CASE LAW
- Patent protection for seemingly impossible inventions
- New decision on own name defence in the UK
- Assessing the damages arising from an injunction
- Promotional use does not constitute trade mark use
- Effect of mergers on patent ownership
- Design protection for features hidden in use
- Trade marks and sponsored links
- Well known trade marks
- Patentability in Europe of human embryonic stem cells
- UK Court of Appeal allows software patent that results in a better computer
Patent protection for seemingly impossible inventions
In the case of Blacklight Power, Inc. v The Comptroller-General of Patents, the UK High Court considered a rejection of two patent applications by the UK Intellectual Property Office (UKIPO) on the basis that the invention was contrary to generally accepted physical laws.
The inventor behind the applications, Dr Mills, was said to have arrived at a new“Grand Unifying Theory of Classical Quantum Mechanics”, which provides for a new species of hydrogen atom, with an electron orbiting at a much smaller radius than had previously been thought possible.
It has long been held in the UK that impossible inventions, such as perpetual motion machines, are not patentable because they cannot be industrially applied, and also because it is inherently impossible to describe them in such a way that the skilled man could put them into practice.
The Hearing Officer observed two areas where the theory parted company with established theory. Firstly, if the hydrogen atoms can exist in an energy state lower than the lowest state predicted by quantum mechanics, why do hydrogen atoms not convert spontaneously to a lower state? Secondly, in the theory hydrogen atoms are said to have smaller radii than the smallest allowed for by standard physics.
Dr Mills presented much evidence to the Hearing Officer in support of his case; however, the majority of the papers put forward were not impartial as they involved Dr Mills or Blacklight in some way. The Hearing Officer concluded that, on the balance of probabilities, the Grand Unifying Theory was contrary to generally accepted physical laws and so he refused the application.
On appeal, the UK High Court held that the wrong test had been used. Instead of determining whether the theory was probably wrong, the Hearing Officer should have asked whether the theory was clearly wrong. At the application stage, the benefit of the doubt should generally be given to the applicant, as erroneously granted patents can be revoked at a later date should a third party object, but a patent application once refused, and once any avenues of appeal are spent, cannot be revived. Therefore the court referred the case back to the UKIPO to decide whether the Grand Unifying Theory was clearly, not just probably, wrong.
This case may prove useful for those applications on the edge of accepted science as the onus is now on the UKIPO to prove that the underlying theory behind an invention is clearly wrong. More generally, it shows once more that the UKIPO should on the whole give patent applicants the benefit of the doubt.
New decision on own name defence in the UK
In the UK, the proprietor of a registered trade mark cannot prohibit the use by a third party of its own name and address, provided that such use is in accordance with honest practices in industrial or commercial matters. This provision is mirrored in the Regulations governing Community trade marks (CTMs).
In Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd & Others the High Court in the UK has ruled that the “own-name” defence to trade mark infringement does not apply where a company is operating under a trading name which differs from its registered name.
In this case the defendants operated a restaurant in London named CIPRIANI LONDON and sought to rely on the own-name defence to alleged infringement of the claimants’ CTM registration of CIPRIANI. The Court held that the use of CIPRIANI LONDON could not constitute such a defence as it was a trading style rather than the registered name of the company.
The court also noted that, even if the registered company name had been used, the defence would still not have applied in this case as such use would not be considered to be “in accordance with honest practices”. The judge found that the defendants must have been aware of the claimants’ rights at the time of opening their restaurant and, if not, a reasonable person in their position would have instructed their trade mark attorneys to conduct preliminary searches.
This case highlights the importance of conducting searches prior to using a trade mark. It also provides some relief to trade mark proprietors whose trade marks are being used by third parties as trading styles which do not reflect their registered company names.
Assessing the damages arising from an injunction
In the case of Les Laboratoires Servier and another v Apotex Inc and others consideration was given to the damages that should be awarded to a company that had been prevented from selling a product pending an infringement and validity hearing, which had ultimately found the patent invalid.
