IP UPDATE
- Changes to Google Adword Policy
- Google AdWords
- Expansion of the European patent system
- Patent fee changes
- UK trade mark invalidity decisions have estoppel effect
- Speedier grant of European patents
- Use of a keyword - is it trade mark infringement?
- Burden of proof for internet prior art against patent applications
- New decisions on second medical use claims and the language of European patent applications
Changes to Google Adword Policy
Following a recent decision of the European Court of Justice, Google has announced a change in policy for the UK and Europe on the use of “AdWords”, whereby advertisers can have sponsored links to their websites displayed in response to searches for chosen keywords. Effective from 14 September 2010, Google will allow companies to use competitors’ trade marks as keywords in certain circumstances, thus manipulating the search engine results displayed. In the UK, use of competitors’ trade marks within the advert text may also be permitted in some cases.
In general, those companies that can take advantage of this dramatic change are resellers, sellers of components, replacement or compatible parts and information sites. It is anticipated this will have a significant impact in the finance, travel and electronic industry. Caution is still needed, however, as any use of keywords that causes confusion as to the company behind the advert or the goods/ services in question can still be challenged, resulting in the removal of the advert by Google.
For Europe, the position will be brought into line with the current UK position and therefore the new policy will allow pan-European Adword campaigns using the trade marks of others, providing the origin function is not compromised.
Google AdWords
On 23 March 2010 the European Union’s Court of Justice (CJ) issued its long awaited decision on Google’s AdWord system, whereby advertisers can have a “Sponsored link” to their website displayed to internet users who search for a keyword selected by the advertiser. The question was whether Google or the advertiser was liable for trade mark infringement if the advertiser had purchased a competitor’s trade mark as its AdWord.
The CJ found that although Google allowed its clients to use keywords which were identical or similar to a third party’s trade mark, Google was not using the signs in its own commercial communications. In particular, the CJ noted that even though Google created the “technical conditions” necessary for the use of a sign, and was paid for that service, this did not actually mean that Google was using the sign for the purposes of trade mark infringement. Therefore, Google as the service provider was found not liable for trade mark infringement.
However, the CJ noted that the role of the service provider must be carefully considered on a case by case basis. If the role is purely automatic, technical and passive, pointing to a lack of knowledge or control by the service provider, then it cannot be held liable. However, if the service provider has knowledge of the unlawful nature of the activities and has failed to act expeditiously to remove or disable access, then it might be liable.
When considering the advertiser, the CJ found that an advertiser purchasing a keyword which is identical or similar to another third party’s trade mark is using that sign in the course of trade, because such use is with a view to obtain economic advantage. Specifically, the use of the selected sign triggers an advertisement displaying a link to the site where the advertiser offers its goods or services for sale.
Further, the use of a sign as a keyword was a use in relation to goods or services, because the advertiser selects a keyword which is a trade mark with the aim of offering internet users an alternative to the goods or services of the trade mark owner.
Finally, the CJ indicated that where the advertisement suggests there is an economic link between the advertiser and the owner of the trade mark, or when the advert is so vague as to the origin of the goods or services that normally informed and reasonably attentive internet users are unable to determine whether the advertiser is economically linked to the trade mark owner, there will be an adverse effect on the function of the trade mark.
Accordingly, the advertiser was found to have infringed the rights of the trade mark owner. For trade mark owners, it would therefore be advisable to conduct searches using search engines to see whether any trade mark rights are being infringed due to the marks being used by an advertiser as keywords. However, as the advertiser, rather than the more readily accessible and identifiable service provider, is liable, there could be difficulty in tracking down the responsible party.
Meanwhile, although the service providers are prima facie not liable for trade mark infringement, care must be taken because if they are seen to have knowledge of a trade mark infringement by an advertiser then there could be a resulting liability. This may result in service providers implementing a system similar to the VERO procedure used by eBay when infringing goods are being sold. This would be good news for trade mark owners.
Expansion of the European patent system
Albania will become a member state of the European Patent Convention (EPC) with effect from 1 May 2010. The accession will not be retroactive and therefore only patent applications with a filing date on or after the accession date will be able to cover Albania as a member state. Previously, however, Albania has been available as an extension state of the EPC and the option of extending applications that pre-date 1 May 2010 to Albania is unchanged.
This news follows the recent addition of Montenegro as an extension state of the EPC. It joined Albania, Bosnia Herzegovina and Serbia in the extension system with effect from 1 March 2010. Albania will leave the extension system when it becomes a member state on 1 May 2010.
From 1 May 2010 the European patent system will therefore have 37 member states and three extension states.
Talks have also begun to consider an agreement that would offer applicants the possibility of requesting validation of European patent applications in Morocco.
Patent fee changes
The UK Intellectual Property Office (UK IPO) has made changes to the patent fee system, which take effect from 6 April 2010. The
changes are intended to enable the UK IPO to realign its processing costs with its fees. Fee reductions for handling matters
electronically are also increased, to encourage e-business for both environmental and efficiency reasons.
