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World IP Day – 26th April – Celebrating Innovation In a Crisis

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World IP Day

 

The arrival of the Coronavirus onto the world’s stage has brought into sharp focus the need for businesses to combine thinking on their feet with innovation and creativity. As we celebrated World Intellectual Property Day on the 26th April, it is a chance to focus on the role intellectual property (IP) rights play in encouraging innovation and creativity, Albright IP’s managing director Robert Games takes a look at how things might play out for the companies which are willing to ‘think smart’…

 

With the NHS crying out for ventilators, and personal protective equipment such as masks, scrubs and face shields, it’s those companies that can demonstrate agility and manufacturing flexibility that are proving best placed to respond. We’ve seen some great examples of businesses which have recognised the need and taken a creative approach to their design, manufacturing processes and product lines.

 

At one end of the scale, you’ve got companies like Ineos and Dyson switching design and production to hand sanitiser and ventilators respectively. Ineos have committed to building a whole new manufacturing facility in just 10 days with a planned one million bottles of much-needed hand sanitiser due to come off its production lines each day – something that will be replicated in Germany.

 

Leading from the front

 

Dyson is working in partnership with The Technology Partnership (TTP) on a brand-new ventilator design called the CoVent which can be made quickly and at high volumes. Using Dyson’s existing Digital Motor design, as well as the company’s air purification products, the new product will deliver safe and consistent ventilation for COVID-19 patients.

 

Another UK company, Gtech, more familiar with the world of household appliances and vacuum cleaners, has made two ventilator designs available free of charge (www.gtech.co.uk/ventilator) after the government decided it no longer required the company’s assistance.

 

There’s the fantastic partnership between University College London, NHS clinicians and Mercedes Formula 1 which has developed a new breathing aid which can deliver oxygen to the lungs without the need for a ventilator.

 

And there’s the VentilatorChallengeUK consortium which has brought together some big names in the industrial, technology and engineering sectors, including Airbus, BAE Systems, Ford, Rolls Royce and Siemens. They are pooling their creative resources to develop new ventilator technology at speed.

 

At the same time, Innovate UK has been leading from the front and set up a competition to encourage business-led innovation in response to COVID-19. It’s offering a total of up to £20m and the winners are due to be announced on May 1st.

 

It’s encouraging to see so many organisations putting competitiveness to one side and coming together during this unprecedented time. Keeping their innovation and creativity muscles flexed in this way will stand them in good stead once we emerge from the other side of this pandemic.

 

This continued approach to innovation will keep them better placed for whatever the next chapter looks like, as will their employees who will very likely have learned new skills and expertise. But it’s not only the world-renowned brands that are demonstrating their flexibility when it comes to addressing the current challenges being faced in the health service and wider carer sectors

 

Celebrating our local innovation

 

In the South West we have our own business heroes that should be celebrated such as Emma Willis the Gloucestershire fashion house that has turned its hand to producing scrubs for NHS frontline staff; the Charlton Kings school, Balcarras, that’s used its 3D printer to make face shields;

 

And Staverton-based company Safran has joined forces with Decathlon and Segula Technologies to produce face protection masks. The masks are adapted from Decathlon’s Easybreath Subsea snorkelling mask. They’ve also made the adaptation design available via open access to anyone who wants to make the masks using their own 3D printer.

 

Further afield is the Canadian boy scout who deserves an honorary mention! He designed and printed facemask ear guards using ingenuity and his own 3D printer. He’s now shared his creation so anyone with a 3D printer can download and print his design.

 

Keep the innovation going

 

This approach to innovation and creativity perfectly sums up what World IP day stands for and showcases the potential within all businesses to innovate when they put their mind to it. There’s a humbling generosity of focus at the moment on sharing ideas, designs, equipment and know-how, and this is absolutely how it should be if we’re going to ensure the health service, the care sector and more besides have the right tools and equipment to enable them to do their jobs as safely as possible.

 

While it’s quite right for companies to be putting collaboration first in the current climate, it’s also important for companies who want to stay ahead of the competition and grow their businesses to look after their intellectual property.

 

When we final emerge from this unprecedented chapter in our shared lives, I would encourage businesses to look back at what they’ve learned, capture any innovative ideas or processes that will help them in the future, and continue to encourage creativity among their workforces.

 

Can a Deity Apply For a British Patent?