The interim injunction had stopped Apotex selling the patented drug for a significant time, and a cross-undertaking to compensate Apotex if appropriate had been given by Servier when the application for interim relief was granted.
The key issue in looking at the damages was that in August 2006, other than Servier only Apotex had marketing authorisation; additionally Apotex was able to sell the product in all three dosage versions and was selling the product to real customers. In contrast, at the time when Apotex re-entered the market following the invalidity decision, in July 2007, other generics were also on the market. Therefore Apotex had gone from having an established place in the market as being the generic alternative, to being one of a number of generics all looking to establish a base in the market.
The judge concluded that, on the evidence, the appropriate award under the crossundertaking was damages totalling £17.5m.
The judge stressed that a party that secures interim relief before failing to establish infringement has obtained an advantage upon consideration of a necessarily incomplete picture. There had to be some form of symmetry between this incomplete and approximate process by which the party obtained the interim relief, and the process by which the party compensated the other side. Therefore damages should be liberally assessed, although with the object to compensate the plaintiffs rather than punish the defendants.
Promotional use does not constitute trade mark use
In the EU, a trade mark registration may become vulnerable to cancellation if the subject mark has not been put to genuine use in a country for the goods and services covered by the registration, for a continuous period of five years. In the case of a Community trade mark, genuine use in one member state will be sufficient.
However, in Silberquelle GmbH v Maselli-Strickmode GmbH , the European Court of Justice (ECJ) has recently held that the use of a trade mark on purely promotional items which are given away does not constitute “genuine use”.
This ruling followed a referral from an Austrian court asked to consider whether the registration of the trade mark WELLNESS by Maselli for alcohol free drinks would be supported by the handing out of free drinks labelled WELLNESS-DRINK to purchasers of the company’s clothing.
The ECJ took the view that such promotional use did not seek to penetrate the market for alcohol free drinks but rather sought to encourage the sale of clothing. Such use was not, therefore, consistent with the essential function of a trade mark.
This ruling will have a clear impact on trade mark registrations which cover goods that are given away to encourage the sale of the core goods of interest.
Effect of mergers on patent ownership
In Thorn Security Limited v Siemens Schweiz AG, the Court of Appeal considered the registration of a change in ownership of a European patent covering the UK, where the change was caused by a merger.
Ownership of the patent was transferred by mergers under Swiss law in 1997 and 1999. These transfers were registered at the UK Intellectual Property Office (UKIPO) in 2002. A further transfer of ownership to Siemens Schweiz AG was recorded at the UKIPO in 2005.
Section 68 of the Patents Act 1977 imposes a penalty for an assignment not being recorded within six months of the date of the assignment. In the original wording of this section, the penalty for late recordal was that, in a subsequent patent infringement action, damages or an account of profits would not be available in respect of any infringement that occurred before the recordal. In the version of this section now in force, the penalty relates to the non availability of a claim for costs.
In the original hearing before the UK High Court, it had been decided that the mergers were not assignments as such and therefore the six month period of section 68 was considered not to have been triggered by the mergers. Recordal of the final transfer had been effected within the statutory six month period and therefore damages or an account of profits could be awarded.
In the Court of Appeal, however, the meaning of the term “assignment” was considered, with a less literal meaning of the word being found appropriate. The court decided that this term could refer to a document or an instrument that effected a transfer or could refer to the action of vesting an absolute interest in the patent in another person. In other words, the term was wide enough to include any effective assignment by operation of law, and thus covered an assignment by operation of law of the kind involved in universal succession following a merger.
Accordingly the Swiss mergers were held to be assignments which should have been recorded within six months of the effective date of each merger. Since the transfers were not recorded in time, the court was unable to award damages or an account of profits.
This decision emphasises the importance of prompt registration of any transfer of ownership of a patent or patent application. Any company reorganisation might effectively transfer ownership of a patent. If this might be the case, it is worth recording this at the UKIPO within six months, in order to avoid a loss of rights in the event infringement action was taken.