The main changes are:
- a 50% increase in the regular search fee, from £100 to £150
- an increase in the examination fee from £70 to £100
- a £20 fee reduction for e-filing the request for search or request for examination
- a new £50 fee for registering rights acquired in a patent or patent application
- a new fee of £350 for requesting that the UK IPO continues the examination of contested inter partes proceedings, once a counter-statement has been filed
- a new £150 fee for requesting the restoration of a right to claim priority for a PCT application filed at the UK IPO
- increases of £20 in the renewal fees for years 5 to 12, and more dramatic increases in the renewal fees for years 13 to 20,
with the 20th year renewal fee increasing the most, from £400 to £600.
It is worth noting that for renewal fees that have a due date before 6 April 2010 the old fee rate will apply, even if the renewal fee is paid late, within the grace period. However, for all other renewals paid from 6 April 2010 onwards, the new rates will apply.
Meanwhile, from 1 April 2010 new fees will apply at the European Patent Office (EPO). In this regard, most of the fees payable to the EPO will increase by about 5%. The new fee amounts will apply where the fee is paid on or after 1 April 2010.
UK trade mark invalidity decisions have estoppel effect
The UK Intellectual Property Office (UK IPO) has issued a practice notice drawing attention to the potentially far reaching effect
of its decisions in trade mark invalidity cases, which can now have a res judicata effect. Therefore if a decision of the UK IPO on
whether a trade mark is invalid is not appealed, it is no longer possible to bring proceedings in the High Court regarding the same
issues. The notice advises that in the case of trade mark invalidity actions before the UK IPO that are based on relative grounds,
i.e. where the applicant is requesting that a trade mark be removed from the register because of its earlier mark or unregistered
right, a full oral hearing will be required.
This practice announcement has arisen as a result of a UK High Court decision in the case of W and SM Evans v Focal Point Fires
Plc. Focal Point is a sizable UK manufacturer of fuel effect fires and in 2000 it registered the trade mark Firecraft in the UK.
William and Susan Evans had traded, as a partnership, under the name Firecraft, in the field of bespoke fireplaces since the 1990s.
The partnership had not itself sought registration of the mark Firecraft, but in 2007 challenged the Focal Point registration. It
was argued that the registration should not have been granted because at the time the application for registration was filed the
partnership had established unregistered rights in the Firecraft mark, which prevented the use of the mark by Focal Point under
the law of passing off.
The outcome of the invalidity action before the UK IPO was that the registration was declared invalid. Focal Point did not appeal and its registration of Firecraft was therefore removed from the UK trade mark register. Focal Point continued to use the mark on an unregistered basis and the partnership decided to launch an action for passing off before the UK High Court.
It was decided that the UK IPO had already ruled on the passing off issue when declaring the UK registration invalid on the basis
of the prior unregistered rights, because by finding the registration invalid the partnership’s unregistered rights under the law of
passing off were acknowledged. Therefore the principles of issue estoppel and abuse of process prevented re-litigation of the
point. As a result, summary judgement in favour of the partnership was granted.
The issue of the status of decisions of the UK IPO in inter partes matters, such as invalidity and opposition actions, has been the subject of debate for some time. As recently as 2007, the UK Court of Appeal decided in Special Effects v L’Oreal that UK IPO decisions in opposition matters do not normally give rise to estoppel and re-litigation between the parties on the issues involved can be possible.
The recent judgement clearly draws a distinction between invalidity and opposition proceedings and suggests that, so far as
invalidity is concerned, decisions by the UK IPO in cases based on relative grounds will cause a res judicata effect. Therefore a UK
IPO decision as to whether or not a mark should be removed in view of an earlier mark or unregistered right will have
consequences in subsequent proceedings relating to the same marks and rights.
As a result, parties contemplating, or involved in, trade mark invalidity proceedings before the UK IPO will need to take into account the implications of a negative judgement. If launched or defended, it seems clear that such proceedings will become more costly, complicated and hard-fought in view of the serious implications of an invalidity decision for subsequent actions for infringement or passing off.
Speedier grant of European patents
The European Patent Office (EPO) and the Japanese Patent Office (JPO) have begun a
collaborative fast-track examination procedure, called the Patent Prosecution Highway
(PPH) program. As reported in earlier editions of the Newsletter, similar PPH
arrangements exist between other national patent offices, in particular between the UK,
Japanese and US offices. The EPO/JPO program is running on a trial basis from 29 January
2010 to 28 January 2012. The program can allow European patent applications to be
examined more quickly when there is already a determination from the JPO that claims
directed to the same invention are patentable, and vice versa. This should lead to patents
being issued more quickly by those offices.
Meanwhile, the existing PPH trial between the EPO and the US Patent and Trademark
Office (USPTO) has been extended to run until 30 September 2010.
A new PCT based PPH pilot program has also been announced. This allows the work carried out by any one of the EPO, JPO or USPTO as the International search or examination authority to be utilised in subsequent national examination before one of these three offices, provided that this work had determined one or more claims to be allowable. Again, the applications under this PPH scheme will be fast-tracked. The PCT based PPH pilot program commenced on 29 January 2010 and is due to run until 28 January 2012.
