiners having to base decisions about patentability on guidance that was not intended – or designed – to address the issues raised by emergent technology. This is illustrated by the following discussion

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of innovation in three areas of the life science field.

Stem cells – are they patentable?Inventions relating to adult stem cells, pluripotent and induced pluripotent stem cells appear to be accepted as patentable in Europe. However, the EPC bars the granting of patents for inventions involving the use of human embryos for industrial or commercial purposes5 . Case law has sought to further clarify the terms of this exception in relation to human embryonic stem cells (hESCs).

In 2008, the Enlarged Board of Appeal confirmed that European law forbids the patenting of products which, at the filing date of the application, could be prepared exclusively by a method which involved destruction of a human embryo, even if the method were not part of the claims6.

The question of whether there was a ‘cut-off’ regarding the ancestry of the material from which the product was derived was considered by the Court of Justice of the European Union (CJEU)7, which ruled that a method which involves destruction of a human embryo is excluded from patentability, irrespective of when the destruction occurred (i.e. a product developed from an established stem cell line is still excluded if the line could only be established as a result of destruction of an embryo).

The EPO adopted this ruling, even though it is not bound to follow the CJEU. However, publication of a non-destructive method for deriving hESCs8 led the EPO to accept that methods and products involving hESCs were patentable if the filing date of the application was later than the publication date of this method (10 January 2008).

The meaning of ‘human embryo’ has also come under scrutiny, with the CJEU ruling that the term encompasses any human ovum after fertilisation; any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted; and any non-fertilised human ovum whose division and further development has been stimulated by parthogenesis8.

Further guidance has been sought regarding these exclusions, with the

Unofficially at least, EPO Examiners are dealing with this question by considering the inevitability of one patient with the biomarker having been treated, even if the ‘prior art’ does not explicitly say so. The standard of proof for lack of novelty at the EPO is ‘beyond reasonable doubt’, which is interpreted in line with statistical standards in the art. Consequently, if there is a 95% confidence interval that, in the successfully treated group of patients in the prior art, at least one of them had the identified biomarker, the later claimed personalised medicine will be considered to lack novelty.

This means that Examiners have to consider the types of claim that are allowable in different situations. For example, a claim directed to “Drug X for use in a method of treating disease Y, characterised in that the patient has biomarker Z” will not be allowable if drug X is already on the market for disease Y. This is because drug X will have approved efficacy in a cohort of patients and large numbers of patients will have been treated. It will therefore be beyond reasonable doubt that, in the disease Y patients successfully treated in the prior art, at least one of them had biomarker Z. Conversely, a drug claimed in this way will be considered novel if only a therapeutic concept or phase I clinical trial has been previously disclosed, because it will not be beyond reasonable doubt that a patient having the biomarker has been successfully treated.

Quite how the EPO will officially resolve the issue of novelty for personalised medicines is not yet known. Examiners appear to see the vast potential that such medicines hold, so we are hopeful that the EPO will decide on relevant points of law favourably.

Antibodies – are they inventive?Antibodies have become extremely important in developing new drugs and treatments. Owing to their diverse nature, high-affinity binding and unique targeting capabilities, antibodies can be used to track down and kill specific cells. However, whether an antibody is deemed patentable by the EPO depends, at least in part, on how ‘routine’ the method used to produce it.

The production of mouse monoclonal, chimeric recombinant, CDR grafted and phage display synthetic antibodies

“Like any other technology, to be patentable, biotechnological inventions have to be new, inventive and capable of industrial application.

”

CJEU asked to clarify whether human parthenotes fall under the definition of a human embryo9.

Parthenotes are activated unfertilised oocytes which can be used to produce human stem cell lines. They are capable of developing into a blastocyst-like structure, but cannot develop into a human because they lack paternal DNA. The question is whether the CJEU, in including parthenotes in the definition of a human embryo, meant an entity that could develop into a human, or something that could start -but not complete- the process of becoming a human being. The outcome of this referral is awaited.

Personalised medicines – are they novel?As reported in our Autumn/Winter 2012 edition of Inside IP, personalised medicine is an emerging field that promises to bring radical changes in healthcare. It essentially makes use of genetic and non-genetic biomarkers to tailor the right therapeutic strategy to the right person at the right time.

The challenge faced by the EPO in granting patents for inventions in this field lies in the issue of novelty. Specifically, does a patentable invention lie in the treatment of a group of patients having a particular biomarker, when the biomarker was previously unidentified, but nevertheless present, in at least some of the patients that had the associated disease condition and were being treated with the indicated drug? In other words, can the treatment of a known disease with a known drug be considered new, and therefore patentable, by virtue only of the identification of the biomarker and, therefore, a ‘new’ group of patients to be treated?

known molecules and does not consider the methods used to make them. Nevertheless, patents will be awarded for antibodies resulting from inventive skill.

ConclusionIt is clearly desirable for patent protection to be available for new developments in the life science field, so that research and development companies receive an adequate return for their investment.

It is our understanding that the EPO intends to continue its rigorous application of the legal criteria for patentability to emergent technology10, and we have to hope that it does this with the future of healthcare in mind.

Tanya Hearetheare@vennershipley.co.uk

Kate McNamarakmcnamara@vennershipley.co.uk

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are all now considered routine by the EPO, as the relevant techniques have been around for over a decade and are well documented. But what about the more recent production of human antibodies in transgenic animals? At what point will the EPO decide that this is ‘routine’?

The answer seemingly lies in the complexity of the method of production. As soon as a single document describes a method and its possible uses and advantages, any new antibodies produced using that method will be considered obvious and, therefore, unpatentable, in the absence of any unexpected technical effect. It will naturally take longer to reach this point for a method that is complex, as technical problems are to be expected.

