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Facebook Wins Against Voxer In Patent Infringement

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Facebook vs Voxer patent infringement

 

Facebook has had some bad press in recent times. However, in this recent patent infringement case, Facebook v Voxer [2021], the High Court judgement sided with Facebook. The decision is interesting to look at in more detail and discuss, because it continues the development of two important points of UK case law which have arisen from the landmark doctrine of equivalents decision in Actavis v Eli Lilly [2017].

These two points are:

  1. To what extent can the scope of a claim be affected by the actions of the patentee, and
  2. How do you deal with possibly infringing equivalents which are obvious in view of the prior art.

In this Facebook v Voxer [2021] patent infringement decision, Lord Justice Birss handed down a judgement that Facebook did not infringe Voxer’s European Patent (UK) No. 2 393 259, and that also the patent was invalid. A bad day for Voxer.

In coming to this conclusion, the judge firstly found that Facebook’s system did not infringe the patent under the normal (literal-ish) construction of the claims. The judge found that Facebook’s system had two differences to claim 1 of the patent.

Therefore, the judge went on to consider whether Facebook’s system nonetheless infringed under the doctrine of equivalents, despite these differences.

To do this, the famous three Actavis questions were considered for each of these two differences in turn.

These questions are effectively:

  1. Notwithstanding that it is not within the normal meaning of the relevant claim of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
  2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
  3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim of the patent was an essential requirement of the invention?

By considering these three questions, the first difference between Facebook’s system and claim 1 was found not to be an equivalent, and therefore Facebook’s system did not infringe the patent.

However, in any case, the judge went on to consider whether the second difference was an equivalent.

The first two Actavis questions were found in favour of Voxer (basically, that the second difference worked in the same way as the equivalent feature in the claim, and that a skilled person would understand this to be the case).

To answer the third question, the judge needed to decide whether the patentee had effectively excluded the possibility of equivalents for this second difference.

1. To what extent can the scope of a claim be affected by the actions of the patentee?

This concept is commonly known as file wrapper estoppel. The patentee is held to their arguments or amendments in prosecution of the patent to grant, or during court proceedings. This stops the patentee being inconsistent – i.e. arguing that the patent is valid for a reason, and then ignoring that reason when they come to argue for infringement.

This concept is only a recent introduction to UK law. It is still not clear how wide ranging it could be. To date, it has only been modestly applied in equivalents cases.

The use of file wrapper estoppel was recently developed in the UK in Akebia v Fibrogen [2020]. Here Lord Justice Arnold found that Akebia did not infringe by equivalence a claim which Fibrogen had narrowed by a validity-saving amendment. The limitations which Fibrogen had included by amendment to keep the claim valid could not be ignored when considering infringement.

Facebook tried to argue that this principle applied to Voxer’s claim. Voxer had earlier tried to make an amendment post grant which was broader than that which was supported by the original patent application. This was found to be added matter by the UK Intellectual Property Office (UKIPO), and so was not accepted. Voxer had to back-track on this amendment to a narrower position.

If Facebook’s system was to be considered to have an equivalent feature, then the claim scope needed to be construed to have the broader (rejected-for-being-unsupported) meaning.

Facebook argued that this was not acceptable – how can the claim be construed to have the same scope as an unallowable claim?

The judge disagreed, saying that the amendment was to do with internal validity, and since it had nothing to do with prior art, it had nothing to do with claim scope.

But what is interesting to me is that, in answering the third Actavis question, the judge at least considered amendments which were proposed but not accepted. In my opinion, this subtly goes beyond the application of file wrapper estoppel in the Fibrogen case. The final claim itself was not being assessed, rather the UKIPO’s opinion on an intermediate claim. Even though the judge found in this instance that the rejection of the intermediate claim did not affect the claim scope, it at least raises the possibility that more relevant amendments and opinions could do.

This just emphasises the importance of being careful with what is submitted to the UKIPO. It seems likely that file wrapper estoppel is going to have greater importance in equivalence cases in the future.

2. How do you deal with possibly infringing equivalents which are obvious in view of the prior art?

The second development in this case was due to Facebook arguing that they could not infringe under the doctrine of equivalents, because their system was obvious in view of the prior art for the Voxer patent.

The question is, by the doctrine of equivalents for infringement purposes, can the scope of a claim be construed so broadly that it includes systems/devices/methods which (if claimed) would not have been granted a patent in the first place?

It would seem logical that a claim should not be construed so broadly. Otherwise, it gives patentees a backdoor to gaining protection over uninventive “inventions” – and why should a patentee have protection over something which is uninventive?

This reasoning is sometimes known as the Formstein defence, named after a case in the German courts.

However, in the UK, it has not yet been necessary for a judge to apply such reasoning to come to a decision. So, it currently does not form part of UK law.

Lord Justice Birss in the present case also did not need to consider the question, because he had already found no infringement. However, he did comment that this approach would be the right way to proceed.

Therefore, patentees and potential infringers should be aware that it seems most likely that the Formstein defence will enter UK law at some point in the future.

At that point, we may well see a fourth question be added to the three Actavis questions, to cover the Formstein approach.

Potentially, the fourth question could be formulated as simply as:

Is the variant novel and inventive over the prior art at the priority date of the patent?

