As we know from Wikipedia, stress testing is a form of testing that is used to determine the stability of a given system or entity. It involves testing beyond normal operational capacity, often to a breaking point, in order to observe the results. The concept is quite fashionable nowadays; it has reached mainstream in the context of the financial sector and even when making an assessment of operational characteristics of a railway station.
Now it looks as if we shall be witnesses of something that comes near to a major stress testing exercise of the patent system.
We all are supposed to be aware that an awful lot of litigation is currently going on in the field of mobile devices like smartphones and tablet computers. Reuters have published nice infographics on patent-related suits between mobile device / component manufacturers here. Moreover, there are press reports saying that Apple, Inc., is about to launch another patent based suit against Samsung allegedly aiming at a EU wide ban on all of Samsung’s smartphones and tablet computers under its Galaxy brand. If these speculations were true and if Apple were to prevail in such battle, the suit could not only be a blow to Samsung but also to the Android ecosystem in its entirety.
Another litigation front has been opened by a company named Lodsys, a non-pracitcing entity (NPE) suing certain individual software developers who brought to market smartphone apps which allegedly are infringing Lodsys’ patent rights.
It appears to be quite clear that the motivation of Google to acquire Motorola Mobility for USD 12,5 billion is mostly fueled by their desire to overcome a perceived inferiority of their own patent portfolio.
As of 1 September 2011 the fees for international (PCT) applications will change (see EPO Notification of EPO of 3 Augst 2011) as follows:
- International filing fee: from EUR 999 to EUR 1 088
- Fee per sheet in excess of 30: EUR 11 to EUR 12
- Reductions (under the Schedule of Fees, item 4):
- Electronic filing (the request being in character coded format) from EUR 150 to EUR 164
- Electronic filing (in character coded format) from EUR 225 to EUR 245
- Handling fee: from EUR 150 to EUR 164
The fees for international applications are calculated in Swiss Francs (CHF). The fee change is due to another amendment (after that of 1 January 2011) of the equivalent amounts in EUR by the International Bureau (see Official Notice in PCT Gazette of July 2011 (p. 94).
Fernando Pessoa contemplating on patentability of software inventions.
Back in September 2010 the EPO-sponsored 15th European Patent Judge’s Symposium took place in Lisbon, where the judges discussed developments in European patent law. The symposium was attended by 120 patent judges from Europe and guests from the USA and Japan. A big issue of course was the EU patent and the related litigation system, but the related discussion is now meaningless in view of the recent developments in this regard. But there were other interesting topics discussed as well.
For instance, in a working session on “Patentability of Computer implemented inventions”, Mr. Dai Rees – Chairman of an EPO appeal board and member of the Enlarged Board of Appeals that issued the G3/08 opinion – outlined the developments of the respective EPO case law. His contribution is documented in an article in the conference proceedings: Special edition 1/2011 of EPO Office Journal (PDF, 5 MB), pp. 93 to 102. The below summary reflects my personal observations and understanding of Mr. Rees presentation and also contains some individual flavours and thoughts.
Relevant Provisions: As a reminder, the provisions of the EPC to be considered for computer programs or technicality issues not only involve Art 52 EPC (“programs for computers as such“), but also Articles 18, 19, 21, 22 and Rules 42(1)(a), (c), 43(1) and 44 EPC, which use the term “technical” in different contexts. Further, in the EPC 2000 revision, Art 52(1) EPC was clarified in that patents shall be granted for inventions “in all fields of technology”, which, however, was regarded as a clarification rather than a substantive amendment of the Convention.
Amazon’s so called “One-Click Patent” is one of the most controversially discussed software inventions ever. The term, which nowadays is used as a cipher for a prototypical business method patent, was originally coined for US 5,960,411 titled “method and system for placing a purchase order via a communications network” (filed 12 Sep 2007, granted 28 Sep 1999; pdf), which has been enforced against competitor Barnes & Noble and licensed to Apple.
The respective teaching enables easy Internet shopping in that a customer visits a website, enters address and payment information and is associated with an identifier stored in a “cookie” in his client computer. A server is then able to recognize the client by the cookie and to retrieve purchasing information related to the customer, who thus can buy an item with a “single click”.