Once a method has become ‘routine’, patents for the produced antibodies are nevertheless still available. However, the EPO has again had to adapt to the many ways in which the antibody can be claimed. For example, being a protein, an antibody can be claimed

References:

1. http://www.epo.org/about-us/office/mission.html

2. Rule 26(2) & (3) EPC

3. Article 53 EPC

4. Article 52(2)(a) EPC

5. Rule 28(c) EPC

6. G2/06: http://archive.epo.org/epo/pubs/oj009/05_09/05_3069.pdf

7. The ‘Brüstle case’ C-34/10: http://curia.europa.eu/juris/liste.jsf?language=en&num=C-34/10

8. Cell Stem Cell. 2008 Feb 7;2(2):113-7. Epub 2008 Jan 10

9. [2013] EWHC 807 (Ch)

10. http://blog.epo.org/patents/biotechnology-and-patents/

in terms of its production process, the cell line that it is derived from or in terms of its structural features. Being an active molecule, it can be claimed in terms of the target to which it binds or its function once bound. Which claim type is suitable depends entirely on the teaching in the art at the filing date of the patent application.

A claim to “An antibody specific for marker X”, for example, will be allowable if marker X is unknown, has unexpected properties and is well-defined in the application (regardless of the method of production). This claim will no longer be allowable, however, if marker X becomes known, even if no antibodies binding to X are known, because the EPO holds that, on the face of it, there are no unexpected properties. The claim must thus be redrafted according to the unexpected property.

Some believe that the EPO has set the bar too high in the antibody field. For chemical compounds other than antibodies, for example, the EPO makes structural comparison with

contain more than one invention were severely limited, often requiring a divisional application to be filed.

The new rule change removes this problem, and following this change, if the EPO considers the claims of a European regional phase application to contain more than one invention then, regardless of whether the EPO was the International Search Authority (ISA) or not, the EPO will provide the applicant with a 2-month window to pay additional search fees.

This new rule will come into force on 1 November 2014. For cases where the EPO was the ISA, the new rule will apply for all cases where an EPO examination communication has not already been issued by 1 November 2014. For cases where the EPO was not the ISA, the new rule will apply where the supplementary European search report is drawn up on or after 1 November 2014.

With these two changes the EPO is sending a very positive message

that its decision makers are listening to applicants

and reacting to some of their concerns. We can only hope that

this trend will continue.

Simon Taorstaor@vennershipley.co.uk

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Applicant friendly rule changes at the EPO: a trend?It is fair to say that the EPO has a reputation for being unflexible and rigid in the application of its rules. It is also fair to say that some applicants have criticised some of the rule changes that the EPO has implemented over the last few years.

In a welcome development, the EPO’s Administrative Council decided on 16 October 2013 to make two rule changes, each reversing a previous rule change that had proved unpopular with applicants.

The first change concerns the filing of divisional applications. Traditionally, it was possible to file a divisional application at any time while the parent application was still pending (i.e. before grant or refusal). The EPO, however, changed this on 1 April 2010, with the changed rule stating that a divisional application may be filed while the parent application is pending, provided that the divisional application is filed within two years from the first examination report on the parent case or within two years from the Examining Division first raising a lack of unity of invention objection, if later. This was very unpopular with applicants, as it greatly reduced the flexibility of divisional filing strategies.

We are pleased to report that the EPO has reversed its position on divisionals, and from 1 April 2014 it will again be possible to file a divisional application at any time while the parent application is still pending. This is welcome news that will, once again, give applicants flexibility for divisional filings. Also, in many cases, from 1 April 2014 this change will enable applicants to file divisional applications where the deadline under the 1 April 2010 rule has passed. It is not all good news though: the EPO will charge an additional fee for second, or later, generation divisional filings, though the amount of this fee is not yet known.

This change followed an open EPO consultation on the provisions governing the time limits for filing divisional applications. It seems that the Administrative Council listened to the responses that they received in this regard, as the majority were in favour of such a change.

The other change decided by Administrative Council on 16 October 2013 relates to the searching of European regional phase applications, and again the Administrative Council has reverted back to a previous version of the relevant rule.

Traditionally, the EPO would provide applicants with the opportunity to pay an additional search fee on regional phase entry if the EPO considered the application to relate to more than one invention. In December 2007, the EPO changed this and removed the opportunity for searching more than one invention on regional phase entry. This proved unpopular, as it meant that the options available to applicants if the EPO considered the claims of a European regional phase entry application to

“the EPO is sending a very positive message that its decision makers are listening to applicants

”

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New starters

Colm MurphyBA MSc LLM CPA EPA

Colm is a Partner in our Chemical and Life Sciences team. He is a European Patent Attorney and a Chartered Patent Attorney with a practice covering a broad range of IP matters in the life sciences arena.

He has almost 20 years experience advising clients in relation to biochemical, pharmaceutical and medical device patents. Colm's practice covers a range in this complex area, from drafting and prosecuting patent applications to EPO Oppositions and Appeals; freedom-to-operate clearances; as well advising on IP portfolio/ risk management stratagies; and IP exploitation. His approach is to build strong collaborative relationships with clients in order to be able to provide proactive and commercial solutions.

He is a member of the CIPA Biotechnology Committee and a Director of PAMIA, the body that provides professional indemnity insurance for the profession.

He is independently recognised as a leading practitioner. The Legal 500 2012 states that "Colm Murphy is highlighted for his excellent advice and knowledge" while the Chambers Legal Directory has ranked him in Band 1 for patent attorneys since 2011.

cmurphy@vennershipley.co.uk

Anwar Gilani BSc PhD CPA EPA

Anwar is a Senior Associate in the Chemical and Life Sciences team and is based in our Cambridge office.

He previously worked in private practice for a number of years on a wide range of technologies including organic semiconductors, clean technology, medical devices and pharmaceuticals.