This question would require a “yes” to result in infringement – if the variant is novel and inventive over the prior art then the claim is arguably not being construed too broadly by covering the variant.

However, this formulation might not account for the variant being novel and inventive for tangential reasons separate to the inventive concept of the patent.

Therefore, the fourth question might instead be linked back to the wording of the first question, as per the below:

Is said way the variant achieves said result novel and inventive over the prior art at the priority date of the patent?

This question would again require a “yes” to result in infringement.

Although, I am sure, that a judge considering such a case in the future will likely phrase this concept more elegantly and accurately.

The patent infringement judgement in Facebook v Voxer [2021] therefore develops, but did not decide, two outstanding points of UK patent case law – and we wait to see how they further develop in future cases.

 

If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

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Brexit: Picking Apart EU and UK Unregistered Designs

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Brexit picking apart EU and UK unregistered designs

Introduction

Unregistered design rights in Europe and the UK can provide useful and quite powerful additional tools for the IP owner. Since the United Kingdom is no longer part of the European Union, and as such the United Kingdom is no longer covered by (European) Community Registered or Unregistered Designs, this article briefly picks apart the differences between the European and UK unregistered designs and outlines some action steps at the end.

Registered designs

For registered designs, the position is reasonably straightforward. For protection in the European Union (EU), you need an EU design. And for protection in the United Kingdom (UK), you need a UK design.

If you already had an EU design on 31st December 2020 then you get, automatically and for free, a UK registered design as well.

However, from now on, to get registered designs covering the UK and EU, you need to file registrations in both territories.

So far, not too complicated.

Unregistered designs

But unregistered designs (as opposed to ‘registered designs’) are important as well. Although they only last for three years in Europe, unregistered designs arise automatically.

Since a design can be for the appearance of part of a product, any given product is theoretically protected by an almost infinite number of unregistered designs. Even where registrations have been obtained, design owners frequently rely on their unregistered rights as well, since the pleaded unregistered design can be tailored after the event to focus on the parts which an infringer has copied, ignoring differences in other parts.

Community Unregistered Designs, like the registered ones, now no longer apply in the United Kingdom. However, the UK has introduced:

  • a Continuing Unregistered Design, which in effect means that any Community Unregistered Design which existed already on 31st December 2020 will continue to apply in the UK for the rest of its three-year term; and
  • a Supplementary Unregistered Design, which applies to new designs disclosed on or after 1st January 2021. The Supplementary Unregistered Design closely mirrors the Community Unregistered Design.

The above-mentioned UK Supplementary Unregistered Design is in addition to the UK ‘Design Right’, another unregistered right peculiar to the UK which predates the EU harmonisation of design law and which has been retained ever since.

So on the face of it the approach is one of continuity.

Before Brexit, we had:

  • Community Registered Designs,
  • UK Registered Designs which were more or less the same as Community Registered Designs but with only national coverage,
  • Community Unregistered Designs which were similar to Community Registered Designs but arose automatically and lasted for only three years, and
  • UK Design Rights which were completely different.

After Brexit, we now have:

  • UK Registered Designs which are more or less the same as Community Registered Designs, but apply to the UK,
  • Continuing or Supplementary Unregistered Designs which are more or less the same as Community Unregistered Designs, but apply to the UK, and
  • UK Design Rights which are still completely different.

But what actually is the law?

However, there is a catch.

This is because the EU Regulation has never been clear as to whether Community Unregistered Designs can arise if a design is first disclosed outside of the EU.

Although national courts, notably in Germany and the UK, have grappled with the issue, there has never been a clarification at EU level. The Intellectual Property Enterprise Court in Beverly Hills Teddy Bear Company v PMS International[1] actually referred the question to the Court of Justice of the European Union (CJEU) just before the UK left the EU, but the case has since settled and so the CJEU will not now give an answer on that reference.

The UK Government seems to recognise this uncertainty, since advice on the UKIPO website says (my emphasis added):

‘first disclosure in the UK may not establish UCD and could destroy the novelty in that design…you should check guidance from the EU Intellectual Property Office on this’

The guidance on the EUIPO website appears to support the view that first disclosure in the UK (or anywhere else outside the EU) will not establish UCD. However, guidance on government websites does not have the force of law in the UK or in the EU. Rely on it at your peril.

The UKIPO seems to think though that it can be unequivocal as to the new Supplementary Unregistered Design (SUD) (my emphasis again):

‘First disclosure in the EU will not establish SUD. However, it may destroy the novelty in that design, should you later seek to claim UK unregistered rights.’

Reading the Government’s website, you might think that in the process of amending the EU law to bring it into UK domestic law post-Brexit they had taken the time to clear up the uncertainty. Alas, the amendments made to the EU Regulation in the inelegantly-titled ‘The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019′ do no such thing[2].

Put shortly, UK law on Supplementary Unregistered Designs is exactly the same as EU law on Community Unregistered Designs, and that includes all the badly-drafted and confusing bits of the law which have more than one possible interpretation.

Place your bets…

At some point, the EU and UK courts will have to decide what it all means[3], and there is now no guarantee that courts in those different jurisdictions will come to the same conclusion.

