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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.

 

Bentley v Bentley – The Peril of New Markets

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On 1 November 2019, Judge Richard Hacon in the High Court finally settled a 20-year long dispute between one of the world’s most prestigious and recognizable car brands, and a small Manchester based UK clothing company.

 

The background of this case is as follows. Since circa 1987, the Defendant, Bentley Motors Limited (“Bentley Motors”), has been extending use of their famous ‘B-in-Wings’ Trade Mark to clothing and clothing accessories. The Claimant, Bentley 1962 Ltd (“Bentley Clothing”), a UK based manufacturer and retailer of clothing, began selling clothing under the BENTLEY Trade Mark in 1962. The two sellers coexisted without apparent contact until 1998, when Bentley Clothing approached Bentley Motors to offer a licence for the use of their Trade Mark. The terms of the licence were not agreed, and talks broke down.

 

The situation escalated in the early 2000’s when Bentley Motors began using their ‘B-in-Wings’ Trade Mark in conjunction with the word ‘Bentley’ (“the Combination Mark”) on clothing and clothing accessories.  Further contact was made between the parties but to no satisfactory conclusion. Over the course of the next few years, Bentley Motors increased their use of the Combination Mark on clothing, despite being on notice of Bentley Clothing’s rights in, and use of, their BENTLEY Trade Mark in the same marketplace. Between 2005 and 2017 the two parties faced off numerous times before the EU and UK Intellectual Property Offices. Despite the length and cost of the proceedings, Bentley Clothing could not reach an agreement with their heavyweight opponent, and as a consequence, Bentley Clothing were left with no other option but to issue High Court proceedings against Bentley Motors for Trade Mark infringement. The result being a success for Bentley Clothing in its allegation of infringement (with damages and costs to be established at a later date).

 

This case highlights the potential dangers of brand extension from one marketplace; where the proprietor’s Trade Mark is incredibly distinctive and well-known, into a new marketplace, where the average consumer may not recognize that the relevant goods are associated with that particular proprietor. The effect being potential confusion in the market, as shown in this present case. Bentley Motors could be forgiven for thinking that their brand was too powerful to ever be challenged, even in a commercially distant market from the one that they are currently associated with. The long and slow encroachment by Bentley Motors into the clothing sector, despite being on notice of the existence of Bentley Clothing’s prior rights, seems to demonstrate a reckless arrogance. This loss for Bentley Motors shows that even large, reputable Trade Mark proprietors must approach brand extension with caution. Stepping out of an established market sector into a new area comes with risks.

 

The risks associated with brand extension can be mitigated with careful and considered research into the landscape of the relevant new market (Trade Mark registries and simple online searches are a good place to start), and being open to a meaningful discussion with competitors at a business to business level when a potential for conflict is spotted, is paramount in avoiding lengthy battles. In this case, if the discussions between the parties had not been allowed to break down, and if Bentley Motors had taken seriously the protection afforded by Bentley Clothing’s Trade Marks, it seems very likely that this dispute could have been settled long before it reached the High Court.

 

The High Court’s Decision can be appealed, and it will be interesting the see if Bentley Motors will continue the fight. Whether it’s sports or Intellectual Property, the press and the public love a good underdog story, and this one appears to be no different.

 

Should you be interested in seeking advice on expanding the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys at Albright IP will be pleased to advise you further.

 

Can I register this shape as a Trade Mark?

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Trade Mark Registration grants the owner a monopoly right over their Mark for an unlimited amount of time, so long as registration is renewed at each (10 year) anniversary.

 

When it comes to the registration of a 3D shape, arguably, the criteria for registrability is much more stringent, to avoid the same monopoly right being granted for a right that should more correctly be protected by a Design registration, with a limited life.

 

Aside from the usual requirements for registrability of a Trade Mark, a number of key hurdles are in place to limit the registrability of 3D shape Marks; these are listed below:

 

A 3D shape cannot be registered as a Trade Mark, if the shape:

 

  1. Arises from the inherent nature of the object/goods;
  2. Provides a technical function;
  3. Adds substantial value to the product.

 

Providing these objections can be overcome, a 3D shape can be an extremely valuable asset for an individual or company.