After completing a BSc in chemistry and a PhD in organic chemistry Anwar worked as an examiner at the UK Patent Office (in the areas of novel organic compounds and medical devices) before moving in-house where he spent 8 years on activities including managing prosecution and budgeting of a large patent portfolio covering Europe, USA and the Far East, invention harvesting and patent licensing.

agilani@vennershipley.co.uk

Thomas Astle MPhys

Thomas is a trainee patent attorney in our Electronics and Engineering team.Thomas graduated from the University of Warwick with an undergraduate Masters degree in Physics. His masters project involved conducting research into oscillations in the solar corona using magnetohydrodynamic wave theory.

During his degree, Thomas also studied fusion, general relativity, high energy astrophysics, quantum mechanics and particle physics.

tastle@vennershipley.co.uk

Ben Beasley MChem PhD

Ben is a trainee patent attorney in our Chemical and Life Sciences department.

He graduated from the University of Huddersfield with a first-class Master’s degree in Chemistry with Industrial Experience. As part of his degree, Ben undertook a year’s work experience at a major pharmaceutical company, where he was responsible for supporting the introduction of cutting-edge process analytical technology. He then went on to complete a PhD in organic chemistry at the University of Warwick. Ben’s PhD research focussed on the reactions and chemistry of oxetanes, resulting in multiple publications in well-known chemistry journals.

bbeasley@vennershipley.co.uk

Venner Shipley is delighted to announce that we have expanded our practice by adding the senior team of Colm Murphy, Partner, and Anwar Gilani, Senior Associate, to our Chemical and Life Sciences group. We have also taken on eight new trainees since June.

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Christopher Dunleavy BA MSci PhD

Christopher is a trainee patent attorney in our Electronics and Engineering team based in our Cambridge office. The focus of his work is the filing and prosecution of patent applications in the fields of electronics.

Christopher graduated from Cambridge University with a Masters in Experimental and Theoretical Physics. He has also completed a PhD at the Cambridge Department of Materials Science and Metallurgy and was able to continue to study on an EPSRC grant involving three universities and multiple industrial partners until joining Venner Shipley.

cdunleavy@vennershipley.co.uk

Chris Newcombe MSci

Chris is a trainee patent attorney in our Chemical and Life Sciences department.

Chris graduated from the University of Bristol with an undergraduate Masters in Chemistry. His final year project investigated the synthesis of trimethylsilyl diazomethane derivatives and their subsequent use in cyclopropanation reactions.

During his degree, Chris also studied organometallics, catalysis, functional soft materials and advanced analytical techniques.

cnewcombe@vennershipley.co.uk

Jack Rogan MEng

Jack is a trainee patent attorney in our Electronics and Engineering team. He assists in the preparation, filing and prosecution of UK, European and International patent applications in all areas of mechanical engineering.

Jack graduated from the University of Manchester with an undergraduate Masters degree in Aerospace Engineering. His studies focused on High and Low Speed Aerodynamics, Aero Propulsion, Aero Structures, Flight Dynamics, Acoustics & Aeroelasticity.

jrogan@vennershipley.co.uk

Yichuan Xu BA MSci

Yichuan is a trainee patent attorney in our Electronics and Engineering team.

He studied Natural Sciences at the University of Cambridge where he specialised in Astrophysics and then went on to complete a Masters degree in Astrophysics. Yichuan's final year project involved using spectroscopic techniques to study the distribution and clustering of high redshift galaxies, using data from the Hubble Space Telescope.

yxu@vennershipley.co.uk

Marcus Leong BEng PhD

Marcus is a trainee patent attorney in our Electronics and Engineering team.

He graduated at The University of Manchester Institute of Science and Technology with a first class BEng degree in Electrical and Electronic Engineering, specialising in power engineering. He then completed his PhD degree in Power electronics and Motor drives at the University of Cambridge.

Marcus joined Venner Shipley after working at McLaren Automotive Ltd and at the Engineering Science Department in Oxford University as a RCUK Academic Fellow (Departmental Lecturer) where he led a research team in renewable energy technologies and cofounded Oxford YASA motors.

mleong@vennershipley.co.uk

Robin Plowman MSc

Robin is a trainee patent attorney in our Electronics and Engineering team.He graduated from The University of Warwick with an honours degree in Mathematics. Robin subsequently gained a Research MSc from York University in Embedded Computer Vision, where he carried out research into developing machine vision algorithms for low power DSP's.

Robin joined Venner Shipley after working at ASL Vision, a subsidary of Continental, where he developed algorithms for a Surround View Camera system, specialising in 3D reconstruction for use in Driver Assist systems. Prior to this, Robin worked for Thales designing machine vision algorithms for use on thermal imaging cameras.

rplowman@vennershipley.co.uk

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Making the Unified Patent Court System benefit industryOf all the features of the Draft Rules of Procedure of the Unified Patent Court (UPC), bifurcation is the one that has caused the most discussion. It is a widely held view that bifurcation in the UPC too strongly favours patentees and has too much potential to unfairly disadvantage operating companies. We now know that a number of industry players have taken the opportunity to submit comments on the 15th draft of the Rules, which were published on 31 May 2013. This article provides an overview of the most contentious Rules and some of the comments submitted, and attempts to predict what might happen next.

The issues discussed in this article fall under the headings bifurcation of proceedings, interim injunctions, opting in/out of the UPC, discovery and relation with EPO opposition proceedings. The first two of these issues are of such concern that some of the world’s largest technology companies, including Apple, ARM, Cisco, Google, Hewlett-Packard, Intel, Microsoft and Samsung together signed an open letter (https://docs.google.com/file/d/0B_U9nV8-MjxrQWVwZmpDNXdGUDA/edit?&pli=1) urging amendment of the Rules.