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British Patent

 

In this series of three articles, we explore common and slightly less common questions regarding Applying for and Owning a British or European Patent.

 

Who can apply for a patent?

 

Under UK law, anyone can apply for a patent, whether by themselves or jointly with another person. In this context, a “person” is understood to be a natural person (i.e. an individual) or a corporate body, limited companies being the most common type of the latter. Other corporate bodies include foreign states, universities and limited liability partnerships (LLP) in the UK, to name a few.

 

An unincorporate partnership on the other hand, such as a limited partnership, is excluded from applying for a patent. In this case, one or more of the personally responsible partners would need to apply instead.

 

The UK Intellectual Property Office (UKIPO) will also accept as applicant some foreign corporate entities not recognised as such in the UK, an extensive but non-exhaustive list of which can be found here.

 

If not listed above, other foreign entities which are not considered corporate bodies in the UK but which, under the laws of a foreign state can own land and property in their own name may potentially be considered as applicants for a British patent. For instance, Hindu law in India recognises a Hindu idol as both a deity and a “juridical subject being capable in law of holding property”.  Therefore, whilst this scenario remains to be tested, a Hindu idol may, in theory, apply for and own a British patent (a form of property). In practice, the representatives of the applicant would need to confirm to the UKIPO that the Hindu idol can own property.

 

Similar provisions exist under European law. A European patent application may be filed by “any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it” (Article 58 EPC).

 

What is a proper chain of entitlement and why is it important?

 

Applying for a patent is only the first hurdle in the lengthy process of obtaining patent protection. Whilst anyone can apply for a patent, a patent will only be granted to an entitled person or persons (assuming the invention is patentable). If a patent is granted (incorrectly) to a non-entitled person, the patent may be transferred to the entitled party and/or may be revoked. Hence it is important to have a clear trail or chain of entitlement in place, i.e. why and how the applicant is the entitled party, particularly if the applicant is not the inventor.

 

By default in the UK and in Europe, the entitled person is the inventor. The inventor is defined as the person who devises or creates the invention. An inventor can only be an individual, not a corporate entity nor an Artificial Intelligence (AI) as clarified under UK law (see section 3.05). The European Patent Office has adopted a similar stance, as shown in two recent European patent applications.

 

However, another party may be entitled to the patent in preference to the inventor if a law or agreement to that effect was in place at the time of invention. Such a party is the successor in title to the inventor. An agreement may include an assignment or a contract, for example. The right to a patent can be further transferred by the entitled party to yet another party, via similar means.

 

In summary, it is always advisable to ensure that there is a proper chain of entitlement in place, as the absence of one can result in a transfer or the revocation of a patent.

 

Does an employer automatically own the right to a patent for an invention created by an employee?

 

An example of a law in the previous paragraph pertains to employer-employee cases.

 

Under UK law, the employer is entitled to the right to a patent if:

 

1/ the employee made the invention during the course of their normal duties or specially assigned duties, or if the employee has a special obligation to further the interests of the company (such as by being a director of the company), and

 

2/ it could be expected that an invention may arise from carrying out these duties.

 

If any of these conditions is not fulfilled, the right belongs to the employee instead, unless there is any agreement to the contrary.

 

For example, a researcher employed by a university is expected to do research as part of her normal duties. It can be expected that an invention may arise from such research. In this case, the invention and the right to a patent protecting the invention would likely belong to her employer.

 

On the other hand, the normal cleaning duties of a cleaner employed by the same institute would not be expected to give rise to an invention. As such, if the cleaner creates an invention, the right to the patent would vest with him, rather than the employer.

 

In essence, the employer typically owns the right to a patent in most cases, but it may be worth clarifying the ownership of any IP in a contract of employment.

 

What happens to a patent after the owner ceases to be?

 

In the case of a natural owner, the patent passes to their estate. Usually, the patent rights are transferred to a new owner, typically according to the deceased owner’s will if one was made, or according to the rules of intestacy in the absence of a will. This also applies to any patent applications. In this case, it is advisable to prepare a will so that the estate is administered according to the deceased person’s last wishes. As the value of IP is included in the estate for the purposes of calculating inheritance tax, it may also be worth consulting an Inheritance Lawyer specialised in IP law.