EP Parent Application: The first “1-click” application in Europe, EP 0 909 381 A2, related to an Internet-based customer data system and claimed a “method for ordering an item using a client system“. The application has been withdrawn on 08 June 2001 in view of approaching oral proceedings that had been summoned by the Examining Division with a negative preliminary opinion saying that the claimed teaching was not inventive over prior art document D3 (Baron C: “Implementing a Web shopping cart”, Dr. Dobbs Journal, Redwood City, CA, 01.09.1997). During the proceedings, Dutch Internet bookseller BOL.COM supported the Examining Division by a number of third party observations according to Art. 115 EPC, all of which pointing the Examining Division to the relevance of D3 (see e.g. here or here).
Since some time there is a political dispute ongoing relating to the enforcement of IP rights – here: in particular trade marks and patents – at EU borders when generic drugs get onto EU territory for transit. The concerns are that drugs might get seized during transit by EU border control Officials despite the fact that trade therein is illegal neither in the country of origin nor in the final destination country. Also in view of ACTA such voices have been raised which got, however, a firm denial from the EU Commission; see also the Directorate-General for External Policies of the Union (Directorate B – Policy Dept.) publishing a study conveying an assessment of the Anti-Counterfeiting Trade Agreement (ACTA) which had been requested by the European Parliament’s Committee on International Trade .
This particular issue has long been a disputed item on the agenda of negotiations for an India / EU Free Trade Agreement. EU recognises India as an important trade partner for the EU and a growing global economic power, saying that it combines a sizable and growing market of more than 1 billion people with a growth rate of between 8 and 10 % – one of the fastest growing economies in the world. Although it is far from the closed market that it was twenty years ago, India still also maintains substantial tariff and non-tariff barriers that hinder trade with the EU. The EU and India hope to increase their trade in both goods and services through the Free Trade Agreement (FTA) negotiations that they launched in 2007. According to a press report, Indian and European trade ministers had hoped to sign the ambitious deal by the end of March 2011. However, there have been, inter alia, problems with the protection of intellectual property.
On July 28, 2011, the Ministry of Commerce & Industry of India has published a press release (emphasis added by me, -AHH):
“European Union has proposed a settlement of the dispute by confirming the detailed principles agreed in the Understanding to guide border enforcement of intellectual property in the EU. In addition, EU agreed to India’s request for adoption of guidelines which would confirm the principles agreed to in the Understanding with a view to give greater and immediate legal certainty for producers and traders. EU also agreed to reflect the principles contained in the Understanding in its proposal for a new Regulation to replace Regulation 1383/2003. In return the EU sought an assurance that India would refrain from further steps in the ongoing dispute. Mr. Jean-Luc Demarty, Director General, European Commission sent a letter to this effect on 17 June 2011 to Commerce Secretary Shri Rahul Khullar.
India has taken note of the commitments offered by the EU. India has reiterated the core principle of the Understanding that the mere fact that medicines are in transit through EU territory, and that there is a patent title applicable to such medicines in the EU territory, does not in itself constitute enough grounds for customs authorities in any Member State to suspect that the medicines at stake infringe patent rights. However, a situation in which medicines are in transit through EU territory and there is adequate evidence that satisfies the customs authorities that there is a substantial likelihood of diversion of such medicines on to the EU market may constitute enough grounds for customs authorities to suspect that the medicines at stake infringe patent rights in the EU. [...]“
Hence, it looks as if pragmatism and common sense have prevailed in taking away this particular obstacle to the conclusion of the Free Trade Agreement.
(Image: EU Commission)
I. RECENT CASE LAW
In the past two years we have seen a number of quite interesting decisions of the German Federal Court of Justice (Bundesgerichtshof; BGH) dealing with patent-eligibility of software-related inventions.
The first decision in the row was X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“, “Control of Examination Modalities”) of 20 January 2009, in which the BGH analysed the circumstances under which an embedded software represents statutory subject-matter (see comments). In this decision the BGH sketched a two-step approach to examine whether or not an invention is sufficiently “technical” to qualify for patent eligibility:
- Is the subject-matter a “technical invention” as required by § 1 I PatG ?
- Does the invention fall under the exclusion of a “computer programs as such” as requited by § 1 III No. 3, IV PatG ?
An additional third step completes the examination scheme:
- Do the technical features render the invention novel and inventive over prior art?