On the face of it, inconsistent interpretations would create a very non-level playing field in one direction or the other, and ideally ought to be followed up with diplomatic and legislative action to resolve the inconsistency.

Loss of EU unregistered rights might be mitigated to some extent by an increasingly wide scope given to copyright law by the EU courts, an approach which seems to me unlikely to be followed by the UK. That’s a whole other story.

So what to do?

For now, what are designers to do? Here is our advice:

  • Register designs in both the EU and the UK, and consider registering more designs to cover parts of products as well as the whole thing; this will help to mitigate potential loss of unregistered rights in some jurisdictions.
  • Consider trying to make the design available to the public in the EU at exactly the same time as it is made available to the public in the UK; disclosing first on the internet is one possible way of doing this[4].
  • Don’t take the UKIPO guidance as an authoritative statement of the law. Recognise the uncertainty – for a product first disclosed outside the UK you may or may not have Supplementary Unregistered Designs, but know that you can argue it.

If you need to defend or oppose a European Patent, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

Footnotes

[1] [2019] EWHC 2419 (IPEC)

[2] Indeed, the government does not have the power to make regulations to clarify unclear EU law. Amendments can only be made for the purposes set out in s. 8 of the European Union (Withdrawal) Act 2018

[3] Though it is remarkable that we have come this far, on a regulation from 2002, without the question being referred to the CJEU; perhaps we will all just live with not knowing what the law is for another 19 years

[4] Though by no means one which will certainly succeed

 

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How does Apple successfully patent software?

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Apple Software

 

Case Study No. 1

 

Index

 

 

Introduction

 

 

Having handled patent cases for more than 20 years, I have lost count of the number of times clients have asked “How do I patent software?”, or state that “Software is not patentable in the UK or Europe”.

 

My answer has always been, that although this area of patent law is generally more difficult and complex, it is certainly not impossible to obtain granted software patents.

 

Once the client stops looking perplexed, I have to then explain the initial strategic thought process to allow us to be successful when patenting software. This takes a reasonable amount of time, which led me to the conclusion that I needed to write this series of brief case studies which examine how to successfully patent software.

 

Apple Inc is a massive brand, known around the world. Not only do they develop amazing hardware and have fantastic designs, they obtain large numbers of granted patents almost daily. Many of those grants relate to software patents.

 

Each article in this short series dissects a granted patent issued to Apple Inc to guide you as to how we can successfully patent software in at least Europe.

 

The first Apple software patent that we will examine is EP3435240.

 

Where to Find Software Patents?

 

Software patents are generally located under the broad classification code of G06F.

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

G06N is also referred and is described as: COMPUTER SYSTEMS BASED ON SPECIFIC COMPUTATIONAL MODELS.

 

There are many sub-categories within both of these classifications, and by just looking in these categories alone, many granted software patents can be reviewed.

 

Apple’s European patent EP3435240 has an Abstract which reads (bolding added for emphasis):

 

‘Systems, apparatuses, and methods for efficiently moving data for storage and processing are described. In various embodiments, a compression unit within a processor includes multiple hardware lanes, selects two or more input words to compress, and assigns them to two or more of the multiple hardware lanes. As each assigned input word is processed, each word is compared to an entry of a plurality of entries of a table. If it is determined that each of the assigned input words indexes the same entry of the table, the hardware lane with the oldest input word generates a single read request for the table entry and the hardware lane with the youngest input word generates a single write request for updating the table entry upon completing compression. Each hardware lane generates a compressed packet based on its assigned input word.’

 

Essentially, this is movement and manipulation of data. In other words, it’s software!

 

However, the Abstract is written to convey ‘hardware’ type language. The Abstract is the first statement that the Examiner reads. We need to make the Examiner think this is more than just software, to try and avoid him simply jumping to a conclusion that this is excluded matter.

 

What Patent Images will Help Obtain Grant of a Software Patent?

 

Figure 1 of the Apple patent which accompanies the Abstract shows the following:

 

 

This kind of flow chart is extremely useful in conveying the technical attributes of the system. I do always encourage clients to provide such flow charts. Please do look at the other drawings in the Apple patent, there are fifteen pages altogether. All are useful in explaining to any patent examiner the movement and manipulation of the software data between ‘hardware’ type components within the backend processing architecture.

 

It is not necessary to have this many pages of images, but it does certainly help convince the patent office examiners that we have a clearly sufficient and enabling disclosure, thereby potentially aiding smoother prosecution.

 

How was Claim 1 Written to be Considered Patentable Matter?

 

Claim 1, in this case, was originally filed as follows:

 

 

You can easily see that the language used is largely ‘technical’. Use of words such as ‘buffer’, ‘table’, ‘circuitry’, ‘hardware lanes’, ‘packet’ and ‘stores’, for example.

 

Under European patent law, the examiners will argue that the claimed material is not patentable if it is not ‘technical’ in nature. If the language is purely software related, then there is a strong chance that this first hurdle will not be overcome, the development will be considered ‘excluded matter’, and the application will thus be refused.

 

The second independent claim, namely claim 11, was written as a method:

 

 

As you read the above claim, you will see that similar language has been used, including the use of ‘hardware lanes’. This again conveys technical language, and thus a lower likelihood of being found to be none patentable subject matter.