Design protection for features hidden in use
A recent decision by the Invalidity Division of the EU Community Design Office (OHIM) has considered whether features that would be hidden in normal use could be taken into account.
The registered design in question, owned by the Finnish company Ecosir Oy, related to garbage containers. This registration was attacked on the basis that the container lacked novelty and individual character. Three earlier designs of container were used as evidence, although one was dismissed as it was published on the same day as the date of filing of the design registration, and so was not an earlier disclosure.
Some parts of the container as shown in the registered design would be located underground in normal use, so as not to be visible. These parts included relatively tall wall portions that made the registered container look significantly different from the most relevant earlier design. It was argued that these normally hidden parts should not be taken into account when assessing the novelty of the container design.
It was also suggested that the design was a component part of a complex product, composed of individual container units that can be disassembled and assembled. The law relating to the protection of component parts of complex products specifies that the component parts must remain visible in normal use. It was therefore argued that the product could not be registered as a design.
OHIM decided that the containers were not themselves component parts of a complex product, although they might be perceived as complex products themselves, and so the provisions relating to registration of component parts of complex products did not apply. Further, when assessing the design registration for novelty and individual character, all features of the container as shown were considered, rather than only those parts of the container that were visible in normal use.
Trade marks and sponsored links
In our Spring 2008 Newsletter we reported the UK High Court decision in Victor Andrew Wilson v Yahoo! UK Ltd and Overture Services Ltd which held that use of a trade mark as a sponsored link does not constitute trade mark infringement.
In the UK this remains the case and Google has now amended its complaints policy within the UK and Ireland such that trade mark proprietors can no longer object to the use of their trade marks as Adwords by their competitors.
However, this approach is not harmonised throughout the EU. Courts in France, Germany and the Netherlands have all referred questions to the European Court of Justice (ECJ) seeking clarification on this issue.
Guidance from the ECJ is eagerly awaited as this will impact upon the approach taken throughout the EU. We will continue to monitor this issue and further reports will follow in subsequent Newsletters.
In the meantime, it is interesting to note that a French court has recently fined Google 350,000 Euros for trade mark infringement following its sale of Adwords which were the trade marks of Louis Vuitton Moet & Hennessy and Le Meridien Hotels. The court found that the trade marks had been infringed because the Adwords had served to redirect traffic to competitors’ websites.
Well known trade marks
Under European trade mark law, the proprietor of a registered trade mark which has a reputation can seek to prevent the use or registration of the same or similar mark in relation to dissimilar goods or services. However, the use of the later mark must, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. Unfair advantage is commonly referred to as“free-riding” and detriment as “tarnishment”, “blurring” or “dilution”.
The European Court of Justice (ECJ) has recently provided a ruling on Intel Corporation Inc v CPM United Kingdom Limited which addresses the breadth of rights afforded to famous trade marks. The UK Court of Appeal, considering the case brought by Intel against CPM’s registration of INTELMARK for marketing services, had sought clarification from the ECJ on the issue of well known trade marks.
In response, the ECJ ruled that the mere “bringing to mind” of the earlier mark, by use of the later, is sufficient to establish a required “link” in the mind of the relevant public. It is not necessary for the consumer to perceive a trade connection. The fact that that the earlier mark has a huge reputation and is unique in respect of any goods or services does not necessarily imply that a link exists.
Nonetheless, proof of a reputation, and the required link in the mind of the relevant public, is not of itself sufficient to prove detriment to the distinctive character or repute of the earlier mark, though the greater the degree of reputation and the more distinctive the mark, the easier it will be to accept that detriment has been caused.
There must either be actual detriment or a serious likelihood that it will occur. If the later mark is already in use, there must be evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered as a result of that use. However, it remains unclear what form such evidence would take and how any change in economic behaviour could be linked to the use of the later mark.
This ruling is, therefore, expected to restrict the breadth of protection afforded to the proprietors of a well known trade mark.