 

In the case of a corporate owner which goes into administration, an administrator is appointed. The administrator administers the assets which may involve attempting to sell the patent to cover any debts. If no new owner can be found, upon dissolution of the company, the patent will pass to the Crown. The same applies to patent applications. In this case, assigning the patent or patent application prior to entering administration may be worth considering to avoid losing the patent or application to another party or to the Crown.

 

This concludes Q&A about Applying for and Owning a Patent – Part 1. Please see Q&A about Applying for and Owning a Patent – Part 2 for further discussions relating to applying for and owning a patent, particularly cases where there are multiple owners. In the meantime, if you have any queries about patents, please do not hesitate to contact us.

That’s the way, a-hah a-hah, Joe Lycett

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Trade Mark enforcement

 

In these bewildering times, we find ourselves in (Brexit, COVID-19, Brexit again), fortune occasionally sees fit to part the gloom, and serve up some much-needed levity. Enter Hugo Boss. Not the designer clothing company one might expect but rather, the comedian formerly known as Joe Lycett.

 

On 1 March 2020, Hugo Boss, the man (hereafter “Boss”), tweeted the following in protest against the Trade Mark enforcement practices of Hugo Boss, the brand (hereafter “Hugo Boss”):

 

So [Hugo Boss] (who turnover approx $2.7bn a year) have sent cease & desist letters to a number of small businesses & charities who use the word ‘BOSS’ or similar, including a small brewery in Swansea, costing them thousands in legal fees and rebranding.

 

It’s clear that @[Hugo Boss] HATES people using their name. Unfortunately for them this week I legally changed my name by deed poll and I am now officially known as Hugo Boss. All future statements from me are not from Joe Lycett but Hugo Boss. Enjoy.

 

As one might expect of such an unorthodox protest, Boss’ efforts were an immediate viral sensation, spawning tens of thousands of retweets, and extensive news coverage by the British media. The reaction provides an insight into an aspect of Trade Mark enforcement that should not be overlooked; a Trade Mark owner should not assume that their rights confer exclusive, and inexhaustible rights no matter what the context.

 

Like recent PR nightmares for McDonald’s, Red Bull and Sky, Hugo Boss is another in an ever-growing list of toppled Goliaths whose enforcement tactics have caught the wrath of the public.

 

From the perspective of responsible Trade Mark maintenance, Hugo Boss’ actions are understandable; they would wish to avoid their rights becoming diluted. At its most extreme, dilution can result in irreparable damage to a company’s reputation if, for example, the goods and/or services covered by the conflicting Trade Mark are of inferior quality.

 

In the ‘small brewery in Swansea’ case mentioned in Boss’ tweet, Hugo Boss took action against two Applications by Boss Brewing Co for Marks that were ostensibly similar in terms of both Mark and goods and services. On paper at least, this seemed to be a prudent move to secure the exclusivity of their Trade Mark rights.

 

However, where one can go wrong is in failing to also consider consumer perception of a conflict, even if the conflict seems clear ‘on paper’.

 

In Hugo Boss v Boss Brewing Co, it was unlikely consumers would ever confuse the activities of a designer clothing company with those of a brewery. Thus, Hugo Boss’ legitimate actions were perceived by the public as being so heavy-handed, that it has led to this most unusual of protests.

 

Consequently, it is important that Trade Mark owners consider how they conduct the enforcement of their rights. Blanket, uncompromising enforcement is not always the best method of protecting a Trade Mark, especially when approaching individuals or small companies that may be unfamiliar with Trade Mark practice, and proceedings.

 

Here at Albright IP, we endeavour to offer pragmatic commercial advice when dealing with Trade Mark infringement. Should you require, our excellent Trade Mark team are always happy to provide assistance.

 

Shanks vs Unilever

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Shanks vs Unilever

 

The Supreme Court’s judgement in Shanks vs Unilever could lead to increased costs for businesses which benefit from profitable patents. But can these costs be avoided?

 

In the UK, the right to be granted a patent for an invention which is devised in the course of an employee’s duties automatically belongs to the employer. As such, usually, there is no legal requirement for an employer to give the employee a share of the profits from the patent/invention, or even a one-off bonus. This is based on the principle that the employer takes the financial risk in filing the patent application and marketing the invention, as well as the fact that the employee is at least partly being employed to devise inventions (so why should they be paid more for doing their job!).

 

This may seem rightly just/wholly unfair depending on which side of the employer/employee divide you are on!