Recently the Directorate-General for External Policies of the Union (Directorate B – Policy Dept.) has published a study conveying an assessment of the Anti-Counterfeiting Trade Agreement (ACTA) which had been requested by the European Parliament’s Committee on International Trade (Contract No. EXPO/B/INTA/FWC/2009-01/Lot7/ 12 June 2011 PE 433.859 / Editorial closing date: 11July 2011). Of course, the study should be construed in a way that any opinions expressed in the document are the sole responsibility of the respective author(s) and do not necessarily represent the official position of the European Parliament. Political debates in coming fall will show the Parliament’s position.
Named authors of the study are:
- Prof. Anselm Kamperman Sanders, Faculty of Law, Maastricht University
- Assistant Professor Dalindyebo Bafana Shabalala, Faculty of Law, Maastricht University
- PhD Researcher Anke Moerland; Faculty of Law, Maastricht University
- Dr. Meir Pugatch, IGIR Fellow, Director of Research, Stockholm Network, and Senior Lecturer, University of Haifa
- Paolo R. Vergano, IGIR Fellow and Partner at Fratini Vergano – European Lawyers
As set out in the study, ACTA was born out of the frustration of the major industrialised economies with progress on monitoring and norm-setting on the enforcement of intellectual property rights in multilateral fora. In the WTO Council for TRIPS (‘TRIPS Council’), Brazil, India and China have consistently blocked the inclusion of enforcement as a permanent agenda item. At the World Intellectual Property Organisation (WIPO), enforcement issues were relegated to a purely advisory committee. According to the study, ACTA can also be seen as an extension of the existing strategies of the main ACTA parties to include significant provisions on enforcement in their bilateral and regional free trade agreements (FTAs).ACTA was motivated by a desire to establish common provisions in international trade agreements containing rules on anti-counterfeiting. Within the EU the ACTA has been the source of some concerns regarding the non-transparent way it was negotiated and whether it meets to aims agreed by the European Parliament and Commission that it would be compatible with the existing acquis communautaire and the World Trade Organisation’s Trade Related intellectual Property rights (TRIPs) Agreement.
The study addresses two key questions regarding ACTA:
- Is it in conformity with the EU Acquis; and
- is it in conformity with the existing international obligations of the EU and its member states?
The question as to whether or not ACTA it in conformity with the EU acquis communautaire is of some political importance. Of course, the respective competent and empowered bodies of the EU are free to extend that acquis communautaire at any time if so decided. However, in view of general concerns of conflicts between ACTA and civil liberties and legitimate economic interests not based on IPRs, plus critics on the murky, secrecy-shrouded history of ACTA, there is a fierce public debate if ACTA should be ratified at all. In order to ease the formal adoption of ACTA, the EU Commission insists on their view that ACTA is merely declarative, i.e. it does not extend the acquis communautaire. If an expert opinion would supply reasons for rejecting this position, the Commission might well come into political trouble. This scenery appears to be the set prepared for the assessment now published.
The study finds:
Continue reading »
Today, the Court of Justice of the European Union (CJEU) has published the final decision in Case C‑324/09 (L’Oréal SA et al. vs. eBay International AG et al.).
From the Court decision we learn that L’Oréal is a manufacturer and supplier of perfumes, cosmetics and hair-care products. In the United Kingdom it is the proprietor of a number of national trade marks. It is also the proprietor of Community trade marks. L’Oréal operates a closed selective distribution network, in which authorised distributors are restrained from supplying products to other distributors.
Furthermore, eBay operates an electronic marketplace on which are displayed listings of goods offered for sale by persons who have registered for that purpose with eBay and have created a seller’s account with it. eBay charges a percentage fee on completed transactions. eBay enables prospective buyers to bid for items offered by sellers. It also allows items to be sold without an auction, and thus for a fixed price, by means of a system known as ‘Buy It Now’. Sellers can also set up online shops on eBay sites. An online shop lists all the items offered for sale by one seller at a given time. Sellers and buyers must accept eBay’s online-market user agreement. One of the terms of that agreement is a prohibition on selling counterfeit items and on infringing trade marks. In some cases eBay assists sellers in order to enhance their offers for sale, to set up online shops, to promote and increase their sales. It also advertises some of the products sold on its marketplace using search engine operators such as Google to trigger the display of advertisements.
According to the factual section of the Court decision, starting point was that on 22 May 2007, L’Oréal sent eBay a letter expressing its concerns about the widespread incidence of transactions infringing its intellectual property rights on eBay’s European websites. L’Oréal was not satisfied with the response it received and brought actions against eBay in various Member States, including an action before the High Court of Justice (England & Wales), Chancery Division.
