Tag:  “IP”  | (14) posts

The value of design patents

It is a perfectly clear, crisp morning as I make my way from Washington DC’s Union Station, through a clean and perfectly trimmed Senate Park, to the white neoclassical palace that houses the United States Supreme Court. The wide pavement and massive stairs leading to the building’s entrance is filled with journalists, photographers and television crews gearing up alongside hundreds of gathered spectators. Inside, the Supreme Court is in session, hearing its first design patent case in 120 years.

What sparks such an unusual interest in the hearing of an IP case is the fact that this is one of the final chapters in the ultimate “super heavyweight” patent rumble, between the largest corporation in the US, Apple and the by far largest South Korean corporation, Samsung. This lengthy dispute has all the components necessary to attract the public’s eye: it concerns a category of products that basically everyone of us is using (on average 40 times per day), the design patents concerned are understandable and the patents cover the iconic design of the game changing iPhone.

The question that the Supreme Court agreed to hear is not that of infringement, which has already been settled in a final decision by the Court of Appeal for the Federal Circuit (CAFC). Instead, the court is reviewing the size of the damages, and in further detail, the relevance of a century old piece of legislation stating that the infringer in a design patent “shall be liable to the owner to the extent of his total profit”. This in practice means all profit generated by the infringing Samsung Smartphones (article of manufacture), and it is this wording that made the CAFC affirm the $400 million in damages awarded to Apple.

Samsung, as well as several academics, argue that a statement made by the US congress in 1887 that “it is the design that sells the article” (forming the basis for the above wording in the legislation), does not apply to complex products such as the iPhone. On the other side, Apple’s Chief Litigation Officer Noreen Krall, who by the way hired me to my first job in the IP industry, argues the opposite and stated that Apple’s “designers and engineers are distinguished by their originality” and that Apple “firmly believe that strong design patent protection spurs creativity and innovation”.

Knowing how dedicated Apple fans can be, and how much value the Apple customer places in the look and feel of the products, I am inclined to agree with Noreen and Apple. In many instances, I believe that originality and design are features that actually may trump the function of Apples products.

The Supreme Court’s decision is expected in early 2017. Whatever the outcome will be, i.e. if the Supreme Court confirms the principle of the “total profit” or chooses to interpret the law as meaning “total profit” attributed to the specific parts of the “article of manufacture” covered by the patent, the ruling will have a considerable impact on how the IP world views and values design patents.

Joacim Lydén, Awapatent Partner and temporary US Correspondent

Games – A house of IP?

For the second consecutive year Awapatent attended the Nordic Game Conference (NGC). The conference was held at Slagthuset in Malmö, during May 18-20 2016. NGC is one of the largest video game industry exhibitions in Europe with a heavy focus on business and networking.

The video game industry is growing rapidly. Nowadays gaming is casual and almost everyone is a gamer, primarily thanks to smart phones. A game can vary in form, from a charming simplistic puzzle game on a phone to a bombastic cinematic first person shooter on a monster PC. A game can be made by a single developer but also by a thousand-person team. When the game culture transfers from a small sub-culture to something as self-explanatory as movies and literature there will be opportunities.

Games challenge the traditional ways to solve IP problems. Games are interactive, and differ from traditional narrative entertainment. Games are a high-tech product, created from cutting-edge digital technology, but ending up as an entertaining experience to the end user. A game represents thousand of person-hours invested in the development, and these person-hours represent innovation in even minute details.

Games are houses of IP, and by this I mean that IP constitutes the bricks and logs of games. To protect an investment worth thousands of person-hours, IP may be a fundamental key to commercialization and in the end, profiting on a game development project.

Game content as a whole is primarily protected by copyright. A game is built on programming code and is therefore by all means a computer program. But both the purpose and the user interface of a game differ from a traditional computer program. Different important copyright rules may be applicable on computer programs, which may not be applicable on other categories of works, and vice versa. An example of the latter is the InfoSoc directive (directive 2001/29/EC), the directive regulating copyright in the information society, which expressly is not applicable on computer programs. The applicability of article 6 (the right to technological measures) on video games was the main issue in the ECJ case C-355/12 Nintendo. The court stated that the video game in question could not be solely reduced to a bearing programming code but has unique creative value and therefore the InfoSoc directive was applicable in lieu of the Computer program protection directive (directive 2009/24/EC).