 

The third independent claim on filing was claim 15 going to a ‘system’:

 

 

Similarly to the above comments, the examiner has no major issue with the patentability of this ‘system’.

 

The examiner did contend that the ‘apparatus’ claim 1 and the ‘system’ claim 15 were effectively two ‘apparatus’ claims covering the same matter. Claim 15 was thereby removed to easily overcome this objection.

 

Why was Claim 1 objected to?

 

With software patenting, once the first hurdle of ‘is it excluded subject matter?’ has been overcome, then prosecution is very much like any mechanical or electronics patent. The two hurdles that have to be overcome are ‘novelty’ and ‘inventive step’. In other words, is the claimed improvement unique and not obvious?

 

For this software patent for Apple, only one prior patent document was raised (US6879266B1) as having closely similar features to those of at least claims 1 and 11.

 

The examiner noted:

 

 

This is interesting. The examiner focuses on the feature ‘determining dependencies’ and argues that, although this is a distinguishing feature when considering US’266, because it is phrased in a non-technical way, it has to be ignored. To that end, claims 1 and 11 therefore have nothing else that separates them from US’266, and as such there is not a sufficient inventive step forward. The examiner therefore raises his objection against grant.

 

How to Overcome Examiner Objections to Obtain Grant of a Software Patent

 

The patent examiners will often subtly point out potential areas that could be worked on to achieve grant.

 

For example, as outlined above, the examiner in this Apple application drew attention in item 3.3 of the examination report (snippet above) to what he considered to be the ‘distinguishing feature’. But, then explained why it was not suitably ‘technical’, and thus lacked inventive step.

 

Following removal of the ‘system’ claim 15, remaining independent claim 1 was amended as follows, with independent method claim 11 being similarly amended:

 

 

It is clear to see that the original phrase ‘determining dependencies’ was concentrated on. This was clarified by the inclusion from the patent specification of the term ‘intra-group’, as shown in the first red box above.

 

Once clarified, further ‘hardware’ type technical phrasing was utilised to explain that access of the table was based on the intra-group dependencies. This is akin to a ‘lock and key’, and as such conveys more of a ‘technical effect’. See the final red box above.

 

To back-up the submitted amendments and address the examiner’s lack of inventiveness concerns, a concise summary of the benefit of the improved system was provided to the examiner:

 

 

The examiner accepted this clarification of the distinguishing feature, and agreed that it differentiated sufficiently over the prior art patent. He thus accepted that a ‘technical problem’ was being solved, also accepted therefore that the novelty and inventive step hurdles were overcome, and consequently allowed grant of the patent.

 

Summary:

 

  • Have sufficient explanatory figures of the backend architecture, framework, and/or data processing
  • Use ‘hardware’ type technical language to explain movement or manipulation of the data, thereby overcoming the first ‘is it excluded matter?’ hurdle
  • Ensure that your patent specification is written with the ‘technical effect’ in mind
  • Include in the specification an explanation of the ‘technical problem’ that is being solved, thereby ensuring that both the novelty and inventive step hurdles are overcome

 

If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.

 

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Living ViCo-riously

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Living ViCo-riously

 

The new normal is here, but the world of Intellectual Property management continues unabated. Deadlines for prosecuting patent applications may be extended in many cases, but by-and-large the filing and examination processes are unchanged.

 

One major change to proceedings before the European Patent Office is the move to hold hearings with the Examining and Opposition Divisions by video conference, or ViCo. This allows discussions with EPO Examiners to occur without any parties needing to be in the same room, thereby protecting all participants from the risk of infection.

 

This week, I have participated for the first time in oral proceedings via ViCo, and found it an effective means of communicating with the Examiners.

 

One of the main concerns applicants have with the use of ViCo compared with physical hearings is that there will be some technological impediment that may lead to subsequent difficulties in obtaining a positive outcome from the hearing.

 

I am happy to report that the process is smooth; the EPO have put a lot of time and effort into simplifying the ViCo process (ViCo has long been an option for oral proceedings, but the summons to appear in person has always been the default).

 

The connection was made via the Skype for Business web browser app, and was easy to get started. Furthermore, the EPO offer a pre-hearing test connection to ensure that your settings are suitable well in advance of the real hearing.

 

All-in-all, the hearing ran much as you would expect from a physical meeting. The Examiners are visible, and therefore it remains possible to take visual cues as to how they are considering your arguments, and the ability to turn video and audio off makes recessions straightforward to implement without any connection loss.

 

The increase in the use of ViCo hearings can only be beneficial to applicants and professionals. For applicants, the costs involved in attending a physical hearing in Munich or the Hague can be prohibitive, whereas with a ViCo hearing, there may be a greater inclination to fight a more arguable case to grant. For professionals, there is the added benefit that the travelling is removed, and therefore time can be better spent in preparation for the hearing itself.

 

PlanetArt v Photobox: Does your app icon contain descriptive terms?

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Trademark infringement Recently, PlanetArt, the company behind the popular FreePrints app, succeeded in a Trade Mark infringement claim against one of its competitors, Photobox. The infringement claim related to Photobox’s rival app, which, like FreePrints, provides prints of photographs for free.