Bifurcation and injunctionsThe Agreement on the UPC includes provisions allowing courts of local and regional divisions of the UPC to bifurcate proceedings by retaining infringement claims and referring revocation counterclaims to the central division. Many had worried that this would permit into the UPC some features of the German patent litigation system that are seen by some as being unfair on defendants. The latest draft Rules address most of the concerns quite thoroughly, but do leave considerable discretion with the UPC courts.

First, where bifurcation is present, draft

Rule 37 requires the court hearing the infringement proceedings to consider the validity of the relevant claims. As well as giving the court overall discretion to stay the infringement proceedings for any reason, the draft Rule requires the court to stay the infringement proceedings if there is a ‘high likelihood’ that the relevant patent claims will be held invalid. Thus, the chances that an injunction will be granted in the UPC based on an invalid patent are much lower than in the current German system. This would make the UPC much more kind on infringers of invalid patents than in the current German system.

Secondly, draft Rule 40 requires that bifurcated revocation proceedings before the Central Division are accelerated if the patentee has applied for provisional measures (an interim injunction, delivery up or seizure of goods or seizure of property) in the infringement proceedings in the other court. Consequently, (non-)infringers should not face a long gap between an interim injunction award and revocation of the patent, and in many cases a decision on revocation will come before the award on provisional measures.

However, there is considerable scope for courts to use their discretion when deciding whether infringement and validity proceedings should be

considered together or bifurcated, and if bifurcated then whether the infringement proceedings should be stayed.

There seems to be considerable discretion also in the draft Rules in the ability of a court of a local or regional division to award an injunction in infringement proceedings. There is a wide gulf between the injunction practices in Germany and the UK, which are generally considered to be the main jurisdictions for patent litigation in Europe. In Germany, injunctions are a statutory remedy, and are awarded on a finding of infringement – often far ahead of validity being considered (by another court, in different proceedings). In the UK, final injunctions are awarded only for valid patents, and then only at the court’s discretion, and interim

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“Many had worried that this would permit into the UPC some features of the German patent litigation system that are seen by some as being unfair on defendants.

”

injunctions are awarded only following application of a well-established test that causes assessment of whether an injunction would be appropriate (and which involves assessing likely validity).

The open letter mentioned above argues that the current draft UPC Rules provide potential for abuse by holders of invalid patents, and states that the rules should be amended “to provide clear guidance and predictability on how bifurcated proceedings … should be handled and to permit defendants in bifurcated cases to more easily obtain a stay of infringement proceedings until a decision on patent validity has been reached”.

Of course, providing the Rules with more clear guidance on this point would reduce the opportunity for different courts to behave differently. Although the open letter discusses patent litigation in the US, it does not mention that the vast majority of litigation occurs in just three courts, and that these courts are the ones that are most friendly to patentees. If some local or regional divisions of the UPC were found to be more patentee friendly in that they tended to defer validity proceedings to the central division whilst processing the infringement proceedings (and awarding injunctions) quickly, this would clearly have the potential to cause unwelcome distortion in the system. Indeed, such a local or regional division would be the prime choice for patent assertion entities (PAEs or patent trolls), to the detriment of industry as a whole.

The open letter also argues that the injunction provisions of the draft Rules would force excessive settlements from technology companies and lead to a rise in abusive litigation in Europe. It states that courts should be guided by the Rules to assess proportionality prior to granting injunctions, and highlights the possible use of injunctions by PAEs to extract excessive royalties.

Opting outThe Agreement allows for proprietors of European Patents to opt out from the exclusive competence of the UPC to hear cases, and it also allows proprietors to opt in. This applies to patents that are granted before the UPC comes into force, as well as to patents granted for a transitional period of seven years afterwards. The opt-out is expected to be used by patentees that consider that

the use of national courts would give them an advantage that is worth the opt-out fee (the amount of which is not yet known).

The latest draft Rules clarify that only one opt-out is allowed. Consequently, it will not be possible to opt out, opt in, and opt out again at will, as some had hoped. It is clarified also that it will be possible to apply to opt out ahead of the UPC coming into force, with such opt-outs taking effect on the day the UPC enters into force. We do not yet know what the costs will be to holders of European patents for opting out.

DiscoveryUnfortunately draft Rule 190 does not give any relevant detail about discovery of documents additional to that included in Article 59 of the Agreement. The draft Rule confirms that discovery will be awarded only for evidence that substantiates claims that are supported by already-presented evidence, so discovery in the UPC is very limited compared to that available in proceedings in the UK and the US. It is difficult to predict just how discovery will be handled by UPC courts.

Relation with EPO opposition proceedingsDraft Rule 295 gives the UPC discretion to stay proceedings where the patent is the subject of opposition or limitation proceedings (or subsequent appeal proceedings) at the EPO, regardless of whether the EPO proceedings were commenced before or after the UPC proceedings. Draft Rule 298 gives the UPC discretion to request that the EPO proceedings be accelerated. However,

even accelerated EPO proceedings are usually slower than the twelve month period in which UPC proceedings are expected to be completed.

For those worried about a patent being enforced against them under the UPC, the filing of an opposition at the EPO may be an attractive option as it may shield them to some extent from infringement claims. Also, with disposing of a problem patent at opposition proceedings would normally involve significantly less cost than achieving the same through revocation proceedings in the UPC. Oppositions can be filed within 9 months of grant, and this deadline is strict. Patentees will have an advantage if they defer initiating UPC proceedings until the opposition filing deadline has passed.

The next stepsThe Preparatory Committee of the UPC are required to report a summary of the comments received during the consultation, and hopefully this will issue before the end of this year. Amendments to the Draft Rules will presumably be made in parallel.

Although this latest version is the 15th draft of the Rules, we expect changes before the Rules are finalised. The crucial issue of costs, for example, is not even mentioned in the 15th draft.

We expect that the Preparatory Committee will consider industry’s comments with due respect and we anticipate seeing some changes in the next set of draft Rules relating to bifurcation and injunctions. We are hopeful that the next version of the draft Rules will provide a system that allows innovators to enforce their rights without unfairly providing infringement remedies to holders of invalid patents. We shall keep you informed.

