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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.

Albright IP Brexit Update: May 2019

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Brexit

 

At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 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.

 

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 any new Applications in the EU and the UK going forwards from this point.
  • 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.

 

Licenses 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.

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

Four New Appointments Set Albright IP Up For a Strong 2019

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Albright IP has welcomed four new members of staff to its offices. Following an exceptional year of growth in 2018, the new team members will help to strengthen our offering of professional and cost-effective intellectual property (IP) protection for our clients in the UK and across the globe. Our new employees take the total number of staff up to 26 at our Montpellier headquarters.

 

These new additions to the team are a reflection of our ongoing expansion and will bolster us to meet our clients’ ever-evolving needs. We pride ourselves on providing our clients with a unique combination of IP strategy, patent and trademark services combined with the prototype design/development services offered through our in-house design consultancy, DUKU.

 

Commenting on the new arrivals, Albright IP Managing Director Robert Games said:

 

“These new team members have given us a real boost and we’re delighted to be starting 2019 on such a strong footing. They are already supporting our clients and making their individual contributions to our overall delivery of quality legal advice and practice in all matters relating to Intellectual Property. We look forward to another year of driving and protecting innovation for our clients in the UK and internationally.”

 

Meet the new team members

 

With each of the new additions bringing their own interests and insights to the team, you can find out a little about them here…

 

Christina Chan has joined as Trainee Trade Mark Attorney


Christina joins Albright IP straight from Queen Mary University of London, where she completed an MA in Intellectual Property Law. She is particularly interested in the interplay between Intellectual Property Rights, the right to freedom of expression, and their place in the age of interactive and collaborative online activity, and she brings a fresh enthusiasm to the team.

 

Adrian French has joined as Trainee Patent Attorney


Having completed a BEng in Systems Engineering and an MSc in Advanced Biomedical Engineering from the University of Warwick, Adrian worked as a UK IPO Patent Examiner for 5 years.  He is currently working on his dissertation to complete a LL.M in Intellectual Property Law.  He’ll be training as a patent attorney and will be involved in drafting, filing and general prosecution of patents.

 

Jennifer Pitman has joined as IP Administrator


Jenny holds the Patent Administrator’s qualification awarded by the Chartered Institute of Patent Attorneys (CIPA). She has many years of legal experience, both in the UK and her birthplace of Bermuda, having previously worked in IP with a focus on patents and registered designs, since 2009.

 

Helen Morris has joined as IP Administrator

 

Due to attend the CIPA Administrators’ Course later in the year, Helen will be working with patent and design matters, assisting with initial client enquires, through filing and the various stages of the application process to grant and maintenance.

“Poor Man’s Patent” – Fact or Fiction?

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Poor man's patent

 

Poor Man’s Patent – Fact or Fiction?

 

From time to time the phrase ‘Poor Man’s Patent’ gets thrown around, seeming to imply there is a free or low-cost way of obtaining protection for your invention or idea. Below, we discuss what a ‘poor man’s patent’ actually is, and why it may destroy the chances of you ever commercialising your idea.

 

Postmarked Sealed Envelope

 

A quick internet search reveals that the phrase ‘Poor Man’s Patent’ is most well known in the US.

 

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This involves writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date. This was considered third-party verified proof of the date of your invention.

 

If someone else then came up with the same idea subsequently, the postmarked envelope could then be opened with witnesses present, proving that you originated the idea on at least the date of the postmark.

 

This information is still available but is dangerously out of date. If you follow the advice for a ‘poor man’s patent’ these days, you will potentially irrevocably destroy your chance of obtaining a valid patent later on, and therefore destroy your chances of monetising your invention. It is that critical.

 

In the US before 2013 the above strategy could, in theory, give you the right to a patent to the idea, even if someone had already filed their own patent application to the idea first.

 

At that time, the US was a ‘First to Invent” patenting system’ Therefore, proving when you had the idea first was as important if not more so than filing the patent application to lay claim to the concept.

 

The US has since changed to a ‘First Inventor to File’ patenting system in line with the majority of the rest of the world, Sealed envelopes containing your ideas on paper as explained above now count for little or nothing in all the major patenting systems worldwide. And, in fact, using the ‘poor man’s patent’ approach will these days do more to harm you protecting your idea then it will help you.

 

Copyright

 

Having said that, the ‘sealed envelope technique’ is still relevant for Copyright purposes. For example, it can help to prove when you came up with a drawing or a work of literature before a certain date, if someone has copied you.

 

Registered Design

 

A registered design (also called a ‘design patent’ in some territories, such as the US) protects the appearance of a product.

 

Therefore, if someone copies the ‘look’ of your product and you have a registered design or design patent, you can enforce your rights against them.

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A registered design is nearly always cheaper to obtain than a patent (unless you have multiple products that all look slightly different but work in the same way), so it may be considered a “Poor Man’s Patent”.

 

Having said that designs do not protect the way a product works. Designs rights do not protect the ‘technical concept’ of an idea – that is for a patent. Therefore, if someone makes a product which does exactly the same thing as your product, but has a different exterior ‘look’ to it, your registered design will not protect it.

 

Registered designs are more useful in addition to a patent, or if it looks new but the concept is well known.

 

DIY “Provisional” Patent Application

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent.

 

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This is effectively where you write down the details of your invention and file it at the patent office but don’t file claims, and potentially some other required parts with it.

 

Before the first anniversary of the filing date, you can have a professional write claims for it and complete the application, hopefully once the business has taken off and you now have more funds.

 

There are many dangers to this approach. Some are outlined in our earlier article here. But, in essence, you can only use the original date of filing for the matter you originally filed. If the new claims that you add downstream need additional matter to word them effectively, then this new or added matter would potentially be invalid if you had sold the product or disclosed details of it before filing the new claims (such as marketing the idea to investors, setting up a website to promote the idea, or putting a Kickstarter funding proposal together to raise funds).

 

Conclusion

 

Professionally patenting your invention may, on first appearance, appear to be an expensive business. But, if you are serious about protecting your idea, a professionally drafted patent application is the only way to go.

Cutting corners in the early stages of an idea or business can seem attractive, but it will likely cost more in the long run to fix the mess you might end up in.

We often see clients that have deals on the table, but have jeopardised themselves by not investing in their patent and trade mark rights at the beginning, leading to significant issues completing the deal they have worked so hard to arrange.

In short, do not use the ‘poor man’s patent’ approach. These days, it is worse than useless. Do it properly or do not do it at all. Treat patenting and trade marking as an investment; ask questions of your professional legal advisor, and make an informed decision before you disclose your ideas.

 

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