 

The High Court judgement ultimately represents a sound balance between the need to recognise and protect the investment of a Trade Mark proprietor on the one hand, and the need to preserve the wider public’s freedom to use inherently descriptive terms on the other.

 

At the same time, the reasoning behind the case merits scrutiny, as it can act as a useful guideline for app providers and developers, who are looking to establish a strong and enforceable brand identity.

 

Background

PlanetArt’s FreePrints app was launched in 2014 with this app icon

 

Essentially, the app allows customers to order free prints of their photographs, with the only fee being related to the delivery charges. That is to say, the app does exactly what it says – it provides free prints.

 

Since its launch, FreePrints has been attracted much success on the Appstore. By the end of 2019, the app had over 11 million downloads in the UK alone, generating substantial revenue for the company.

 

In April 2019, Photobox launched a rival app, providing a similar service to the FreePrints app, mainly using the following icons:

 

Icon 1:     Trademark infringement

Icon 2:    
Trademark infringement

Icon 3:
Trademark infringement

 

A day before a letter before action was sent to Photobox, PlanetArt applied for a UK Trade Mark for its app icon, displayed above (UKTM. No 3393165). The Mark was granted in August 2019.

 

When the case eventually came to trial, PlanetArt’s primary claim was based on the infringement of their UKTM Registration for the app icon. Specifically, PlanetArt alleged that the use of the three icons by Photobox was:

 

  • Confusingly similar to their earlier registered Trade Mark; and/or
  • Taking unfair advantage of, or causing detriment to the distinctive character or repute of their earlier Mark.

 

Each of Photobox’s icons are considered in turn below, since the judge arrived at a different conclusion for each sign.

 

The High Court’s Decision

 

Icon 1 – Infringed

 

This icon is what the customer would see on their own phones, once they had had downloaded the app from the Appstore.

 

The judge found that there were significant similarities in the aural and visual elements, and some level, albeit more limited, conceptual similarities. According to the assessment, the Photobox icon was a similar turquoise colour to PlanetArt’s Trade Mark, and featured a simple white line drawing, above the words ‘Free Prints’.

 

In the judgement, it was noted that app icons in similar fields (i.e photo-related apps) tended to feature words beneath the icon, to show brand name or origin, rather than a description of the app or the service provided. As such, the fact Photobox used the words ‘Free Prints’ beneath the icon, without any other wording or signs which might suggest that the app originated from Photobox, appears to be critical to the finding of infringement.

 

Whilst it was acknowledged that an app developer may be confined by the Appstore’s limits on the number of characters which can be used beneath an icon, from the evidence, it was unclear why the full name ‘Photobox Free Prints’ was not used; despite this being within the 30-character limit.

 

Based on the above, the use of Icon 1 amounted to infringement of PlanetArt’s Trade Mark on both of the grounds raised, i.e. confusing similarity and unfair advantage/detriment to distinctive character and/or repute.

 

Icon 2 & 3 – No infringement

 

In contrast, Icons 2 & 3 were held not to infringe PlanetArt’s Trade Mark Registration, since both contained the word ‘PHOTOBOX’ in a prominent position.

 

According to the judge, the words ‘PHOTOBOX’ was placed in a position and manner whereby consumers would ordinarily expect a brand to be found. As such, the average consumer would place any origin significance on the ‘Photobox’ element, and meanwhile, attribute the ‘free prints’ element, as merely having its ordinary, primary descriptive meaning.

 

For these reasons, the infringement claim failed against Icons 2 & 3.

 

Guidelines for app developers:

 

Some useful pointers can be discerned from the Court’s judgement:

 

  • Avoid descriptive names for your app where possible, as this may affect your ability to enforce against third parties.
  • The words under an app icon are more likely to be seen as your brand name, rather than as a description of the app – it should therefore be used for the purposes of denoting origin.
  • Although the Appstore operates some constraints on the format of an app icon, it is important to consider all the elements of branding when adopting an app icon, including: wording, images, colouring, and the positioning of each of these elements;
  • When adopting your app icon, reasonable steps should be taken to that it is sufficiently different icons already on the market, in order to make it straightforward for the consumer to distinguish between the multitude of apps available.
  • Extra steps should be taken to ensure that icons are sufficiently different from that of competitors.

 

Comments

 

The judgment of High Court is far from a clear-cut success for owners of descriptive brand names. Rather, it is a clear demonstration of the limits of an inherently descriptive term, and the fine lines that are at play where Trade Mark rights are concerned.

 

Had the issue not involved a Mark that was an inherently a descriptive term, the results of the decision may well have turned even more in PlanetArt’s favour.

 

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

 

SKY v SKYKICK: Part 2 – The Clouds Part…

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Following the CJEU greatly anticipated judgement to questions raised to it, the UK High Court has now issued Lord Justice Arnold’s concluding decision, in the Sky v SkyKick case.

 

As reported previously, Justice Arnold had requested the CJEU provide clarity on a number of pertinent issues to the case; namely, the legitimacy of wide-reaching specifications, and the associated issue of ‘bad faith’ being pleaded in Trade Mark invalidation proceedings.

 

Now armed with the CJEU’s judgement, Justice Arnold’s ruling provides brand owners and practitioners with well-drawn conclusions, and strategic guidance.

