Impact of EPC2000

The first major change to the European Patent Convention (EPC) since 1973 occurred on 13 December 2007 when a new European Patent Convention (EPC 2000) came into force. 

EPC revision was intended to:

• Harmonise the EPC with international law;
• Simplify or remove articles and rules of the EPC that were overcomplicated or redundant;
• Provide greater flexibility by re-categorising certain articles of the EPC as rules (rules can be changed by the European Patent Office (EPO), articles can only be changed by a special diplomatic conference); and 
• Implement improvements to the system suggested by applicants and by the EPO.

• The requirements for obtaining a filing date have been relaxed; an application may now be filed in any language and without claims;
• Priority may be claimed from applications filed in World Trade Organisation Countries as well as Paris Convention Countries (this benefits applicants in developing, non-Paris Convention countries);
• It is now easier to recover an application after it has been deemed abandoned by the EPO.  In most cases this will simply require the payment of a fee and the completion of all outstanding actions.  Previously, in many cases, the applicant had to show that the loss of rights had occurred in spite of them taking all due care; and
  
• Post grant amendment has also been made easier with the introduction of a centralised limitation and revocation procedure which will allow the patentee to make amendments to the scope of the claims at the EPO. Previously, where a patentee had become aware of the existence of additional relevant prior art, amendment could only be made via national courts.  This change should greatly reduce costs for the patentee.

However, the bad news is:

• EPC 2000 has changed the way in which the scope of protection afforded by the claims is to be interpreted in patent infringement proceedings before national courts. Up to now, the extent of protection has been determined by the claims of the granted patent. The changes mean that due account shall be taken of any element which is equivalent to an element specified in a claim. The purpose of this change is to harmonise the interpretation of European patents by national courts when considering infringement cases. It is believed that the explicit use of the term “equivalents” could further broaden the scope of protection afforded to a patentee and could make it harder to interpret the extent of protection given by a granted patent.
• EPC 2000 has also removed the option of obtaining supplementary EPO searches for international patent applications entering the European regional phase. Under current practice, where the EPO finds that the application contains more than one claimed invention, it has been possible to request additional searches for second and subsequent inventions.  Therefore, the applicant can choose which invention they wish to have examined.  Applicants who have an international patent application where there is a “unity of invention” objection should seek advice on possible amendments to the application well before entry into the European regional phase to ensure that the most commercially valuable invention is examined by the EPO.

The changes that have been made do provide significant improvements in some areas.  However, there is a sense that, from the applicant’s perspective, the new arrangements give with one hand and take away with the other.

Simon Black is a Chartered Patent Attorney at Gilholm Harrison’s new Scottish office in Glasgow.  He advises clients on all matters concerning the protection of inventions, particularly in the fields of computer software, electronics and mechanical engineering.

The views expressed in this article are the author's own personal opinions and may not reflect those of Shepherd and Wedderburn.

20 December 2007

Dirty tricks or clever dicks? - The Commonwealth Games Bill

Alongside any major sporting occasion these days comes unlimited scope for marketing opportunities. Or does it?

Under new legislation introduced specifically for the Glasgow Commonwealth Games of 2014, ambush marketing, street vending, ticket touts and general advertising within the vicinity of the Games will all be outlawed. Fines of up to £20,000 will be imposed, and it will not be a defence that a licence was granted prior to the legislation's enactment.

Glasgow's Games' bid included a commitment by the Scottish Government to prohibit ambush marketing.  Accordingly, a Commonwealth Games Bill was introduced in early November and from now, up until 21 December 2007, anyone is invited to submit a view to the Scottish Parliament (where the Bill now resides) in writing on the content of the Bill.

Ambush marketing is a planned attempt by a third party to associate itself with an event, implying an authorised association with the event where there is none.  This is generally at the expense of another's authorised association. Examples of ambush marketing include Pepsi's hot-air balloon over Wembley during a Coca-Cola sponsored cup final; Linford Christie's Puma contact lenses at a press conference at the Atlanta Olympics putting Reebok's $40 million outlay somewhat in the shade; (perhaps the greatest coup in "ambush marketing" came at in Atlanta 1996, when Nike bought a vast number of billboards around Olympic sites); and in the run-up to Athens 2004, an estimated $750,000 was spent on clearing thousands of billboards from buildings and rooftops around Athens - and reserving those near stadiums for the main sponsors.

While some see this as unfair suppression of enterprise, sponsors forking out for high-profile advertising space will doubtless be expecting protection of their significant investment. Certainly without guaranteeing that exclusivity, it is harder for organisers to play competitive sponsors off against each other. The high levels of exposure now afforded to sports sponsors of a main event – particularly when it comes to internet coverage – means companies will pay handsomely for the association.