 

There is one main legal caveat to this – that the inventor is entitled to fair compensation if the patent/invention is of “outstanding” benefit to the employer. Of course, this raises the question of what is “outstanding”?

 

“Outstanding” has generally been seen by the courts as a very high bar to pass. The first award of compensation for an employee by the courts under this law was in Kelly and Chiu v GE Healthcare Ltd [2009]. In this case, the patented invention vastly turned around the fortunes of the employer – the company was facing a financial crisis before the patented product provided total sales between 1993 and 2007 of £1.3 billion. It seems safe to say that, in this case, the invention/patent was of outstanding benefit.

 

But the situation was far more nuanced in the Supreme Court’s more recent judgement in Shanks vs Unilever. The patent for the invention, developed by Professor Shanks whilst working for a Unilever subsidiary, provided Unilever with £24.5 million in licence fees. This is undoubtedly a large sum of money, but to a company of Unilever’s size would one describe such a sum as “outstanding”?

 

Professor Shanks’s representatives argued that if only the relative size of the financial gain were considered, then this meant that no company of Unilever’s size would ever be required to pay inventor compensation. In other words, this interpretation meant that Unilever was “too big to pay”.

 

The Supreme Court ultimately came to the conclusion that, although the benefit to Unilever might not be outstanding in absolute financial terms, it was outstanding because it came from an area of the market which Unilever was not particularly active, and came only in the form of licence fees, so the risk and effort on Unilever’s part was minimal. Professor Shanks was awarded compensation of 5% of the profits which equated to £2 million when accounting for interest.

 

The Supreme Court made the following remarks, which could well form the basis of future outstanding benefit compensation claims where the relative financial benefit of the patent/invention to the employer is not particularly great:

 

“For example, the benefit may be more than would normally have been expected to arise from the duties for which the employee was paid; it may have been arrived at without any risk to the business; it may represent an extraordinarily high rate of return, or it may have been the opportunity to develop a new line of business or to engage in unforeseen licensing opportunities.”

 

These comments, therefore, seem to provide several possible avenues for arguing that the benefit to the employer is “outstanding”, and as such may clear the way for more employee compensation claims.

 

So, what might you do if you are an employer and are lucky enough to have employees devising very profitable patented inventions, but are concerned about paying out large sums in employee inventor compensation claims?

 

There is nothing contractual which can be done to prevent an employee receiving compensation – the UK patent’s act expressly states that any clause of a contract which would prevent an employee receiving this kind of compensation is unenforceable. Nor is providing the employee with a small amount of compensation a way to prevent compensation being awarded – if the compensation is “inadequate” then the courts can still make an award.

 

Since there is no way to prevent employees from being awarded compensation, a “soft” approach would appear to be the best strategy; provide your employees with reasonable/generous rewards for devising any and all patented inventions. Not only would this provide an incentive for employees to devise further inventions are therefore generate more profit, but a happy employee might not feel the need to go looking for compensation in the instance of a particularly successful invention, and thereby avoid mutually costly court proceedings.

 

Brexit update – 31 January 2020

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Brexit - 31 January 2020

 

The UK formally leaves the EU today on, 31 January 2020. A transition period will run up until the end of 2020. Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change. A summary of these is set out below.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals:

 

Filing

 

• All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.

• Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.

• To ensure you will have rights in the EU and the UK after Brexit, file all new Applications in the EU and the UK.

• When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

 

• Any EU renewals falling due prior to Brexit will encompass the UK.

• Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

 

• For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

 

• Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.

• Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licences and Security Interests

 

• Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

 

• The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.

• Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.

• Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union. 

EPO CRISPR Patent Appeal Resolved

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CRISPR Commercial Patents

 

The EPO Boards of Appeal convened recently to offer a final ruling in respect of EP2771468, a patent granted to the Broad Institute in respect of CRISPR/Cas9 gene editing technology. This case has attracted a lot of attention, not least because of the potential commercial value of the patents at hand, as well as the background of long-standing disputes between the various parties holding CRISPR patents across the world.

 

What is CRISPR?

 

CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) technology is a novel DNA editing tool which is faster, more cost-efficient, and more accurate than previous gene editing techniques. Indeed, there was some speculation that the most recent Nobel Prize for physiology or medicine might be awarded to the minds behind CRIPSR, before this was awarded to Kaelin Jr, Ratcliffe, and Semenza for their discoveries of how cells sense and adapt to oxygen availability.

