Cautious optimism regarding 2017 UPC implementation

During the meeting of the EU Competitiveness Council on 28 November 2016 in Brussels, the UK Minister of State for Energy and Intellectual Property stated that the UK will proceed with their ratification process in the months to come.

The statement from the UK Minister for State and Intellectual Property Baroness Neville-Rolfe now seemingly paves the way for the UPC (Unified Patent Court) entering into force as soon as the second half of 2017, provided that Germany also ratifies in due course. However, there are still no official statements from either one of these countries when they actually expect to complete their ratification processes.

Voices were raised after the EU referendum on 23 June in favour of the UK ratifying the Agreement before filing the Article 50 declaration that sets in motion the process of leaving the EU, did so in view of the fact that the UPC is not an EU institution, but an international patent court and that the European Court of Justice (CJEU) will not deal with issues of substantive patent law. What will happen after the UK files the Article 50 is very uncertain, and concerns have also been raised that this might negatively influence how patent holders look at the UPC once it is operational. However, the intention of the UK administration appears to be, for as long as they are members of the EU, to play a full and active role in the UPC, according to Baroness Neville-Rolfe. She followed up by stating that “we will seek the best deal possible as we negotiate a new agreement with the European Union”. This statement might also be positive news with regards to European trademark and design rights.

In a statement made on 28 November, the UPC Preparatory Committee welcomes the news from the UK Minister. Since the UK vote to leave, the Preparatory Committee of the UPC has continued their efforts in recruiting judges and preparing the IT system for the entry into force of the UPC. Many countries have also moved forward with their preparations, for instance on 8 November it was announced on the UPC website that the Italian authorities had formally selected the location for the local division to be set up in Milan.

In an interview published on the website juve.de on 22 November, the chair of the UPC Preparatory Committee Alexander Ramsay also stated that the Brexit referendum more or less only posed a “speed bump” on the way to realizing the unitary patent protection and the UPC.

In addition, in a statement published on 29 November the EPO President Benoît Battistelli said:

“This important news from the UK government means that the long-awaited court is soon to be realized. Users, especially SMEs, have been waiting for the creation of a simpler patent system for Europe, and their relief is palpable. The way is now clear for the last few ratifications to take place in the coming months, and the new court to start work soon after. The UPC will provide a single forum for all participating states delivering faster enforcement actions and harmonized judicial decisions.”

The Preparatory Committee further fully acknowledges the uncertainty regarding the possible start of the system in their statement made on 28 November, and that the industry needs time to prepare for the new patent system. They will therefore publish a revised roadmap as soon as possible.

Provided that both UK and Germany ratify during the spring of 2017, businesses should be prepared for the entry into force during the autumn of next year.

Sofia Willquist, Partner – European Patent Attorney

Interesting decision on conflicts of interest

Ethics and the risk of conflicts of interest are issues that all law firms have to beware of and manage properly. When you use a law firm, you should always expect that your information is handled with confidentiality.

Today, many law firms represent multiple clients within the same technical field and sometimes their clients are competitors. In such cases, the law firms generally set up so-called “Chinese walls” (yes, this is the term used in the business), meaning that the teams who handle potentially competing clients’ cases cannot access each other’s files and are cautioned not to share information with each other.

This kind of parallel representation is generally acceptable for prosecution matters, e.g. for the handling of patent, trademark or design registration applications.

However, it is a completely different ball game when two competing clients come into conflict with each other.

The general rule is that a law firm can normally not side with one of its clients in a conflict, against another one of its clients, but will have to remain entirely outside the conflict. Moreover, a law firm cannot attack a right (trademark, patent, design trademark, patent, design registration) that it has established.

There are, however, limits to what law firms are prevented from doing when representing clients, as a recent EPI Disciplinary Committee decision points out.

In this decision, a disciplinary complaint was filed against a firm that had handled the national stage validation of a European patent, and then had represented an opponent in an EPO opposition against that very European patent.

The EPI Disciplinary Committee concluded that the validation is considered an administrative task and it does not provide the agent handling it with any confidential information. The patent file is already open, the official fee is known and the firm merely provides a translation and files this along with relevant documents to the relevant national patent office.

So the key is whether the law firm has received confidential information or otherwise handled the case substantively.

It would probably be a different story if the firm had tried to attack the national validation, becausethat would be attacking its own work while being aware of its potential weaknesses.

Finally, we note that this was a decision made by the EPI Disciplinary Committee. It would be interesting to see how national disciplinary committees would rule based on the same facts.

Ole Bokinge, Partner, European Patent Attorney

Graphical presentation no longer a requirement for EU trademarks

On 16 December 2015, the new Regulation 2015/2424 of the European Parliament and of the Council came into effect.

The Regulation, and the corresponding Directive (2015/2436), inter alia deal with the question what kind of signs an EU trademark may consist of. This part of the Regulation will however only come into effect on 1 October 2017.

In the preamble to the Regulation (sec 9) it is stated that in order to allow more flexibility, while also ensuring greater legal certainty with regard to the means of representation of trademarks, the requirement of graphic representability should be deleted from the definition of the EU trademark. A sign should be permitted in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The above mentioned requirements are a codification of the Sieckmann case (C-273/00) in which the requirements were established by the CJEU. However, in the Sieckmann case a graphical presentation was still a requirement in addition to the above mentioned requirements.

Although the list is not exhaustive, the Regulation now explicitly (which the regulation (207/2009) did not) mentions inter alia also colours and sounds. Other possible trademarks could for instance consist of holograms or motion (moving pictures).

Hence, from the autumn of 2017 it will no longer be necessary to question if a trademark could be presented graphically as longs as the requirements mentioned above are met.

Will this make it easier to protect unusual trademarks than it is to protect e.g. word and figurative trademarks?