 

Case Study – The recent Jaguar Land Rover Case

 

Register a shape

 

Recently, the UKIPO rejected Jaguar Land Rover’s Trade Mark Applications for six 3D shapes, depicting their cars (pictured below), in a range of Classes of goods.

 

The grounds of the Oppositions were explored in detail in the UKIPO decision, which can be viewed here.

 

For the purposes of this article, we have focused upon two of the grounds pleaded:

  • the lack of inherent distinctiveness and
  • that the shape conferred substantial value to the goods

 

 (1) Lack of inherent distinctiveness

 

According to case law, for a shape Mark to be registrable, the shape must depart significantly from the norm or customs of the sector of products of that kind. This assessment is made through the eyes of average consumers, whose level of attention will vary, according to the nature of the goods in question.

 

The UKIPO identified that the shapes in question had some unusual aspects, namely “‘arrow shot’ rear windows and alpine side windows”. However, the configuration of the shape, as a whole, was important. Even with some unusual elements, the shape, as a whole, did not necessary depart from the norms or customs of the sector, and consequently, the Marks were found to be devoid of distinctive character in relation to passenger cars.

 

(2) Substantial value

Jaguar Land Rover pleaded that the boxy ‘slab-sided’ shapes were counter-functional, not necessary to achieve a technical result, and also, not features that consumers would be  looking for in competitors’ products.

 

The UKIPO expressed their uncertainty when deliberating whether the boxy ‘slab-sided’ shapes provided the ‘aesthetic appeal’, and it was merely noted that this was a ‘difficult and developing area of the law’, and the ground was ultimately left undecided.

 

Key Points from the UKIPO decision

 

  • When it comes to 3D Trade Mark Applications, Applicants will fare better the greater the degree that a shape constitutes a ‘significant departure from the norms or customs of the sector’. In this regard, mere elements and/or aspects of uniqueness or originality might not suffice, since it is the overall shape of the Mark which will be considered pertinent.

 

  • Unfortunately, the concept of substantial value still remains somewhat obscure. It is unclear whether this assessment should take into account or ignore the fact that consumers will recognise the shape. This raises doubt as to whether established brands, who have spent significant time and investment in creating brand recognition, will be jeopardising their ability to seek Trade Mark protection for a recognised product, if its appeal is only due to its ‘iconic’ shape/status in the mind of consumers. Hopefully, it will not take long for the ground of substantial value to be brought to the courts’ attention again, and perhaps the next time round, this will be properly addressed.

 

Summary

 

Overall, the UKIPO decision was not surprising. Given the potentially perpetual power of a Trade Mark registration, it remains in the interest of public policy to refuse registration of a 3D shape, where this would effectively grant a person or company, an endless monopoly over a shape that should be or become available for others to use in commerce.

 

If you would like further information or advice on registering 3D Trade Marks, or for any other Trade Mark advice, please contact the highly experienced team of Trade Mark Attorneys at Albright IP, who will be pleased to advise you further.

 

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.

Intellectual Property Enterprise Court expands its small claims track outside London

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Bristol Civil Justice Centre – photo depositphotos / jaceksphotos

In the new IPEC guide issued last week, it was rather quietly announced that from October 2019 District Judges will be available in Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle to hear intellectual property small claims. This will be welcome news for businesses and individuals in the regions who will now have easier access to the court system to resolve certain small-scale IP disputes.

Since it was set up in 2012, it is difficult to present the history of the IPEC small claims track as anything but a resounding success.  The value of an individual small claim is low (at least, relatively low) but the importance of being able to effectively enforce IP rights at low cost is invaluable in certain industries. Professional photographers in particular have been able to use the system to obtain good compensation for infringements that have occurred, and no doubt deter a great many infringements that as a result have not occurred.

At the same time, small business and individual defendants faced with certain spurious or unjustified allegations that they have infringed intellectual property rights have been able to have their side of the story heard, without the fear that the legal costs involved give them no option but to “settle and pay up”.