 

Application of CJEU Judgment

 

The High Court mostly followed the CJEU judgment:

 

  • Confirming “Trade Marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision” [1]; and

 

  • “Trade Marks can only be declared invalid in relation to those goods and/or services in respect of which the Court finds that the applications were made in bad faith, and not totally invalid” [2].

 

  • However, Sky had applied for its Trade Marks “with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties” [3]. Thus, limitations were applied to most of the relied upon goods and services, these being so broad Sky could not conceivably be using their Trade Marks to the full breadth of what these terms entail.

 

  • Extraneous to the CJEU judgment, Justice Arnold supplied the limitation wording himself in absence of Sky providing their own.

 

  • Limitations aside, Skykick were still found to have infringed Sky’s earlier rights. Justice Arnold concluded, “[t]he fact that [Sky’s] Trade Marks are partially invalid on the ground that they were applied for partly in bad faith does not affect [the finding of infringement]” [4].

 

Conclusion

 

Foremost, it is worth stressing that a finding of bad faith is not concluded lightly. In the context of Sky v SkyKick, it had to be demonstrated that Sky “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark” [5]. Justice Arnold concluded these criteria were met. Sky had included terms that could not be conceivably supplied, in full, ‘in the course of trade’. The decision in Sky v SkyKick leaves us with a few points of particular note:

 

  • Where broad terms are used, a specification drafted defensively could now be vulnerable to an invalidation action. However, brand owners need not panic in that it cannot be assumed that Registrations will be invalidated in their entirety, even where an invalidation action succeeds.

 

  • When drafting a specification, use of broad terms such as “computer software”, should not be included without limitation as to the specific purpose that the software will be put to. On the basis of the agreed wording of Sky’s limitations, we now at least have Court-approved wording for certain broad terms. For example, “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service”.

 

  • Justice Arnold resorted to limiting Sky’s specifications because they had not proposed any wording as a fall-back position. In future invalidation proceedings, it may be worth Applicants, or their counsel, devising their own fall-back wording, lest the Court’s wording be imposed upon them.

 

Whilst the conclusion of Sky v Skykick has not met the initial expectations, our previous advice remains current:

 

  • Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.

 

  • Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application, if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.

 

  • Do contact us should you require advice on how to best protect your Trade Marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.

 

Bibliography

[1] Sky Plc & Ors v Skykick UK Ltd & Anor [2020] EWHC 990 (Ch) (29 April 2020). Paragraph 12.

[2] Sky v Skykick. Paragraph 13.

[3] Sky v Skykick. Paragraph 21.

[4] Sky v Skykick. Paragraph 62.

[5] Sky v Skykick. Paragraph 11.

 

Can a Deity Apply For a British Patent? – Part 2

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Apply for British Patent

 

Following on from Part 1, we explore further questions relating to applying for and owning a patent, particularly cases where there are multiple owners.

 

As a patent is a form of property, how does it work to have two or more joint owners?

 

In the UK, joint owners are considered to have an equal, undivided share of the patent, unless there is an agreement to the contrary, for instance specifying different share percentages.

 

Each joint owner is free to use the patent and work the patented invention without requiring the consent of other co-owners and without infringing the patent. If a joint owner passes away, their share passes to their estate rather than to the other joint owners.

 

The above also applies to joint applicants (i.e. before grant of the patent).

 

All the above dealt with using the patent owned by a joint owners. But what about dealing with the patent itself? 

 

A patent can be amended after or before grant, surrendered or revoked. As a form of property, a patent or patent application can also be licenced, assigned, or mortgaged. However, to do any of the above actions, the consent of all joint owners must be obtained, unless there is an agreement specifying otherwise. Such a situation might arise, for example, where one joint applicant is a funding body who is not interested in being actively involved in the prosecution of the patent application, but wants to retain a share of the patent.

 

Renewals are an exception to the rule that consent from all joint owner is required. A renewal fee is due every year after grant on the filing anniversary in order for the British patent to be kept in force. Any party can pay the renewal fee, even a third party, without the consent of the patentee(s) or other joint owners.

 

What can you do if you cannot agree with another co-proprietor on how to proceed with a patent application?

 

Requiring the consent of all joint owners can be an issue if joint owners cannot agree. For instance, one joint owner may want to continue prosecution whilst another joint owner wants to give up on the process entirely. Alternatively, all joint owners may want to continue proceedings but have opposing views on the direction of the patent application.

 

In such cases, UK law specifies that any of the parties can refer the dispute to the UK Intellectual Property Office (UKIPO). The UKIPO can take any decision it deems appropriate. For example, the UKIPO can transfer the application from one party to another, such that the application proceeds in the name of one or more of the parties.

 

If one of the joint owners develops an improvement to the patented invention, do all joint owners of the original patent automatically become joint owners of a patent to the original patented invention with the improvement?

 

No. If, upon working the patented invention, a joint owner develops an improvement which is patentable in its own right (i.e. novel, inventive and non-excluded subject-matter), only the joint owner is entitled to a granted patent protecting the improvement (or the original invention incorporating the improvement). The right to this new invention is owned solely by the joint owner who developed it. The other joint owners of the original patent are not entitled to the new invention, even though it was developed from the original patented invention.

 

The above also applies to joint applicants of a patent application (i.e. before grant of the patent).