Do let us know if you would like our assistance understanding the UPC and its potential impact on your business.

Paul Derrypderry@vennershipley.co.uk

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As those following this case will remember, the Court of Appeal (CoA) referred questions to the CJEU concerning two points of law. Firstly, whether use of a composite mark constitutes “genuine use” of a mark that forms one of its components. Secondly, whether use of a black and white mark in a particular colour has any relevance when assessing infringement.

Does use of a composite mark constitute “genuine use” of a mark that forms one of its components?Specsavers has three Community trade mark registrations for their logo which comprises of overlapping ovals. Two of the registrations incorporate the word “specsavers”; whilst the third does not

Specs appealOn the 18th of July 2013, the Court of Justice of the European Union (CJEU) handed down its judgment in Case C-25212 Specsavers v. Asda Stores Ltd. To avoid repetition, I refer those interested in the background of this dispute to David Birchall’s article entitled “Specsavers v Asda: Passing-off and Trade Mark Infringement” in the 2012 Spring/Summer Edition of Inside IP Available on our website www.vennershipley.co.uk.

(in the decision, the third is referred to as the “wordless logo”).

Asda applied to have the “wordless” logo revoked on the grounds of non-use as Specsavers exclusively used the logos with the wording. The CoA requested clarification on whether use of a composite mark (i.e. the first and second logos) is sufficient to establish “genuine use” of a mark that constitutes one of its components (i.e. the third logo).

As usual, the CJEU did not give a simple “yes” or “no” answer. Instead, it held that it was possible for use of a mark composed of a word element and a device element to constitute “genuine use” of the device element and so maintain a registration of the device element.

The CJEU offered limited guidance on what factors should be taken into account when determining whether the condition of “genuine use” has been satisfied, merely stating that it will depend on the extent that the use of the composite mark alters the distinctive character of the device mark as registered and whether the device mark, in itself, actually functions as a trade mark.

The issue will, therefore, pass back to the CoA and the CoA will have to assess whether the differences between the form in which the wordless mark has been registered and that in which it has been used changes its distinctive character. If the CoA holds that the distinctive character has been changed, then the use of the composite mark will not be sufficient to constitute “genuine use” of the wordless mark.

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Reassuringly, the CJEU did confirm that it does not matter that “the word sign ‘Specsavers’ and the combination of the wordless logo with the superimposed word sign ‘Specsavers’ are also registered as Community trade marks”. This supports the common practice of registering different elements and combinations of a mark.

This decision underlines the value of registering a number of variations of a mark. Registration in one form will not adversely affect registration in another and registration of part of a composite mark may remain valid, even if that part is not used on its own.

Does use of a black and white mark in a particular colour have any relevance when assessing infringement?Specsavers registered their logos in black and white. In practice, however, they always used them in a distinctive shade of green (as shown in the picture at the start of the article). Specsavers claimed that their use of the logos in the distinctive shade of green gave rise to an enhanced reputation in that colour.

An enhanced reputation is a factor that should be taken into account when assessing 1) whether there is a likelihood of confusion, based on the global appreciation test, and 2) whether an unfair advantage has been taken. Guidance was needed in this area as it was unclear whether a mark registered in black and white and subsequently used in a particular colour could give rise to an enhanced reputation in that colour.

The trial judge did not attach any significance to Specsavers’ claim of

enhanced reputation for two reasons. Firstly, on the basis that it would run contrary to Lord Justice Jacob’s principle in L’Oreal v Bellure that assessing the likelihood of confusion must be based on the mark as registered. Secondly, on the basis that a third party should be able to look at the trade mark register and determine, purely on that basis, whether use of its mark will infringe.

The CJEU, however, disagreed and held that where a trade mark is registered in black and white, use of that trade mark in a colour will be relevant to the assessment of infringement, provided that the colour has become associated with the mark by a significant proportion of the public.

This caveat does mean that black and white marks are not interchangeable with colour marks. It must be borne in mind that the CJEU was dealing with very specific facts and for colour to become a relevant factor the use must be so extensive that it generates a reputation in the mind of a significant portion of the public.

As many readers will be aware, Asda itself has a reputation for the colour green. Interestingly, this will be a counter-factor which will need to be taken into account when assessing whether there is a likelihood of confusion or whether an unfair advantage has been taken. It remains

to be seen how these conflicting reputations will be balanced.

This is a positive development for brand owners as it is reinforces the common practice of registering a mark in black and white in order to obtain protection for all possible uses in colour. Furthermore, the CJEU has recognised that marks may develop an enhanced distinctiveness or reputation through use that is not reflected on the trade marks register. This flexibility allows the trade mark system to accommodate the realities of the market place.

The case will now return to the CoA where the guidance from the CJEU will be applied to the facts.

Peter Dawsonpdawson@vennershipley.co.uk

“This is a positive development for brand owners as it is reinforces the common practice of registering a mark in black and white in order to obtain protection for all possible uses in colour.

”

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UK Supreme Court rejects ‘Unilin Principle’In the recent landmark decision of Virgin Atlantic Airways v Zodiac Seats the UK’s Supreme Court has unanimously rejected the long-standing ‘Unilin principle’.

Under the Unilin Principle, the holder of an infringed patent had the right to proceed with an enquiry as to damages ordered in a final court decision even if the patent was subsequently revoked or amended with clear retroactive effect by another forum (for example the EPO). This case illustrates some of the problems that can arise from the system of parallel jurisdictions for determining the validity of European patents.

Background to the caseThe present decision is the latest in a series of judgments in relation to Virgin’s claim of patent infringement in respect of Zodiac’s manufacture of an upper class airline passenger seating system. Virgin sued Zodiac for infringement in 2007 and the High Court held that the patent was valid but not infringed. Then in 2009 the Court of Appeal held that the patent was valid, and infringed, and ordered an assessment of damages.