According to my own opinion, every game has to be individually assessed, and this shows the complexity of games and copyright. We all agree on that video games are copyrighted works, but the interesting question is rather how video games are copyrighted works.

Viktor Johansson, Associate

IP Law – How hard can it be?

My trainee colleagues and I are now in the final stage of our first 5-week theory period. So many new impressions, new colleagues and new information have opened up for us, revealing an exciting new world of IP law.

When I first applied for the Trainee program, I had very little knowledge of the many facets of IP law and of how many different competencies I would need. Not only do you need to have technical ingenuity, but also an eye for the small details and the bigger picture, quick thinking and excellent people skills.

Even though we have been here only for a short while, all of these sides have already been put to the test, and to answer my own question: Yes, IP law is hard!

It involves a whole new way of thinking where the questions, unlike in many of my university courses, do not have any clear answers. Where each word have to be given careful consideration and every choice have longtime consequences. But it is also a great mystery that only my skills and I can solve. Together we embark on this great new adventure, in which I already feel a bit like a detective. Whether it is finding the perfect word for a specific sentence (who knew that consists of and comprises could mean so different things?), defining the essential feature of a new invention or discovering the specific detail that will make my office action response irrefutable.

I am positive that IP law and all of us trainees have a great future ahead of us. And dear IP law, you did not have me at hello, but you had me at Michael Jacksons Method and means for creating anti-gravity illusions patent.

Bianca Bothmann, Associate

It’s not the end …

Close to nine months ago twelve eager trainees started an exciting journey. Looking back, they had no idea what they were getting themselves into. I do believe all of them had some idea but none had the same idea and perhaps more importantly no one had the right idea. Bit by bit however, the puzzle became clearer, only to be blurred again by more information, new words, new laws and new guidelines. Strangely, most of these new Associates stayed with the company, and they grew, nurturing from the vast collective information source that Awapatent is.

One interesting aspect of the Trainee programme seems to be to realize that the more I learn – that is, the more I know – the more I realize that I don’t know. Now this can either render a person sad, or as it seems in this case, it may open up for new possibilities, development and opportunities. Because no matter how hard anyone tries there is no end to the growing, learning and continuous education of you, within the area of IP.

We are now closing in on the end of the nine-month long Trainee programme. The irony of it all is that although these twelve Associates realize how much we don’t know, we are now more than willing (we are all eager and anxious) to happily take on the new challenges that the world of IP has to offer us. So in a sense, now is not the end, it’s just the beginning. 

Sandra Lindvall, Associate

Starting to get the hang of this …

A couple of months into the Specialist programme, most of the things I’ve been taught about IP have started to settle. I’m starting to know my way around and even the language of patent applications comes quite naturally by now.

During these months we’ve had quite a few senior colleagues teaching us how to write patent applications. I was surprised at first, that people were giving such different advice. Everyone seemed to have their own way of writing and I remember thinking that surely someone ought to know best. As time has passed it has become quite clear that there is no universal best way of writing. There are too many things to consider when writing, depending on the type of invention involved and the purpose of the application. You just have to figure out your own way of writing, picking up advice as you go.

The end of 2011 has been very busy at my home office in Stockholm. I pushed myself quite hard to finish writing a patent application in time for Christmas – and yes, discussing my first draft with a senior colleague revealed “a few” things I need to improve. Now, after a week of vacation, I’m back at it again.

David Färm, Associate

Focus on China

The fact that China is growing in importance is well known. To Awapatent, this growth is visible in our day-to-day work, both from the questions we get about IP in China from our European clients, and from the growing demand for our services as a European firm for Chinese clients. Naturally, we make it a priority to increase our focus on China.