On the issue of unfair advantage, the Advocate General’s opinion has recently been issued on L’Oreal SA v Bellure NV.
This ECJ case centres on L'Oreal, the manufacturer of luxury perfumes, taking action against Bellure NV, a manufacturer of inexpensive replica perfumes. Although Bellure’s perfumes smelled similar to those of L'Oreal, they were sold under different names. The packaging was not sufficiently similar so as to result in actual confusion on the part of the public, but was deemed to be reminiscent of L'Oreal's packaging, itself the subject of trade mark registration.
L'Oreal argued that whilst the public would not necessarily be confused into thinking that the replica product was a L'Oreal product, the sales achieved by Bellure were on the back of its reputation and therefore took unfair advantage of its trade marks.
In considering the matter, the Advocate General has stated that unfair advantage will exist if the later trade mark derives a “boost” from the link with the well known trade mark. It is not necessary to show harm, or potential harm to the repute of the earlier trade mark. Unlike the circumstances surrounding “detriment” addressed in Intel there does not need to be an effect on the economic behaviour of the consumer.
The Advocate General's opinion is not binding, and the ECJ’s decision is eagerly awaited. This could be a very interesting and useful development for owners of famous trade marks, particularly when addressing lookalike products.
Patentability in Europe of human embryonic stem cells
The Enlarged Board of Appeal at the European Patent Office (EPO) has finally issued its decision (G2/06) relating to the patentability of human embryonic stem cells. In the decision the Board used Rule 28(c) EPC, which states that “European patents shall not be granted in respect of biotechnology inventions which, in particular, concern […] uses of human embryos for industrial or commercial purposes”, to refuse WARF’s patent application relating to a cell culture comprising certain specific primate embryonic stem cells. The Board noted that, at the time of filing the application in 1996, the claimed product could only be produced by a method which necessarily involved the destruction of a human embryo, and that the patent application therefore fell foul of Rule 28(c) EPC. Unfortunately, the decision was limited to addressing the facts of the case, and did not consider the broader issue of the extent to which human stem cells could ever be patentable.
The implications of this decision on European practice are that patent applications directed to products or methods which, at the date of filing, could only be realised by means which involved destruction of an embryo are unlikely to be allowed by the EPO. It is, however, not clear what will happen in cases where the invention is exemplified by methods involving destruction of an embryo but where there were, at the time of filing the application, other ways to effect the invention which did not involve destruction of an embryo.
We will report further developments in this field as they occur but it is clear that the EPO remains reluctant to make general decisions on moral and ethical issues and will likely consider each issue on a case by case basis.
UK Court of Appeal allows software patent that results in a better computer
The Court of Appeal recently upheld a decision of the UK High Court to overturn the finding of the UK Intellectual Property Office (UKIPO) that software which, when run on a computer, resulted in a faster and more reliable computer was subject matter excluded from patentability.
In the case of Symbian Ltd v Comptroller-General of Patents, the Court of Appeal stated that a technical innovation, whether within or outside a computer, will normally suffice to ensure patentability. This decision should result in a change in UKIPO practice, broadening the scope for patenting software.
Under UK law, subject-matter that relates to computer programs “as such” is excluded from patentability. Before this case, the UKIPO’s practice for assessing whether subject-matter was excluded from patentability was to look for a technical effect that the computer software achieved outside the computer, such as control of an industrial process. This approach led to the refusal of applications for software where the only effect was within the computer. Accordingly, Symbian’s patent application for software which resulted in a faster and more reliable computer had been refused by the UKIPO because the only effect was inside the computer.
The decision is good news for software companies and reopens the door for patenting of software inventions via the UKIPO. However, as the Court of Appeal decision acknowledges, it does not set out any clear rule to determine whether or not a program is excluded from patentability, or what is and what is not a “technical effect”. However, the effect of a computer working faster and more reliably is a technical effect. This is, therefore, worth bearing in mind during the drafting and prosecution of patent applications for software.
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