Respondents to the Scottish Government's initial consultation process included Ebay, the Advertising Association and the Scottish Daily Newspaper Society, and one individual calling for a bilingual corporate image (Gaelic, as you ask).

It is argued by advertisers that sufficient legislation already exists to cover copyright, trade marks and passing-off. They contend that such legislation gives unparalleled power to event holders, pushing up the price of sponsorship and thus preventing ordinary smaller businesses from benefiting at all from major events. So it appears unlikely that routes to Glasgow's stadia will be lined with men selling felt hats with jangly bells on, or flags bearing Lions Rampant – unless they're wearing Nikes.

Meanwhile, similar legislation is being drafted for the Antipodean 2011 Rugby and 2015 Cricket World Cups, as well as London's Olympic Games in 2012. One rumour circulating suggests that the words 'gold', 'silver' and 'bronze' will all be forbidden to advertisers during the London games.

To read the Commonwealth Games Bill responses click here.

Click here to access the current version of the Bill.

20 December 2007

Unauthorised images pose Prince some problems

Much media coverage was given earlier in the year to Prince's announcement that he was considering taking legal action to "reclaim his art on the internet". It was reported that the artist intended to file law suits against a number of websites including the popular UGC (user generated content) provider, YouTube in relation to unauthorised video clips of his concerts being posted on the internet. It is the intention of this article to look in more detail at exactly how the law in the UK would support Prince's position.

Prince's main concern regarding the YouTube website seems to relate to the appearance on that website of mobile phone video clips of his summer concerts at the O2 Arena in London. Fans attending the concerts were banned from taking photographs or video footage during Prince's performance, yet thousands of videos clips, apparently filmed on mobile phones, appeared on YouTube following each gig in spite of the ban.

As composer and arranger of most of his songs, Prince would, under UK law, automatically own the copyright in the music and lyrics of those songs. Unlike in the USA, no registration of copyright works is required in the UK. The unauthorised recording of the songs as performed during the summer concerts and subsequent communication of those songs to members of the public over the internet could infringe Prince's copyright in the songs under the Copyright, Designs and Patents Act 1988, which is the principal legislation governing copyright in the UK.

As the videos in question show Prince singing live on stage, Prince will enjoy various performers' rights in his live performance in addition to the copyright protection relating to the songs themselves. Performers' rights include reproduction and distribution rights as well as the right to make the performance available to the public. That the performance was reproduced and made available without Prince's authorisation would also seem to indicate an infringement of his performers' rights.  

Unfortunately for Prince, establishing that his copyright in his songs and his performers' rights to his concert performances have been infringed by the appearance of the concert clips on YouTube and proving successfully that YouTube, as opposed to the individual fans, is liable for this are two very different things.

The legal position of internet providers of user generated content (UGC) services, such as YouTube, in relation to liability for the content uploaded by the user is somewhat uncertain. There is a strong argument that both the reproduction right and the right to make protected works available, both of which are inherent in copyright and performers' rights, may be infringed by the availability of the unauthorised Prince clips on YouTube due to the reproduction, storage and streaming of content across the internet without Prince's consent.

YouTube could argue, however, that it is immune from liability under a defence offered by the Electronic Commerce (EC Directive) Regulations 2002 to rights infringement where a UGC provider can establish that it merely provides a content hosting forum and that a user posting content to that forum was not acting under its "authority". This defence would not be available to YouTube if was aware of unlawful or apparently unlawful activity.

The increasing popularity of UGC looks set to continue and the legal position of UGC service providers is likely to be clarified as more rights owners take court action against infringement.

Actions being brought in the US, most notably the US $1 billion suit brought by media giant, Viacom, against YouTube for copyright infringement are likely to be highly relevant in the UK also, given the global nature of the internet and UGC websites.

Shepherd and Wedderburn will be monitoring developments in this area so look out for further updates on the legal positions of UGC service providers in our future IP e-bulletins.

20 December 2007

December 2007 Update - The Implementation of the Gowers Review of Intellectual Property

The Gowers Review of Intellectual Property was published on the 6th December 2006, and we included an article regarding the implementation of the Review's recommendations at that stage in our IP e-bulletin of 19th June.  The Review recommended retaining existing approaches in a range of areas, including the 50 year copyright term for sound recordings and for patents not to be further extended in the fields of software, business methods and genes.