If you would like to discuss whether any of your patent applications are eligible for any
of the PPH programs please contact your usual patent attorney.
Use of a keyword – is it trade mark infringement?
A number of trade mark cases before the courts in various European countries are debating whether the use of a third party’s trade mark as a keyword amounts to trade mark infringement, either by the party using the keyword or the party selling use of the keyword. A majority of these cases, including L’Oreal v eBay and Interflora v Marks & Spencer, have referred questions to the European Court of Justice (ECJ) for guidance as to how the EU law should be applied before issuing their decisions.
In the case of Google France v Louis Vuitton, the Advocate General has handed down his
initial opinion, which is that the use by a third party of another party’s trade mark as a
keyword will not amount to trade mark infringement by the party using the keyword or
the party which sold the right to use the keyword. The Advocate General’s opinion is not
binding on the ECJ but can give an indication as to the thought process that could be
followed.
No doubt when the ECJ issues its final decision in this case, a barrage of decisions will
issue from pending cases that have been awaiting the ECJ guidance. The ECJ’s ruling is
expected in the first half of this year.
Burden of proof for internet prior art against
patent applications
The European Patent Office (EPO) recently issued guidelines clarifying how prior publications found on the internet - so called “internet citations” - can be used. There has also been a recent case involving a patent application of Ranger Services Limited at the UK Intellectual Property Office (UK IPO) where the use of internet citations was considered. This matter is increasingly relevant to patent examination as more prior art documents are only found, or are at least published first, on the internet.
The key issue with an internet citation is to establish the date of publication. The EPO
guidelines clarify that an internet citation cannot be used where the date of publication
cannot be determined. An applicant may therefore evade an internet citation by arguing
that the date of the citation cannot be proved. However, in the event that the text of the
citation states a publication date this will be taken on face value unless evidence is
provided that challenges this.
Of course, many internet citations do not include a stated publication date. The burden
of proof then lies with the person raising the document (the patent office examiner or
the opponent) to establish a date of publication, possibly using an internet archiving
website such as www.archive.org. Although the validity of the dates provided by such
websites has been queried, the EPO guidance permits their use. The approach taken is that whilst such websites might not contain all published documents, and therefore are not a comprehensive source of information, if they do give a date for a relevant
document then that date can be used; it is then for the owner of the patent application to prove the date is invalid.
With regard to the level of proof required for the date of publication of an internet
citation, in the UK case the patent applicant contended that the burden of proof of“beyond reasonable doubt” should be used, as in criminal cases. However, both the EPO
and UK IPO have confirmed that the lower, civil, standard of “on the balance of
probabilities” is sufficient.
Accordingly, to successfully argue against an internet citation as being in the public
domain it will be necessary to show evidence as to why the particular publication date
relied on is incorrect. Broad arguments based on the unreliability of publication dates on
the internet will not usually be accepted.
New decisions on second medical use claims
and the language of European patent applications
The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has issued two decisions providing clarification on points of European practice.
The first decision, G2/08, confirms that protection for a new medical treatment using a known substance is possible under the EPC2000 law that came into force in December 2007, even when the substance is already known for use in a different treatment regime for the same illness. The protection of so-called “second medical uses” should apply to any specific use of the substance in a therapeutic method, provided this use is not known and is inventive.
Essentially, if a method of treatment using a known substance would be patentable were it not for the exclusion from patentability of methods of treatment, then a claim to the substance for this new use should be permitted. This includes situations where the novel and inventive feature is a new dosage regime. This is consistent with the UK Court of Appeal decision in Actavis UK Ltd v Merck & Co Inc.
The EBA also found that the “Swiss type” claim language used for second medical use
claims prior to EPC2000 was no longer acceptable. This claim language, covering use of
a substance in the manufacture of a medicament for the treatment of a specified
therapeutic application, was developed by case law due to a lack of statute in this area. The fact that EPC2000 fills the gap in the statute means that the case law is no longer
required. Accordingly, inventions in this field must use the language permitted by Article
54(5) EPC, namely claiming the substance for use in the specific treatment. However, the
EBA indicated that this bar on Swiss type claim language would not have retroactive
effect. Instead, it would only affect patent applications having an earliest date (priority
date or filing date) three months or more after the date of publication of G2/08 in the
Official Journal.
The second case, G4/08, rules out the possibility of switching the official language of the proceedings for European patent applications. Specifically, the EBA has stated that for a European regional phase application where the PCT application was published in an EPO official language (English, French or German) the European application has this language, by default, as the official language of the proceedings. This language cannot be changed by providing a translation into a different EPO language on filing, nor can it be changed on request, even if all parties agree.
This decision is not unexpected; the rule that had specifically allowed the language of the proceedings to be switched was deleted from EPO law in 1991. However, rules remain that allow the applicant to correspond in any of the languages of the EPO and to use any of the languages of the EPO at oral proceedings. Therefore the main effect of the ruling is that the specification, and any subsequent amendments, must be in the language of the proceedings, and that the EPO will issue its communications in that official language.
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