An IPEC small claim will typically be dealt with by directions being given on a judge’s review of the paper file, and a final hearing being allocated with a time estimate of one day. In the vast majority of cases it will be necessary for the Claimant to attend the final hearing themselves as a witness, whether or not they choose to be represented by a lawyer. The availability of the “Business and Property Court centres out of London” – the new and rather more descriptive name for what you may still see called the “Chancery District Registries” – is therefore a significant improvement in the accessibility of the Court to litigants far from London.

For “multi-track” cases, those which are too high-value or too complex for the small claims procedure, the IPEC guide has stated for many years that the judges are able and willing to sit outside of London.  Perhaps litigants and their lawyers were afraid to ask, because the first such trial outside London took place in Birmingham in October 2018.  HHJ Melissa Clarke, the judge in the case, commented “I do not know why it has taken so long”.

From time-to-time we have seen intellectual property cases issued in the County Court via the “money claim online” procedure.  The rules make it quite clear that this is not allowed (63.13, Civil Procedure Rules if you want to look it up).  Where a claim is wrongly issued by this route, it almost always serves to increase the time and cost of resolving the dispute.  Given the availability of IPEC small claims outside London, there is no excuse now.  An intellectual property claim must be issued in the correct court.

We look forward to the continued success of the Intellectual Property Enterprise Court and expect that this latest development will further assist those who rely on intellectual property, and a reliable and accessible court system to enforce it, for the success of their own businesses and livelihoods.

Carry On…Using Your Trade Mark!

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Branding Trade Mark

 

The “use it or lose it” principle with regards to trade mark registrations applies in numerous jurisdictions around the world. However, as highlighted in a recent decision of the UKIPO involving three Trade Marks relating to the British “Carry On” film series, it may not be as straightforward as one might think. For instance, how easy is it to prove valid use of a Trade Mark where that Mark is used under a licence, and in conjunction with another Mark?

 

This most recent “Carry On” caper begins in April 2018, whereby Brian Baker applied for revocation of three UK Trade Marks for “Carry On”, on the basis of non-use. ITV Studios Limited, proprietor of the “Carry On” Marks, was tasked with proving use of their Marks. The “Carry On” Marks were the subject of numerous internal and external licence agreements. After evaluating the evidence of use submitted by the proprietor, the Hearing Officer found in favour of Mr Baker. Two of the three Marks in question were invalidated in-part, with the remaining Mark being invalidated entirely.

 

On the face of it, you could be forgiven for thinking that proving actual use of a Trade Mark associated with such a widely known and popular film series would be easy to demonstrate. However, throughout the decision, reference is made to the inadequacy and insufficiency of the evidence put forward by the proprietor, with questions being raised as to the function of the “Carry On” Marks. For example, were they merely titular in nature? Or did they indeed indicate the origin of the goods and services in question? Further to this, the Hearing Officer was not satisfied with the proprietor’s evidence in displaying that their Mark indicated a single trade source. That is, on the end products, the Marks were used alongside a second mark, namely another Mark belonging to the proprietor, the ‘ITV Studios Logo’. This is despite the advertisements mentioning the licence arrangements (albeit in small print). The proprietor’s use of their Marks alongside other marks would not, in itself, have precluded the “Carry On” Marks from demonstrating valid use; however, by using their Mark alongside another Mark, the burden of proof in displaying valid use was increased. In this case, DVD sales of £6 million spanning 11 years, was not enough to show valid use of the “Carry On” Mark, whilst it was being used alongside the ITV Studios logo.

 

The difficulties encountered in this case appear to be more related to the proprietor’s poor accumulation and organisation of their evidence, rather than to the issue of multiple Marks appearing on the final product. It goes without saying that each case is decided on its own facts, but this decision does offer food for thought on the levels of use required, when a Mark is used alongside a second, or possibly multiple, Marks. This should serve as a wake-up call for rights holders, in-particular to those that own, and use, multiple Marks that are licensed to third parties or licensed within their own organisation. What can be taken away in this regard is that particular attention should be paid to the look of the packaging, for example: where on the packaging the Mark is located, and the size of the Mark in relation to any other Marks featured.

 

The decision of the Hearing Officer is now open to appeal, whether the proprietor will be able to sway the UKIPO during a second round of arguments remains to be seen. Regardless, the importance of documenting thorough, and concise, evidence of valid use throughout the lifecycle of the Trade Mark should not be underestimated.