Most recommendations are to be preceded by public consultation or, in some cases, relate to  changes to EU law (e.g. Recommendation 45 in support of an EU court for cross border disputes).  There has been some notable progress since our last update in June however, including:

• The UK IPO in September 2007 launched a public consultation on a fast track system for patent and trade mark applications, as recommended by the Review.  An accelerated patent application could be granted in under a year under the fast-track process, whilst under the current system the typical timescale is 2-3 years.   The proposed accelerated trade mark application would allow examination to be requested within 10 business days, in contrast with the current period of 4-6 weeks.
• Further to the Report recommending work sharing arrangements with the US and Japan, the UK Intellectual Property Office (UK-IPO) and the US Patents and Trademarks Office (USPTO) agreed in September 2007 a system of sharing and recognising each other's examination reports, mirroring a deal earlier this year between the UK and Japan.
• By the end of 2008 the UK Intellectual Property Office is to provide an information service for new companies registering with Companies House.  This, according to the Review recommendation, is to provide "comprehensive information" on registration and use of intellectual property.
  

20 December 2007

IP Issues in Second Life and Similar Virtual Realities

For those of us who are not immersed in the world of science fiction, a virtual reality (commonly referred to as "VR") is a simulated environment that aims to have some resemblance to reality.  Users exist in a VR in the form of an "avatar", a simulated person they control.

Second Life, created by Linden Labs ("LL"), is the most successful VR to date, currently having over 11 million residents or registered users.  At first glance it is easy to dismiss Second Life as a computer game whose commercial relevance is only to software developers and other similar business models. 

However, with such a significant number of users who are increasingly creating and trading goods and services for US dollars - $1.4M is currently in circulation – multinationals have been quick on the uptake.  Nike, IBM and Toyota are examples of corporations all using Second Life for product sales, advertising, meetings and/or testing reaction to new products. The Starwood hotel chain has taken advantage of the opportunity to reach a broad marketplace at a low cost, using a Second Life prototype to test consumer reaction to its new hotel concept.  Even the Swedish Foreign Ministry has opened an in-world Swedish embassy.

Such a nascent, fast growing marketplace has unsurprisingly brought with it a range of intellectual property ("IP") issues. The most significant issue to date has been trade mark infringement, with trade marks created outside the confines of Second Life ("real-world") being applied to products created in-world without authorisation. Given the ease of copying in-world creations even those products legitimately created by users can be copied and sold by unscrupulous traders. The fundamental issue here is determining the owner of IP created in-world, and in this respect Second Life takes a different approach to the majority of its contemporaries. Traditionally, IP is assigned to the hosting company, however with Second Life, the user retains IP in the works they upload.   This is subject to the caveat that ownership of IP rights in such creations does not give owners the right to access the data stored by LL.  LL also have a licence to use the IP and reserve the right to delete or alter any Second Life data, which includes items created by users – clearly a significant caveat which undermines the rights of users, however this right is not commonly exercised other than in the case of IP infringement.

If in-world creations can be copied, how is IP infringement dealt with? The Terms of Service for Second Life are governed by California Law, and residents may resolve minor disputes by in-world legal proceedings. LL also has the power to "evict" residents who infringe others' IP and remove infringing articles. While these may be useful to users, "real-world" IP owners face a number of difficulties where their IP is infringed in-world.

The fundamental, and for the time being problematic, issue in raising actions for IP infringement in-world is identification of the infringer. Second Life is essentially an anonymous service, as the first litigant is finding out to its detriment, having to raise proceedings against "John Doe".  The litigant has been required to first raise an action against LL to disclose the infringer's real identity. Another issue is that as users are logging on from all over the world, their local jurisdiction may govern the IP that they create. 

To take trade mark law as an example, another difficulty of enforcement is that in-world goods are not identical to the trade mark owner's goods with one being tangible and the other not.  Actions based on principles of passing off (where applicable in the relevant jurisdiction) may be easier to progress, although proving actual damage may be difficult as real-world sales are unlikely to be effected. The grounds for passing off in these instances would primarily be based on consumer confusion resulting in a likelihood of association and damage to reputation.  Yet, as outlined above, such actions will vary between jurisdictions, a further issue which must be considered but falls outwith the scope of this article.

Finally, LL has allowed users to use specialised software to restrict the ability to copy in-world creations although as with conventional products where there is software protecting IPR there are those trying to circumvent that software. LL's approach is understandably to try to encourage IP issues to be dealt which in-world although this is unlikely to be met with enthusiasm from IP owners affected outwith the system. Another problem for real-world enforcement of IP rights infringed in-world would be the enforcement of any judgement that is obtained. Even the judgement can be enforced, will the infringer be able to pay damages?

Real world brand owners need to consider their approach both to infringement in VRs but also whether they can profit from exploiting their brands through VRs like Second Life.  A word of warning, while there may be money to be made from Second Life, money can also be lost as in the case of Ginko Financial a virtual bank which collapsed in August 2007 with approximately US $740,000 in liabilities.

20 December 2007