As part of our efforts to get to know this immense country better, we have just spent a week in Beijing, conducting meetings, giving lectures and learning more about this different and challenging place. One of the highlights of this trip was a lecture on ”IP in Europe”, given by Niklas Mattsson at one of the institutes of the Chinese Academy of Sciences.

Needless to say, we have also had a lot of exciting food, met with a lot of interesting people, and travelled in a few of the city’s 70 000 taxis!

Niklas Mattsson, European Patent Attorney
Ted Hagman, Attorney at Law

Personal branding – reflections after inspiring seminars with the famous adventurer Renata Chlumska

Awapatent is co-operating with the famous adventurer Renata Chlumska who is well known for several accomplishments, such as being the first Swedish woman to climb Mount Everest, and she also went around the US (the lower 48 states) by exclusively using a kayak and a bicycle in a challenge called “Around America Adventure” – quite impressive! Her next goal is to become the first Swedish woman in space, which at the earliest will take place during the fall of 2012.  

In a series of seminars for our customers in a number of our different offices, we have had the opportunity to listen to Renata’s adventures and thoughts concerning herself as a brand. Renata is aware of the value in herself as a brand, and also in matters of control in terms of protecting her own name as a trademark, as well as co-operation agreements with her sponsors.

Personal branding is of particular importance for people who provide services, goods and market themselves under their own personal brand. The person behind the brand is also the most essential intellectual asset for this kind of company. However, keep in mind that you are also the leader of your own personal brand and you decide the values of yourself as a company.

Nowadays, companies tend to move in the direction of providing more services than goods (or services connected to physical and intellectual goods) where the people who are providing the services are at the core of the product. In this context it is crucial to strategically and carefully consider how to create incentives for the people who are a part of the brand, and to control their knowledge. This is mutually of essence for the personal brand of the company, and the people who are promoting and exploiting the company. Control and incentives can be created differently depending on the business model, and strategy of the company. Naturally, a strategic use of the personal brand in relation to the business model is also closely linked to the revenues of the company.

Below are some starting points to reflect upon and discuss in terms of personal brand in your company and your own personal brand:

1. Ownership of knowledge and IP. First of all, have you discussed the ownership of knowledge, inventions, IP and know-how, which are created by employees or partners, in your employment and co-operation agreements and whether these assets are transferred to the company, or if it belongs to you as an employee, employer or partner?

2. Relationships and agreements. Secondly, in all relationships, internally and externally, it is crucial to decide upon a legal and business strategy on how to act in relationships with customers, clients, partners and employees, and where the focus of the co-operation, or service shall be. Are you pleased with the co-operation of your relationships today, or do you need to consider up-dating or revising your relationships and agreements?

3. Incentive model. Do you have an existing incentive model for the people who are contributing to the personal brand of your company today, or have you considered to make an evaluation of the incentive model for your company lately? 

The personal brand of people in service companies is, and will become increasingly essential. It becomes easier and faster to post what we like and don’t like on Facebook, to post on Twitter what we are currently up to and so forth. Remember that you are in charge as a leader of your own personal brand. Furthermore, you may be an employee of a company where the personal brands are of importance and where issues connected therewith should be addressed to the board as a key issue on the agenda.

Helena Ribbefors, Attorney at Law, Awapatent.

Look at the Clouds! It is Lightning – or is it a Silver Lining?

Look at the Clouds! It is Lightning – or is it a Silver Lining?

Outsourcing is no new invention. However, now it has taken to the skies; Apple will launch iCloud, Amazon’s music player is cloud based, and in the US on-demand-services has taken off with successful businesses such as Netflix, Hulu, Amazon, Flickr etc. This week someone predicted the death of the PC! Google has just launched their PC with no software. Everything is now on-line “in the cloud” with no need to store or install software or any information.

So, seen from an IP protection perspective is everything just excitement and glee? Looking in the crystal ball the future may hold bright skies with clouds containing all your business information, day-to-day communication and files. A bit like web based mail. Yet everybody knows what happens, when a mail service breaks down: you have no access and you are dependent on the provider (ISP) to solve your problem. And what happens with you IP-protected stuff? Are you sure that your documents, writings, works of art, trademarks, patent information and all confidential material which you are in the process of securing, is safe? And who bears the responsibility if there is a breach of security – and is it a responsibility that will cover your loss and damage (and perhaps that of your client, not to mention your customers’ loss in confidence in you and your business) sufficiently?