 

Should you be interested in seeking advice on the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys here at Albright IP, will be pleased to advise you further.

 

Eviction Day for China’s Trade Mark Squatting

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China’s Trade Mark Squatters

 

Adjust your Yuletide calendars to 1st November because Christmas is coming early this year.

 

On the 23rd April 2019, China’s legislators passed significant amendments to their Trade Mark legislation to combat the scourge of bad-faith Applications, more commonly known as ‘Trade Mark squatting’.

 

Many brand owners will be familiar with the term, ‘Trade Mark Squatting’ and understand it to be the act of pre-emptively registering a Trade Mark in an available territory, before the ‘rightful’ owner secures registration. In the most extreme circumstances, Trade Mark squatting can undermine a brand to the extent that territorial expansion is impossible, and the only option is to migrate to an alternative brand, with all the costs and loss of reputation that would be associated with that.

 

Most infamously associated with this problem is, China. Unfortunately, it is common for brand owners entering the Chinese market to find their Trade Marks have already been filed or registered by an unrelated third party. Sometimes the illegitimate filing will be lodged within hours of the genuine owner publicising their impending launch, or at the stage when commercial discussions are being held with local distributors. As the official fees are low, squatters are not deterred from filing hundreds of Trade Mark applications, in the hope of receiving a ransom from at least some of the aggrieved brand owners.

 

Moreover, nor are they deterred by the deep pockets or celebrity of their victims. For example, the following are brand names that have been filed/registered by parties unrelated to the genuine owners: Bentley, Bosch, Hugo Boss, Macy’s, Michael Jordan and Viagra. To name but a few!

 

Whilst there are options available for brand owners to wrestle their Marks free from squatters, they are often onerous and costly. So much so, that it is sometimes easier to give in to the squatter’s demands, or rebrand entirely.

 

HOWEVER, all is not lost. As a welcome first step in combatting this unfair practice, and to restore confidence in their system, China intends to implement new legislation that will bring about the rejection of any new Trade Mark applications filed without a bona fide intention to use. Essentially, new applications can be refused during examination, if the Applicant does not demonstrate sufficient proof that they intend to exploit their Mark in commerce. The expected result is a decrease in the amount of Trade Marks being ‘stolen’ in China.

 

How this will work in practice remains to be seen. At present, it is unclear what body of evidence will be required to prove an intention to use, and whether this will be adequately evaluated. However, combined with other proposed amendments to the Chinese practice, victims of Trade Mark squatters will have further opportunities to oppose or invalidate these bad-faith Registrations. For example, if a malicious Trade Mark application is not stopped during the examination phase, there is still hope it can be terminated during Opposition or post-Registration. Moreover, coupled with new penalties against bad-faith registrations, and very hefty fines for those found to have relied upon a bad-faith registration in litigation; the system underlying Trade Mark registration in China could soon be a much friendlier environment for foreign Applicants.

 

What this Means for Your Brand

 

Whether these new legislative changes are effective or not, companies interested in expanding their brand portfolio to China should always endeavour to obtain a Trade Mark registration as soon as possible. It will remain a ‘first come, first served’ country, i.e., securing the earliest possible filing date will continue to matter.

 

Whilst we remain cautiously optimistic that the new practice will provide recourse against Trade Mark squatters, it has been reported that Chinese Trade Mark examiners have on average only 10 minutes of inspection time per Application, and in 2018 over 7 million Applications were filed in China. With such a small window to reject bad-faith Applications, registering your brand in China as soon as possible is, and will likely always be, the best practice for protecting your brand. Get there first, and deny others the opportunity of beating you to it!

 

Can I wait to file a patent application?

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Can I wait to file a patent application?

 

For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.

 

Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?

 

Why would I not be able to wait?

 

One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.

 

In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.

 

Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.

 

“Enabling disclosure”

 

To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.

 

In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect.  If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.

 

In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.

 

In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.

 

The notable exception

 

The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.

 

However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.

 

Design protection

 

Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.

 

However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.

 

Additionally, China, among some other countries, do not have such design grace periods.

 

Conclusion

 

As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.

 

Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.

 

Albright IP Brexit Update: May 2019

by

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.

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