In some cases it will be easier. It will be easier to register motion, e.g. like the Lamborghini doors. Lamborghini doors open
This would probably have been clearer in motion.

In other cases, like for instance regarding scents, olfactory signs will most likely still be difficult to protect unless the technique to storage scents in a “clear” and “precise” way is developed. This would also be the case regarding taste marks.

For the sake of clarity, even though it is no longer necessary, it might still be useful to also file a stave (musical notation) when you file a sound recording. The combination could make the mark easier to evaluate for a third party.

Conclusions
In some cases it will be easier to file certain marks without the need for graphical presentation, e.g. motion or sound.

In other cases, e.g. olfactory or taste marks, it will still in the short perspective be difficult to meet the requirements of the Regulation with today’s technique. But who knows what kind of technical developments that lies ahead?

Many of the non-traditional trademarks are already possible to register due to established case law – e.g. the above mentioned Sieckmann case or Shield MARK (c-283/01).

Hence, the immediate impact on the possibility might not be that big in the short run. But with further developments in the technical field it might have a greater impact in the future.

Peter Hermansson, Attorney at Law

A more efficient trademark application process in China? 13 new Trademark Application and Service centers opened.

China’s State Administration of Industry and Commerce (SAIC), which also administers the China Trademark Office and all trademark applications in China, is on a reform path and is putting efforts into facilitating trademark registrations across China’s provinces and lower tier cities and spreading the work outside of Beijing. The need for reform is a result of increased brand awareness and therefore ever soaring numbers of trademark applications filed by Chinese companies, which reached over 1.74 million applications in the first half of 2016 (up over 30% compared to last year).

Responding to these needs, the SAIC has opened 13 new trademark application and service centers across China with effect from 1 Nov, 2016. These centers are responsible for receiving trademark applications (including defining the date of application), collecting related fees; examination of application documents; offering query and consultation services as well as granting trademark certificates on behalf of the SAIC.

The 13 centers are located in the following cities and provinces: The Market Supervision Administration of Harbin municipality in Heilongjiang Province; Jiangsu Province (Nanjing, Suzhou); Zhejiang Province (Market Supervision Administration of Ningbo); Shandong Province (Jinan, Qingdao, Jining Industrial and Commercial Bureaus); Henan Province (Industrial and Commercial Bureau of Luoyang); Hubei province Industrial and Commercial Bureau; Hunan Province (Industrial and Commercial Bureau of Changsha and, Huaihua); the Industrial and Commercial Bureau of Guangxi Autonomous Region; and the Industrial and Commercial Bureau of Chengdu in Sichuan province.

The reform is also taking aim at reducing the time limit for issuance of the Notice of Acceptance of a trademark application to three months, down from six. The idea is also that the added service centers will increase the average number of applications handled by each officer, thereby raising the efficiency of the application and examination process, aiming to stay within the 9 month time limit.

Since the centers are so new, it is hard to tell at this early stage how efficiently they will work, however brand owners should note that there is now a possibility of applying for a trademark directly in one of the cities mentioned here above. Having said that, the measures appear mainly to be aimed at Chinese businesses in these regions as the centers have been opened in an effort to manage the high numbers of domestic companies applying for trademarks. Therefore, to be on the safe side, foreign brand owners are recommended to continue filing in Beijing for the time being in order to ensure accuracy and avoiding issues related to language barriers.

On a related note, the SAIC has announced that during the year 2017, it will become possible for applicants to apply for trademarks via internet without the use of an agent.

Camilla Ojansivu Underhill, IP Specialist/ Marketing and Business Development Manager

Referral to the Enlarged Board of Appeal regarding negative features in a claim (i.e. disclaimers).

The use of undisclosed disclaimers in a filed application has been practiced since the start of the EPC (European Patent Convention) and was codified in G 1/03. According to this decision, three exceptions[i] from the general principle (a patent or patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed (Art. 123(2)) were established.

In a second decision, the EBA (Enlarged Board of Appeal) in G 2/10 had to deal with disclosed disclaimers, i.e. disclaimers that formed part of the original application. The EBA decided that ‘the test to be applied is whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed’. The test is sometimes referred to as the ‘Gold Standard’.

Since G 1/03 relates to undisclosed disclaimers and G 2/10 relates to disclosed disclaimers, they should complement each other. However, the comments in G 2/10 give the referring board in T 437/14 reason to believe that the Gold Standard should apply in addition to the exceptions or even as the sole standard. Therefore, the EBA will have the opportunity to revisit the disclaimer issue for the third time and hopefully finally resolve it.

After the G 2/10 decision, the various boards have struggled to deal with the two tests. In some decisions only the exceptions in G 1/03 are applied, while in other decisions different ways to accommodate the Gold Standard in the exceptions of G 1/03 have been explored. When the Gold Standard was applied strictly (as in T 748/09) the board did not allow the disclaimer. However, when the Gold Standard is applied in a modified form the disclaimers stand a better chance. In at least two instances (T 1870/08 and T2018/08) different modified Gold Standards are applied. Therefore, the EBA has the opportunity to determine the modified standards for disclaimers in the event the exceptions of G 1/03 apply in addition to the Gold Standard of G 2/10.


 

[i] The three exceptions relate to disclaimers not disclosed in the application as filed and introduced in a claim in order to

  • restore novelty by delimiting the claim against the state of the of the art disclosed in a European patent application filed prior but published after the relevant date (Art. 54(3) and (4) EPC),
  • restore novelty by delimiting a claim against an accidental anticipation, i.e. an anticipation so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention, and
  • disclaim subject-matter excluded from patentability for non-technical reasons.

Torben Raven Rasmussen, Partner – European Patent Attorney