However, the patent was also the subject of EPO post-grant proceedings and in 2010 the Technical Board of Appeal held that all of the claims found to be infringed by the Court of Appeal were invalid. Under UK and European patent law, any such revocation or amendment is deemed to have retroactive effect with the result that all of the relevant claims held to be have been infringed were no longer in existence.

Following the Technical Board of Appeal decision, Zodiac made an application to the Court of Appeal seeking the discharge of the order for an enquiry as to damages. Applying the Unilin Principle, the Court of Appeal ruled that, because English proceedings had been finally concluded, the damages assessment must stand as the issues of validity and infringement were res judicata between the parties. It was this point that was considered by the UK Supreme Court.

“Lord Neuberger regarded the ruling to be based on ‘principle, fairness and commercial common sense’.

”

The Unilin PrincipleThe Unilin principle was based on the notion that once a court has ruled that a patent was valid and infringed, and no further appeal was available, then the conclusion was res judicata between the parties and may not be challenged further by the same parties. No subsequent change of circumstances could alter the patentee’s right to rely on the judgment and this applied even if the patent was subsequently revoked or amended with clear retroactive effect.

Stays of English Proceedings where there are EPO ProceedingsThe Supreme Court also criticised the current guidance provided by the Court of Appeal in Glaxo v Genentech to the effect that an English court should normally refuse a stay of its own proceedings if it would be likely to resolve the question of validity significantly earlier than concurrent proceedings before the EPO. The judgment described these guidelines as ‘difficult to defend’ further stating that ‘even if EPO opposition proceedings are concluded in time to affect the English proceedings the uncertainty and costs involved do little credit to our procedures.’ The court recommended that the guidelines should be re-examined by the Patents Court or the Court of Appeal. Accordingly, a significant effect of this judgment may be to increase the likelihood that UK proceedings are stayed pending the outcome of EPO proceedings.

Ruth Sheltonrshelton@vennershipley.co.uk

In making the decision Lord Neuberger regarded the ruling to be based on ‘principle, fairness and commercial common sense’. What remains unclear is the temporal limit of an alleged infringer’s right to rely on an amendment in the assessment of damages. In particular the question of whether damages that have already been paid to the patentee could be recovered remains unanswered. However on this subject, Lord Neuberger stated,

‘if the patent has been amended after the order has been formally passed and entered but before the damages had been paid, I suspect that the only course of action open to Zodiac would have been to seek to appeal against the award of damages, relying on the amendment as new evidence, as strict cause of action estoppel (indeed merger) would apply. Once damages had been paid, it seems to me that an alleged infringer would have to try and raise a restitutionary claim if it wished to recover the damages on the ground that the patent has been revoked or varied. I express no view on the strength of such a claim, which may well be highly dependent on the facts of the particular case.’

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The Supreme Court decisionAs stated by Lord Sumption in the Supreme Court decision:

‘the fundamental question is whether Zodiac is entitled to contend upon the enquiry as to damages that there have been no damages because the patent has been retrospectively amended so as to remove the claims held to have been infringed. This depends on whether the Court of Appeal was right to say that its order declaring the patent to be valid continued to bind the parties per rem judicatam notwithstanding that the patent was later amended on the footing that it was not valid in the relevant respects.’

The Supreme Court concluded that the res judicata rule was not always absolute and applies only as regards points actually determined by the earlier court decision. Accordingly, Zodiac could rely on the subsequent retroactive amendment of the patent as this did not amount to a rehearing of the question of validity already decided by the Court of Appeal.

Therefore, Zodiac could rely on the fact that the relevant claims had been revoked in the enquiry as to damages.

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G2/13 – the “broccoli” case continues…As was previously reported in our article entitled “Broccoli, tomatoes… and now radishes?!”, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has previously sought to provide clarification on whether plants resulting from biological processes that involve the crossing and selection of plants can be patented under the European Patent Convention (EPC).

In this regard, the EBA has decided in the consolidated cases, G2/07 and G1/08 (commonly referred to as “Broccoli I” and “Tomato I”, respectively), that selection and breeding methods comprising sexually crossing the whole genomes of plants cannot be patented. Biological processes that comprise steps which materially alter the breeding procedure, such that the resulting plants include a new or modified genetic trait that cannot be obtained by simple recombination of the parent genomes, are, however, patentable.

Following that ruling, the Technical Board of Appeal (TBA) of the EPO responsible for reviewing the “broccoli” and “tomato” patents is required to decide whether the claimed inventions thus meet the patentability requirements and, therefore, whether the patents can be maintained.

As was reported in our follow-up article entitled “G2/12 – the “tomato” case continues…”, in response to the EBA’s ruling in Tomato I, the proprietor has filed new sets of claims for the tomato patent, directed only to products (tomato fruit) and not to the breeding processes used to produce such products. In the TBA’s view, however, the patentability of plants and plant material obtained using a non-patentable breeding process

had not been settled by previous case law. The TBA has thus referred three questions of law to the EBA, under case number G2/12 (“Tomato II”), for the latter to decide on the remaining legal ambiguities. In essence the referred questions ask, while it is clear from Broccoli I and Tomato I that selection and breeding processes comprising sexually crossing the whole genomes of plants cannot be patented under the EPC, are products that directly result from such processes also non-patentable? The Tomato II referral is currently pending before the EBA.