 

Ultimately, the technology can be used to permit scientists to rapidly make cell and animal models for the purposes of medical research, as well as providing many options for medical diagnostics, and the techniques are widely used around the world.

 

EP2771468

 

EP2771468 was filed on 12 December 2013, as an International (PCT) application, claiming a long list of priorities to earlier US applications. The publication of grant occurred on 11 February 2015. Several oppositions were launched, starting in October 2015, which asserted that the patent was invalid.

 

The claims themselves were directed towards a composition comprising a CRISPR-Cas system chimeric RNA or a CRISPR enzyme sequence, which are modified to improve their stability.

 

The patent itself is a fairly meaty read, with the International application as published running to 162 pages. The field of technology here is one with dense impenetrable jargon (much like patent law itself!), but this is beside the point. The merits of the appeal hinged on a simple question – was the application entitled to priority?

 

Priority

 

The law of priority for patents stems originally from the Paris Convention, which recites in Article 4(A)(1):

 

Any person who has duly filed an application for a patent […] in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

 

Why is this important? Well, the Broad Institute filed their original US patent application having four inventors, also named as applicants. When filing in Europe (via the PCT filing), however, one of the inventors was omitted, Professor Luciano Marraffini of Rockefeller University, New York.

 

If Professor Marraffini had not, as asserted by the opponents, assigned his right to the invention correctly to the Broad Institute by the time the European application was filed, then the Broad Institute were not entitled to claim the priority right. This meant that the effective date for the assessment of prior art changed. Here, this meant that different citations, much more destructive to patentability, became citeable, which in turn would lead to revocation of the patent.

 

EPO case law is quite clear in this regard. T788/05 clarified that a sole applicant who was one of several joint applicants on a first filing cannot give rise to a separate priority right. The right of priority is jointly owned but indivisible. The applicant of the European patent application must be the owner or successor in title to all of the rights of the individual applicants of the priority application as of the date of filing of the European application, or in this instance, PCT application, for a valid priority claim to be made.

 

Oral Hearing

 

If the EPO case law is so clear, then how did this case reach an oral hearing? Crucially, the USPTO have a different interpretation of how a valid priority right can form – the later application needs only a single inventor in common in order for a valid priority claim to be made.

 

Essentially (and in much simplified terms), the Broad Institute argued that, given that the priority applications were US filings, then US law should govern how priority can be claimed. Additionally, much semantic argument was heard about the meaning of the term any person as outlined in the Paris Convention.

 

This line of argument threatened to lead the Boards of Appeal to refer the matter to the Enlarged Board of Appeal, which would have significantly extended the uncertainty regarding the status of the patent, but eventually finalised their decision to revoke the patent, finding the priority claim invalid.

 

Procedural Strictness

 

Overall, the decision of the Board of Appeal is much as had been expected to European observers. The prevaricating over this matter has ended, and the final written decision of the Board is expected soon.

 

What can we infer from a practice perspective from this resolution, however? Primarily, whilst the direction in the UK, at least, is towards excusing sloppy claim drafting, the law of priority remains strict, to the point of being lethal to viably patentable technology. In this instance, the Broad Institute potentially have nine patents which have questionable priority claims.

 

Given the divergence of US and European law in this regard, patent practitioners need to be very aware of potential issues in respect of entitlement and ownership, and how this can have a knock-on effect on the validity of patents.

 

New Year, New IP

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New IP

 

Happy New Year from Albright IP. As we welcome in a new decade, we want to wish all our clients, colleagues and partners around the world a prosperous 2020.

 

At the turn of the last decade we were just starting out with six staff, today we have expanded not only in size to a team of 30 people split across two patent teams and a trade mark team, but also in the considerable development in our sector expertise.

 

Across our teams we now have technical expertise in sectors such as Bio Medical, Mechanical Engineering, AI and Software, Physical Chemistry and the Life Sciences to name but a few!

 

Our trade mark team has grown to six and was ranked, last year, at number 20 for the top 100 UK trade mark filers by the Chartered Institute of Trade Mark Attorneys (CITMA), beating many much larger firms.

 

Much like the ‘roaring twenties’ we hope that this new decade continues to see great advances in technology and economic growth and we are very much looking forward to supporting our clients and partners across the globe to secure their IP and grow their businesses over the coming decade.