 

This concludes Q&A about Applying for and Owning a Patent – Part 2. Please see Q&A about Filing Strategies – Part 3 (coming soon) for further discussions relating to what, in anything, can be done if someone files a patent application to your invention. In the meantime, if you have any queries about patents, please do not hesitate to contact us.

 

The Invention of Rules

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BBC

 

Intellectual Property can be a difficult topic to publicize, so credit is due to the BBC for continuing to keep the fundamentals of the patent system in the public (Dragon’s) eye year after year. Auntie Beeb’s mission statement is to inform, educate and entertain, and for such a weighty topic, you would expect the home of respected heavyweights such as Attenborough, Bragg, and O’Carroll to be firmly in favour of educating the public and bringing the subject to the attention of younger consumers.

 

Bitesize

 

BBC Bitesize is an online study support platform for school-age students in the UK, and contains lots of articles that delve into interesting titbits from the news. I, as a mostly grown man, therefore was naturally drawn to a blog post entitled ‘How do you invent a new sport?’. The article itself is a brief discussion of the history of Bossaball, a mix of football, volleyball and extreme gymnastics.

 

Unfortunately, the blog has a rather fuzzy approach to the fundamentals of IP, which will no doubt encourage the reader towards some of the more common misconceptions about the difference between patent, trademark and copyright law.

 

The laws of invention

 

“Creating a sport isn’t just about building a player base – patents also comes into it. A spokesperson for the Intellectual Property Office (IPO) explained to BBC Bitesize that the name of a sport can be trademarked in the UK – recent examples are Zumba, Boxercise and Spinning. Rules of the game can’t be trademarked but they can be protected by copyright, and revisiting them over time also keeps them in copyright.”

 

There is a lot to unpack here.

 

  • The focus of the is on trademarks. The names of the new sports referenced are protected by Registered Trademarks. This is fine – a trademark protects branding or trading stylisation – but these are definitively not

 

  • The rules of a game cannot be trademarked, but this isn’t really the point. What the author wants to say here is that the rules of a game cannot be patented (in the UK). Rules for a game are explicitly excluded from patentability. A patent can protect the method of a technical invention (such as a method of manufacture), but the rules of a game are deemed non-technical in nature.

 

  • The rules of a game can be copyrighted, in the sense that the literal wording of the rules codifying the game fall under the scope of copyright protection, if original. Copyright cannot protect the underlying concept of a game.

 

The confusion between trademarking and patenting is reiterated in the next paragraph:

 

“Anything unique to a new sport in terms of equipment can be trademarked. The IPO has seen patents registered for wetsuit technology linked to triathlons, with many more for equipment linked to rugby and cycling. The UK is also number one in Europe for patents regarding sports-adapted wheelchairs used in the Paralympics and other events.”

 

In this instance, I believe the author is referring to trademarks when they mean patents. The name of a piece of equipment can be trademarked, but the unique (and inventive) aspects of a product can be patented.

 

A cursory search of the patent databases finds a single British patent application to a ‘sports wheelchair’, GB2130154, which dates back to the 1980’s. It’s not clear where the assertion of the UK’s pre-eminence in the sports-adapted wheelchair technology sector arises from, but I for one would be interested to know more!

 

Bossaball

 

Potentially, some of the confusion arises from the conversation with Filip Eyckman, the creator of Bossaball. He acknowledges a tricky past with the enforcement of his IP over the years.

 

The Bossaball website directs the reader towards a page entitled ‘Patents’, which recites the following:

 

“Bossaball Sports S.L. is the owner of all rights worldwide. Bossaball Sports S.L. is protected through international copyright and additional trademark and design patents worldwide.”

 

Herein lies another common misconception about IP – the existence of the ‘design patent’.

 

A design subsists in the aesthetic (i.e. non-functional) aspects of a product. Bossaball Sports S.L. do not appear to have any patents (called utility patents in some jurisdictions, such as the US), but instead have design patents or registrations.

 

As such, Bossaball Sports S.L. IP rights portfolio would appear to comprise the following (in at least some territories):

 

  • Protection, via a design patent/registration, over the aesthetic appearance of the inflatable court, upon which Bossaball is played.

 

  • Protection, via a trademark registration, to at least the Bossaball name.

 

  • Protection, via copyright, to the written rules of the Bossaball game.

 

What Bossaball can’t do, it would seem, is prevent the unauthorised use of a game played on an inflatable court which looks different to that protected by the design patent/registration, under a different name, and not utilising a copy of the rules created for Bossaball.

 

So how do you protect a game?

 

Whilst it may seem as though Bossaball Sports S.L. have vulnerabilities in their portfolio (i.e. potential avenues for copycats to arise), the vulnerabilities are narrow in scope. The protection sought by Bossaball Sports S.L. is actually a textbook case as to how to obtain some sort of protection for a game which otherwise cannot be patented.

 

  1. Obtain design (or, if feasible, patent) protection for any equipment or paraphernalia in the game;

 

  1. Register the game name as a trademark, and build up brand awareness to improve the strength of the trademark; and

 

  1. Ensure that you have good and detailed records of copyrightable material, so as to permit enforcement of any rights available against direct copycats.