Ultimately, Cloud service is just another word for storage and distribution of computing services and programmes. As convenient as this may be, it also puts a very big emphasis on the relation between you and the ISP; you and your business are wholly dependent on the security of the service, response times, loss of data prevention and recovery and liability. Especially when your ISP is located in another jurisdiction it will be crucial to determine and establish where disputes may be resolved; do you have to go to a court in another country? Further, there is no uniform regulation of ISPs; most will have and change their own rules of contract and change them regularly. As an example one just has to bear in mind how often Facebook has changed their rules for using their service and how the users of Facebook have complained.

Cloud services are probably going to be something that eases the lives of most people and businesses. But as there are no common rules, and as there often are cross-border-relations and no IP-legislation covering responsibilities and rights to stored information, it will be crucial to ensure that your contractual relations with the ISP cover this. Before you enter into any alluring cloud services it will be a good idea to make sure that you are not left with a bit of cloud between your hands if things go wrong.

Thorbjørn Swanstrøm, Attorney at Law

Playing the system: the annoyances of Russian utility models

Playing the system: the annoyances of Russian utility models

A fact: A Russian utility model must be new over all available written information. However, it is valid even if it relates to a product that was publicly available outside the Russian Federation at registration (Art. 1351, point 2, Civil Code).

A business recipe: New products are released on foreign markets. Pick one. Obtain a Russian utility model for the product. Be quick here – a patent application for the product is probably hiding somewhere and will be published within 18 months. Wait for the introduction of the product in Russia, and then let the owner know about your utility model …

The above is a flagrant abuse of intellectual property rights. But since the opportunity exists, there is always someone who will use it. This practice can in fact be observed rather frequently, as well-reputed colleagues have confirmed to us.

If your company regularly introduces new products on the Russian market, you may want to protect yourself against such frustration. Rather than going to court when presented with a fait accompli, it is probably cheaper in the long run to take the habit of creating prior art that invalidates potential utility models registered in bad faith. A published national Russian or Eurasian application (claiming priority from the first application that you file anyway) or a PCT application that has entered the national phase may be all you need to fight an annoying utility model. Whether your application leads to a patent does not matter, and you may withdraw it after publication to save costs.

Russian patent attorneys are aware of the problems associated with the present utility model legislation (see, e.g., 1, 2, 3). Many argue that public use outside Russia should also count as prior art. China made this law change in 2009. Recent achievements in search and translation technology should by far outweigh this extra burden on examining staff.

It is a pleasure to finish by referring the interested reader to the booklet “Patent System in Russia” (2010), which contains concise and up-to-date information on the subject.

Anders Hansson, European Patent Attorney, Awapatent

When will the Marketing Director and the Board start evaluating trademarks in actual money?

When will the Marketing Director and the Board start evaluating trademarks in actual money?

Hopefully very soon, since the two main obstacles have been erased.

The previous lack of standards for valuation methods is now history by introduction of the new ISO 10668 Monetary Brand Valuation.

An uncertainty amongst management and Board Directors on how to assess trademark valuations due to lack of experience will be viped away by the national adaption of the international IFRS rules on accounting and in Sweden also by introduction of new national rules from FAR, the Swedish Accountants Association. From 2012 all Swedish companies, except the smallest ones, are obliged to value at least all aquired IP being part of the goodwill. This will undoubtably increase the understanding of trademark valuation.

By measuring market activities and aquired trademark positions in actual money, marketing in Swedish companies will be enhanced and actively adding value to the company.

Since I have argued for putting the trademark value on the balance sheet for the last 20 years, I sincerely hope that a financial evaluation of trademarks now finally will be adopted by all companies that are proud of their trademarks.

Stefan Hjelmqwist, Attorney at Law, Awapatent