L’Oréal’s action before the High Court of Justice sought a ruling, first, that eBay and the individual defendants are liable for sales of 17 items made by those individuals through the website www.ebay.co.uk, L’Oréal claiming that those sales infringed the rights conferred on it by, inter alia, the figurative Community trade mark including the words ‘Amor Amor’ and the national word mark ‘Lancôme’. The Court decision confirmed that it was common ground between L’Oréal and eBay that two of those 17 items are counterfeits of goods bearing L’Oréal trade marks.
The Court (Grand Chamber) today ruled:
Continue reading »
After Poland took over EU Presidency from Hungary on July 01, 2011, the Council of the European Union has published on July 08 a Document 12661/11 titled Organisation of work on the patent reform under the Polish Presidency:
The Presidency wishes to inform delegations of its decision to assign to the Friends of the Presidency Group the task of continuing the work on the following three files:
(a) Proposal for a Regulation of the European Parliament and the Council implementing enhanced cooperation in the area of the creation of unitary patent protection1 based on Article 118(1) TFEU;
(b) Proposal for a Council Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements2 based on Article 118(2) TFEU;
(c) Draft agreement on a Unified Patent Court and draft Statute .
The Friends of the Presidency Group is invited to regularly report back to COREPER about the outcome of its discussions.
To ensure political steering of the discussions, the responsibility for negotiations should be put on IPR Attachés, who could be accompanied by experts in relevant fields as necessary, in a 1+1 format. The Friends of Presidency Group will not have interpretation.
The Presidency intends to organise the first meetings of the Friends of the Presidency Group on 11 and 18 July, to which invitations will be forwarded to the IPR Attachés.
Well, what the heck is that “Friends of the Presidency Group”? Although Google surely is your friend, it appears to be a bit difficult to obtain any information on this obscure body. However, the Slovakian EU Presidency of 2008 had published a hint:
Continue reading »
Today, the EU Council has published two important Documents concerning the Anti-Counterfeiting Trade Agreement (ACTA) between the European Union and its Member States, Australia, Canada, Japan, the Republic of Korea, the United Mexican States, the Kingdom of Morocco, New Zealand, the Republic of Singapore, the Swiss Confederation and the United States of America:
- EU Council Document 12190/11 conveying Document COM(2011) 379 final of the EU Commission with a Proposal for a Council Decision on the signing, on behalf of the European Union of the Anti-Counterfeiting Trade Agreement (ACTA); and
- EU Council Document 12193/11 conveying Document COM(2011) 380 final of the EU Commission with a Proposal for a Council Decision on the conclusion, on behalf of the European Union of the Anti-Counterfeiting Trade Agreement (ACTA).
Obviously, a two-step process is anticipated:
- Document COM(2011) 379 final, if adopted, authorises the President of the Council to designate the person(s) empowered to sign the ACTA text.
- Document COM(2011) 380 final, if adopted, approves the Anti-Counterfeiting Trade Agreement (ACTA) on behalf of the European Union.
Consent of the European Parliament is required for approving ACTA. Since ACTA is considered “mixed” agreement, all 27 national Parliaments of the EU Member States also need to formally ratify. Some controversial debate is to be expected because of not all parliamentary groups of the European Parliament might be happy with signing and adoption of ACTA. Although the EU Commission claims that ACTA does not modify the EU acquis because EU law is already considerably more advanced than the current international standards, they want it be Officially approved, arguing that it will introduce a new international standard, building upon the World Trade Organisation’s TRIPS Agreement (adopted in 1994). According to the EU Commission, ACTA will provide benefits for EU exporting rightholders operating in the global market who currently suffer systematic and widespread infringements of their copyrights, trademarks, patents, designs and geographical indications abroad. Furthermore, EU Commission re-iterates that ACTA is a balanced agreement because it fully respects the rights of citizens and the concerns of important stakeholders such as consumers, internet providers and partners in developing countries. However, this assertion is likely to be politically contested in the EU Parliament as well as in various quarters of the public.
The final wording of ACTA is attached to both Documents mentioned above. A brief summary of the ACTA provisions can be taken from FICPI Working Document EXCO/ZA11/CET/1103 (PDF).
Recently the Mexican Senate has voted against ACTA; see here.
MISCELLANEOUS
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