 

What you shouldn’t do is mark your concept as patented or patent pending, when you only have trademark to the brand. This is illegal, and highlights why it’s important to be selective in the terminology you use in the IP arena. So I tip my hat to BBC Bitesize for raising these points to the wider audience, whilst giving them a digital slap on the wrists for using some misleading phrasing!

 

How To Make Competitors Aware Of Your IP

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Competitors of intellectual Property

 

It is a question that we are frequently asked: ‘I have patents and trademarks, so how do I put a notice on my products and website to notify competitors of my intellectual property rights?’

 

Whilst driving home from a recent ski trip with my family, I noticed the following on a cardboard sleeve used by Starbucks® to hold my piping hot triple-shot cappuccino:

 

Competitors of intellectual Property

 

Curiosity took me to the stated page: www.lbpmfg.com/patents/, and I liked the way this was laid out.

 

The company’s rights are clearly displayed in a table, with a picture of the product, and the trademarked name …

Competitors of intellectual Property

 

… followed by the associated patent rights:

 

Competitors of intellectual Property

 

If curious, the granted patent rights can be viewed at US8,529,723 and US9,056,712.

 

(Interestingly, their associated right US9,580,228, granted in 2017, is not listed on their web page, so it does seem that LBP Manufacturing are behind with their updates.)

 

Undertaking a manufacturing run, whilst having pending patent and trademark applications, costs money to reprint or retool once your applications are finally allowed and become granted or registered rights. This usually results in a new ‘grant’ number, particularly for patent rights.

 

To this end, having a single website address which can be referred to on your products and literature, and which can be easily updated as new rights are won and older rights lapse, will save time and costs downstream.

 

Why Do I Want To Notify Others Of My IP Rights?

 

Let’s look briefly at the UK, and also the USA to answer this question.

 

In the UK, there are provisions for at least a partial defence against infringement if the infringer can argue that they were ignorant of the existence of the patent or similar rights. See ‘Section 62(1)’ on the UKIPO’s website.

 

The onus is on the infringer to prove that they were not aware.

 

Being clearly directed to a list of your IP rights by a statement on your product or associated literature makes this defence difficult or impossible to use.

 

There are no specific requirements, under UK patent law, for a patent owner to state their rights publicly (but why wouldn’t you? You have paid for the asset, why not use it to protect your market?). Under US patent law, legal damages will not accrue until an effective notice of rights is given.

 

35 USC 287(a), since the introduction of the America Invents Act (AIA) in 2011, gives the option of ‘virtual’ marking to avoid the necessity of physical marking. Virtual marking is as shown above, where LBP Manufacturing has put a statement on their cardboard sleeve of ‘Patent’ followed by their internet address for a web page that outlines a complete and up-to-date list of associated patent rights. See Page L-67 of the MPEP from the USPTO for more specifics.

 

As alluded to above, since you have paid to stake a claim to your intellectual property, why would you not make the best use of the assets? Use the rights as a ‘keep off the grass’ sign to deter your competitors.

 

European patent fees to increase from 1st April 2020

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European patent fees

 

The European Patent Office has announced forthcoming changes to its fees, in line with its usual practice of biennial fee adjustments.

 

The January 2020 edition of the EPO Official Journal sets out further details of the fees that will be applicable from 1st April 2020. The changes typically lead to an increase of just under or just over 4% relative to the current official fees. The fee increases will apply to any fees that have not been paid prior to 1st April 2020.

 

Is it worth paying any fees early?

 

You might be able to pay certain mandatory fees on your European patent application before 1st April 2020, in order to take advantage of the slightly lower official fees.

 

This would be particularly advantageous if you are looking to file a Euro-PCT application to avoid increases to the application fee (+5 EUR), search fee (+50 EUR), examination fee (+65 EUR) and designation fee (+25 EUR), as well as any extra claims fees and/or extra page fees.

 

Overall, filing a Euro-PCT application by 31st March 2020 could save you at least 145 EUR in official fees, or potentially more for longer applications. There will also be some cost savings if you wish to file a direct European application by the same date.

 

If your current application relates to two or more inventions – typically highlighted by a “unity” objection in a European search report – then you should also consider filing any divisional applications for the other invention(s) by 31st March 2020. A divisional application takes the filing date of the original ‘parent’ European application, and any renewal fees for previous years need to be paid separately for a divisional application.

 

If, for example, your original European application was filed in February 2015, all of the 3rd to 6th-year renewal fees would need to be paid on a new divisional application, plus the divisional filing fee. In that scenario, you could save at least 130 EUR on those fees alone, in addition to savings on the application fee, search fee, etc. This all assumes that the divisional application is filed and the necessary fees paid before the fee increases take effect.

 

What’s the cost to file an application now?

 

If you would like an immediate quote for filing a Euro-PCT application by 31st March 2020, please enter your PCT application number (in the form PCT/XX20XX/XXXXXX) into our Euro-PCT calculator.

 

If your application is not written in English, French or German, then a translation will be required at additional cost. Please contact one of our attorneys directly if this applies to you, or if you are looking to file a direct European application or a divisional European application, and we would be pleased to provide a firm quotation.

 

For general advice on patents or other intellectual property, please give us a call and have an initial chat with one of our attorneys.

 

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