Meanwhile, in response to the EBA’s ruling in Broccoli I, the proprietor has similarly deleted the breeding process claims from the broccoli patent, leaving only claims directed to products (including a broccoli plant, an edible portion, a seed and an inflorescence of a broccoli plant). However, in contrast to the tomato patent (where the claims are directed to products per se), the claims

of the broccoli patent are directed to products ‘obtainable by’ particular (non-patentable) breeding processes (so-called “product-by-process” claims). The proprietor has also filed new auxiliary requests as a fallback position, which are based upon these product-by-process claims, but feature a disclaimer to the non-patentable breeding processes (reciting “…wherein the claim does not encompass an essentially biological process for producing the plant/portion of a plant/seed of the plant/the inflorescence”).

As the issues in the tomato and broccoli cases are largely similar, the TBA in the broccoli case has also now referred questions of law to the EBA, under case number G2/13 ( “Broccoli II”), for the latter to decide.

The first three referred questions (reproduced to the right) are along the same lines as those referred in Tomato II. However, the second question has an additional element (sub-clause (a)), owing to the presence of the product-by-process claims in the broccoli patent. A fourth question has also been added, which essentially asks whether a disclaimer, as filed in the auxiliary requests, is permissible and would serve to successfully exclude any non-patentable subject matter. The particular questions referred are:

“It is not looking overly optimistic for the patentee at this time. ”

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1 Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

2 In particular:

(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants?

(b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?

3 Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the

production of plants excluded as such under Article 53(b) EPC?

4 If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under Article 53(b) EPC, is it possible to waive the protection for such generation by “disclaiming” the excluded process?

The EBA is specifically inviting third parties to comment on the points of law raised by the TBA in Broccoli II. If any readers are interested in submitting comments, these must be filed with the Registry of the EBA by the end of November.

The decision of the EBA in both Tomato II and Broccoli II will be very important for practice, as it will imply an important impact on the patentability of plants, plant parts and seeds. It is not looking overly optimistic for the patentee at this time, however.

In a Dutch case (Taste of Nature v Cresco), the summary proceedings Judge considered Article 53(b) EPC to exclude not only essentially biological methods from patent protection, but products directly obtained by using such methods also. In the tomato case one of the opposing parties has taken a similar line of argument and it would appear from the reasons for the interlocutory decision of the TBA in that case that it is minded to agree. This view would also now seem to have been endorsed by the TBA in the broccoli case, and potentially extended to product-by-process claims too. Moreover, although the TBA in the broccoli case has seen some justification in the proposed disclaimer resolving the conflict between the patentability of plants and the non-patentability of certain plant breeding processes, it is doubtful that there are any legal provisions that would permit such a disclaimer to be used in European patents and applications.

Naturally, we shall keep you informed of any developments.

Tanya Hearetheare@vennershipley.co.uk

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New alternative “fast-track” UK TM opposition procedureWith effect from 1 October a new “fast-track” opposition procedure was made available to anyone wishing to oppose advertised UK trade mark applications on the basis that the mark applied for is either identical, or confusingly similar, to its own earlier registered mark(s).

The opponent will now have the choice of filing either a standard opposition or a “fast-track” opposition. The Registry anticipates that decisions on oppositions filed in the “fast-track” system will be issued within six months of filing (as opposed to one year for oppositions filed on the standard basis).

The Trade Mark Registry hope to reduce “red-tape” and to make the

opposition process more straightforward and less time consuming for the public. However, given the requirements of the new system it is difficult to see how it will work. We believe it is now more important than ever to put a trademark watching service in place.

Details of the new system can be found in an article on our website http://www.vennershipley.co.uk/ show-news-id-446&p=1.html.

David Birchalldbirchall@vennershipley.co.uk

“We believe it is now more important than ever to put a trademark watching service in place. ”

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10 years of community registered designsA decade has passed since the Community design system was first introduced to provide designers with EU-wide protection for the aesthetic qualities of their products. This article takes a look back at the Community design system at this milestone anniversary to explore how the system has developed and some of the benefits that it offers over national systems of protection.

HistoryThe first form of design protection was introduced in the UK in 1787 with the passage of the Designing and Printing of Linen Act. Since then, UK design law has evolved considerably, including adoption of a registration system for designs in 1839, up to the current statute The Registered Designs Act 1949, as amended by the Regulatory Reform Order 2006. In comparison, the Community system is in its relative infancy, with unregistered protection available since March 2002 and registered protection since April 2003.

Prior to the introduction of the Community design system there existed large differences between the national design laws of member states, which sometimes resulted in designers receiving varying degrees of protection throughout the European Union. The European Commission felt that a more consistent approach to the protection of designs would consolidate the

internal market and so two new pieces of legislation were introduced to help achieve this goal. Firstly, in 1998, the Community Design Directive (Directive 98/71/EC) was introduced to harmonise the substantive aspects of the national design laws of member states. Then, in late 2001, the Community Design Regulation (Council Regulation No. 6/2002/EC) was adopted to provide the legal framework for registered and unregistered Community design protection, which are both unitary rights that are enforceable in all 28 member states of the EU.

Registered v unregistered protectionUnregistered Community design protection subsists automatically for 3 years from the date that the design is first made available to the public and prevents unauthorised use of the design in trade provided that it can be proved that the design has been directly copied.

Notably, for a design to be eligible for unregistered Community design protection the first public disclosure of the design must be made within the EU.

In contrast, a design application must be filed for registered Community design protection (either at the Office for the Harmonization of the Internal Market (OHIM) or at the designated registration authority of a member state) and an official fee must be paid. However, design registration does provide several potential benefits. Firstly, registered design protection provides a monopoly right that stops unauthorised use of the design in trade regardless of whether the design has been directly copied or independently created. Registered Community designs also offer a longer period of protection, having a maximum term of 25 years. Furthermore, the first public disclosure of the design does not need to be made in the EU. In fact, a design may be registered before the design is publicly disclosed and then publication of the registration deferred for up to 30 months.