 

Banksy: The Flower Thrower

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Banksy: The Flower Thrower

 

“Does art matter?”. On 17 October 2019 , graffiti artist Banksy launched an online shop called Gross Domestic Product to sell his branded merchandise for two weeks, the launch being advertised by a pop-up shop in Croydon, UK. To have chance at purchasing an item, would-be Banksy merchandise owners had to register their interest and answer the above tie-breaker question. The sale of trademarked merchandise, an unprecedented move by Banksy, is better understood in the wider context of a dispute surrounding one of Banksy’s trade marks.

 

Banksy is the owner of several European trade marks, registered under the name of Pest Control Office Limited, a handling service acting on behalf of Banksy. The particular European trade mark at the centre of the dispute is European Trade Mark 012575155  which protects an image reminiscent of Banksy’s Rage, the Flower Thrower mural in Jerusalem, also known as Love Is In The Air, Flower Thrower or Flower Bomber. The Flower Thrower trade mark was filed in February 2014 and registered by August 2014.

 

In a statement posted on the pop-up store in Croydon, Banksy has explained the motivation behind the shop as follows:

 

“A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally”.

 

Full Colour Black, the greetings card producer in question, deny that they are trying to take custody of Banksy’s name, and have stated that the company previously approached Banksy’s representatives to pay them royalties, which Banksy refused

 

Subsequently, in March 2019, Full Colour Black filed an action for invalidity to cancel the Flower Thrower European trade mark. If the trade mark were successfully cancelled, Banksy would not be able to rely on his European trade mark to prevent use of the Flower thrower image commercially and Full Colour Black would be free to sell cards featuring the Flower Thrower without any risk of infringing the mark.

 

Of course, Banksy could rely on copyright to stop Full Colour Black or any other entities who are copying his art work. However, so far, Banksy has not enforced his copyright, the likely reasons for this being that to do so would require giving up his anonymity, and the requirement to file statements of use to enforce his copyright in the USA.

 

The essential function of a trade mark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. As the Flower Thrower image is reproduced widely on goods sold by different entities, Full Colour Black have argued that the image is not capable of being a trade mark. This is because it does not allow consumers to distinguish the goods originating from an undertaking under Banksy’s control and those originating from other companies. This is particularly true, as, prior to the launch of the shop in October 2019, no official Banksy merchandise existed. Furthermore, Full Colour Black argue that Banksy has registered the mark with no intention to genuinely use it, which amounts to bad faith, a further ground for invalidity.

 

It is unclear how selling trademarked merchandise is supposed to help Banksy’s case, as evidence of use has no effect in an invalidation action. The sale would be much more understandable if the action filed by Full Colour Black had been for revocation, as a trade mark can be revoked for non-use.

 

According to European trade mark law, a trade mark can be revoked, upon application to the European Union Intellectual Property Office,

 

“a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; […]”

 

(Article 58 of the EU Regulation No 2017/1001 of 14 June 2017)

 

In other words, as Banksy had not sold any goods to which the Flower Thrower trade mark was applied, and for which the trade mark was registered between August 2014 and August 2019, and there were no reasons preventing him from doing so, his Flower Thrower European trade mark became subject to revocation in August 2019 such that Full Colour Black could have applied for revocation from then on.

 

However, the law does also state that:

 

“no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;[…]”.

 

In short, the shop launch in October 2019 may have been an attempt by Banksy to pre-emptively invalidate any revocation action filed by Full Colour Black.

 

Such a revocation action would nevertheless remain admissible if Banksy only launched the shop after becoming aware of the possibility of a revocation action being filed against his trade mark and if such an action were filed within three months. Whether the sale of a few items for a limited period of time constituted genuine use of the mark is also an important question.

 

The current status on the European Union Intellectual Property Office register of Flower Thrower European trade mark 012575155 is “registration cancellation pending”, as the court determines the matter.

 

In a parallel move, Banksy’s legal team appear to have filed another representation of the Flower Thrower as a new European trade mark application in August 2019, European trade mark application 018118853. This new trade mark application is currently undergoing examination. If registered in due course, the sale of branded merchandise in October 2019 may well have been a move to demonstrate use of the image submitted in the newly-filed European trade mark application, rather than in response to the invalidation action. Of course, if the first Flower Thrower trade mark is invalidated (and therefore was never a valid registered trade mark), this may not bode well for the registration of the second Flower Thrower trade mark application, or indeed the registration of many other of Banksy’s image trade marks.