Registered Community designs provide a relatively quick and cost effective means to obtain unitary protection that covers the entire EU. This is in part due to the central application process, wherein a single application is filed with no substantive examination of the application prior to registration. In addition, in 2011 a fast-track service was introduced that allows for designs

filed. Green Lane argued that the massage balls marketed by PMS could not have reasonably been known in the sector concerned, which they claimed was the laundry equipment sector, and so did not count as prior art. The court rejected this argument, ruling that the relevant sector includes the sector of the alleged prior art, in this case the massage products sector, and so the design was found to be invalid. The outcome of this case highlights that prior art in one sector can invalidate a design registered for an entirely different sector.

It is important to note that a registered Community design can be invalidated by the proprietor’s own disclosure of the design to the public prior to filing an application. However, a 12-month grace period is provided during which an application may be filed after the first disclosure of the design. This provision can be particularly useful for small businesses, who may not want to commit to the cost of filing an application before first marketing the design to assess whether it is likely to be commercially successful.

InfringementEach member state of the EU has elected Community design courts for dealing with Community design infringement proceedings. The Community design courts each have an

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“Registered Community designs provide a relatively quick and cost effective means to obtain unitary protection that covers the entire EU ”

EU wide jurisdiction, providing that the infringement proceedings are brought in the member state in which the rights holder or alleged infringer is domiciled (as opposed to the member state in which the infringing act occurred). This means that a Community design can be enforced throughout the EU through a single infringement action in one member state, offering the potential for a substantial reduction in litigation costs.

The first pan-European ruling in a Community design case occurred in Mattel v Simba Toys (2003). In this case, the UK High Court found that Simba Toys had infringed Mattel’s Community design for a toy doll by producing and selling similar toy dolls in a number of member states. The court awarded damages to Mattel and issued an injunction ordering Simba Toys to stop manufacturing, selling and advertising the infringing articles anywhere in the EU. In addition, Samba Toys were ordered to request the return of infringing articles from any distributors in the EU who they believed had the articles in stock.

Although the Community Design Directive harmonises many of the more important aspects of national law with the Community system, in some national courts there remain differences in the financial remedies available against an alleged infringer depending on whether a national or Community design has been infringed. This was evident in Jimmy Choo v Towerstone Limited (2008), in which Jimmy Choo brought infringement proceedings against a UK retailer for purchasing and selling handbags that infringed Jimmy Choo’s registered Community design. The retailer tried to rely on the ‘innocent infringement’ defence, arguing that they had no reason to believe that the bags they were selling infringed and therefore they should not be liable to financial remedies. However, the innocent infringement defence only expressly extends to

that satisfy some basic requirements to be examined and registered within two working days. This service has proved popular, with over 2,600 same-day registrations in 2012 alone. OHIM also provides an electronic filing service and it is estimated that around 80% of applications were filed using this method in the last year.

What is protected?The Design Regulation defines a ‘design’ as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. For a design to be valid it must be ‘novel’ and have ‘individual character’ (producing a different ‘overall impression’ on an ‘informed user’) over designs that have previously been made available to the public (the ‘prior art’). A design is only deemed made available to the public if it could reasonably have become known in the normal course of business in the EU to those specialised in the sector concerned.

What exactly constitutes the ‘sector concerned’ was explored in Green Lane v PMS (2008). Green Lane had filed a registered Community design for spiked plastic balls for use in softening laundry during tumble drying. Prior to the design filing PMS had already produced aesthetically similar spiked balls that were marketed as massage balls. After Green Lane filed the design, PMS started to market their own spiked balls for use with laundry and Green Lane brought infringement proceedings alleging that this infringed their Community design. PMS filed a counterclaim that Green Lane’s design was invalid on the grounds that it was not novel and did not have individual character over the massage balls that were marketed before the design was

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UK designs and no such provision exists in the Community Design Regulation, although it was arguable that the provisions also extended to Community design cases litigated in the UK. The High Court rejected this argument, ruling that the innocent infringement defence is not available in relation to Community designs. In an attempt to harmonise this aspect of the Community and national systems, the UK Intellectual Property Office has since put forward proposals that would allow for recovery of profits, but not damages, from an innocent infringer of either a UK or Community design.

International registrationOn the 1st January 2008 the European Community acceded to the Hague Agreement, making the international design registration system available for the first time in many of the member states of the EU. The international registration system allows applicants to obtain design protection in any states party to the Hague Agreement by means of a single application that is filed with the World Intellectual Property Organization and therefore allows for national or regional design protection to be obtained in multiple States without prosecuting numerous applications in parallel. Applicants may apply for a Community design using the international registration process, which lists the entire EU as a single designation. The usefulness of the international registration has been limited up until now by the small number of states that have signed up. However, this looks set to change when the USA officially becomes party to the Hague Agreement expected to be

December 2013, with Japan and Russia set to follow in 2014.

ConclusionWith registered Community designs providing cost-effective protection that is enforceable throughout the EU together with a quick and relatively simple application process, it is unsurprising that the Community system has proved extremely popular. In fact, the number of applications filed has increased year-on year and over 700,000 designs are now on the Community register. In contrast, the number of national designs filed has decreased dramatically in the last ten years. This is illustrated in the graph below, which compares the number of Community and national designs filed by UK applicants. Notably, the number of UK national filings has reduced by more than half since the introduction of the Community system whereas the total number of designs filed has remained fairly constant, a trend that suggests many designers prefer the advantages of Community-wide protection. It will be interesting to see how the law evolves in the next ten years and whether the popularity of the Community system continues.

George Hudsonghudson@vennershipley.co.uk

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Number of UK national and Community designs filed by UK applicants

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Number of UK national and Community designs filed by UK applicants

Community Design Applications Filed Each Year

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Help or AdviceIf you would like more information or advice on any of the topics covered in this issue please feel free to contact us. We will be happy to answer any of your questions.

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This newsletter is for general information for our clients. Its contents are not a complete statement of the law on any subject. Professional advice should be sought before any course of action is pursued.

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