 

It will be interesting to see how this case develops further.

 

An important, practical conclusion for trade mark owners to draw from this case is to not wait five years before putting your trade mark to use. Otherwise, your trademark will become open to being revoked for non-use.

 

If you have not been using your mark in the last five years or more, the most advisable course of action in many cases would be to resume or start as soon as possible.

 

If in doubt, please do not hesitate to contact Albright IP for advice about your trade mark.

 

EPO to change Rules of Procedure of the Boards of Appeal

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EPO rules changes

 

The European Patent Office has recently approved the revised Rules of Procedure of the Boards of Appeal (RPBA) which will come into force to any pending or newly filed appeals relating to European patents or applications from 1 January 2020 onwards. This article provides a brief overview of the more important rule changes, governing the appeals procedure, and what they mean in practical terms.

 

According to the EPO, the new RPBA aims to increase “(i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation”.

 

Following the rule change, parties will typically be given at least four months’ notice for oral proceedings. A decision will be issued within three months of the oral proceedings (or if later, parties will be informed of that date).

 

According to Article 10, it is now possible for an appeal to be accelerated on request by a party. Grant of the acceleration is at the EPO’s discretion and reasons justifying the acceleration, such as infringement proceedings, and supporting evidence should be provided with the request. It is now also possible for the EPO to accelerate proceedings of its own motion.

 

Another significant rule change in Article 12, paragraphs 4 to 6, sees restrictions on new requests, facts, lines of attack, arguments, and evidence being admitted during appeal proceedings. The new RPBA further emphasises that the primary object of the appeal proceedings, which is to review the contested decision rather than retry the case.

 

Furthermore, any part of a party’s case which does not relate to the material on which the contested decision was based will only be admitted into proceedings at the discretion of the EPO, according to new Article 13. Amendment to a party’s case after filing of its grounds of appeal or reply can only be admitted at the EPO’s discretion, taking into account whether the amendment is suitable to resolve the issues concerned and procedural economy. The bar is set even higher for an amendment made at a very late stage of proceedings – it will not be taken into account unless there are exceptional circumstances justified with cogent reasons.

 

Exceptions to the Application of the new RPBA

 

There are certain circumstances to which the new RPBA do not apply:

 

– Article 12, paragraphs 4 to 6, in particular, will not apply to any statement of grounds of appeal filed before 1 January 2020; or

 

– if a summon to oral proceedings or a communication under Rule 100(2) EPC (invitation by the EPO to file observations during examination of the appeal) is issued before 1 January 2020.

 

Practical Implications

 

It is more important than ever to ensure anything you may wish to rely on is included in the proceedings as early as possible. This applies to cases already in the appeal process and is also likely to be pertinent to cases that are appealable, such as cases in examination or opposition proceedings.

 

For cases already in appeal, it makes sense to submit any material you may wish to rely on, and certainly any grounds of appeal or replies, before 1 January 2020.

 

Care should also be taken to ensure all relevant facts, lines of attack, arguments and evidence, as well as any material that may be helpful, are on file for cases in opposition or examination proceedings. You want to reply on these materials if an appeal is necessary in the future.

 

The new RPBA will likely encourage the front loading of appeal proceedings as well as comprehensive preparation of the file for first instance proceedings to pre-empt any possible appeal in the future.

 

If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact Albright IP on 01242 691 801.

 

Get Out On The Highway – What exactly is the PPH programme, and is it worthwhile?

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PACE vs. PPH

 

The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.

 

In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.

 

What exactly is the PPH programme, and is it worthwhile?

 

Earlier Work Products

 

The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.

 

This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.

 

Requirements

 

There are specific requirements for participation in the PPH programme.

 

  1. The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.

 

  1. The earlier application must have at least one claim therein indicated as allowable.

 

  1. The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.

 

  1. PPH must be requested before the EPO begins examination of the European application.

 

Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.

 

Should I Use PPH Acceleration?

 

The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.

 

This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.

 

What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions

 

PACE vs. PPH

 

Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.

 

  • I want to bring my European application into alignment with an already-granted patent in another jurisdiction.

 

  • In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.

 

  • I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.

 

  • In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.

 

  • I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.

 

  • A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.

 

  • I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.

 

  • The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.

 

Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.

 

The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.

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