Archive for the ‘In The News’ Category
Update: The actual decision has now been published and can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/ac-decisions/archive/20131024a.html .
A draft of the decision is set out below:
The Implementing Regulations to the EPC shall be amended as follows:
1. Rule 36(1) shall read as follows:
“(1) The applicant may file a divisional application relating to any pending earlier European patent application.”
2. The following paragraph 4 shall be added to Rule 38:
“(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.”
3. Rule 135(2) shall read as follows:
“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64 and Rule 112, paragraph 2.”
1. This decision shall enter into force on 1 April 2014.
2. It shall apply to divisional applications filed on or after that date.
The proposals are described in more detail in this document kindly circulated by the President of the European Patent Insititute.
Basically, Rule 36(1) EPC reverts back to its old form – from 1 April 2014 you will be able to file divisional applications as long as the parent application is still pending. [Subject to the caveat that an official version of the decision is yet to be published.]
Extra charges are being introduced, but these will only apply to divisionals of divisionals (i.e. “second generation divisional applications”). The exact charges have not been decided yet.
Although some will cry “u-turn” (not European Patent Attorneys though, we are all too polite), it is good to see the Administrative Council listen to feedback from users of the current system and act accordingly.
Out of 302 responses received to a survey in March 2013 only about 7% sympathised with the current system. The negative consequences of the current system are clear:
It requires applicants to decide too early whether to file divisional applications (146 responses), e.g. before being sure of their interest in the inventions or their viability, prior to the possible emergence of late prior art, before having had the opportunity to dispute a non-unity objection, or even before being sure of the subject-matter for which (unitary) patent protection will be sought. Thus, the applicant is forced to file precautionary divisionals, thereby increasing the costs associated with prosecution (143 responses).
The time limits have not met their objectives (102 responses), since there has been no reduction in the number of divisionals, legal certainty has not increased, long sequences of divisionals are still possible, or there has been no acceleration of examination.
The time limits are complex and difficult to monitor, creating an additional burden and further costs for applicants and representatives (89 responses).
The negative effects of the introduced time limits are increased by the slow pace of examination (82 responses).
To address these consequences, the message from users was also clear: 65% voted for the reinstatement of the previous Rule 36 EPC. To their credit, it appears that the Administrative Council has done just that.
Reading between the lines it seems that enquiries from users of the system regarding the 24-month time limit and its operation were also causing a headache for the European Patent Office.
More Divisionals After Refusal?
An interesting aside is that it appears G1/09 is gaining ground. The document prepared for the Administrative Council stated:
This practice [of filing divisional applications before oral proceedings], though, has lost most of its basis since the Enlarged Board of Appeal issued its decision G 1/09 on 27 September 2010, in which it came to the conclusion that a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (current Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.
Consequently, applicants may file divisional applications after refusal of the parent application, without the need to resort to precautionary filings before oral proceedings
These “zombie” divisional applications always gave me the creeps – I would prefer to file before refusal. It will be interesting to see whether the practice of filing divisional applications in the notice of appeal period will now increase.
Often, when discussing my job in public, I receive a number of pontifications on the various merits, or more usually demerits, of “the patent system”. It is said that “the patent system” is “broken” and that there are far too many “dubious patents”. Oft cited is Amazon’s “1-Click” patent, typically described as a monopoly on anything “1-Click” related.
In reply, I politely ask which “patent system” is being discussed, explaining the system of national territorial rights. The eyes then glaze over as I launch my defence.
Helpfully for me the European Patent Office has recently published Board of Appeal decision T 1244/07. This case relates to a divisional European patent application within the “1-Click” family. It is worth a read, especially for those with negative views of “the patent system”, as it rather nicely shows the European Patent system operating smoothly with not a breakage in sight.
Firstly, the claimed invention does not consist of the words “1-Click”. Instead, all of the following features are required:
“A method for ordering an item using a client system, the method comprising:
receiving from a server system a client identifier of the client system when the client system first interacts with a server system;
persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;
storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;
storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;
connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:
sending from the client system a request for information describing an item to be ordered along with the client identifier;
determining at the server system whether single-action ordering is enabled for that purchaser at the client system;
if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;
displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,
performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and
completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.”
Secondly, even with this long list of features the Board of Appeal found the claim to lack an inventive step over previously published documents. In particular a journal article called “Implementing a Web Shopping Cart” by Baron C. et al was cited.
Thirdly, I enjoyed the thinly-veiled dig at US and Canadian law:
27. It is interesting to observe the outcome of this application in other jurisdictions.
In the US, where there is no specific exclusion for business methods, the validity of the equivalent claims was never decided in court, but a decision by the Court of Appeal of the Federal Circuit (D6) lifted an injunction on the basis that the alleged infringer had “raised substantial questions as to the validity of the patent”. The patent was also re-examined and allowed in essentially the same form albeit limited with additional features of a shopping cart. The office action in the re-examination did not discuss D1, or go into details of cookie technology and the skilled person’s appreciation of it.
In Canada, the examiner had considered equivalent claims to be obvious over D5 and cookie technology. The review (D7) by the Commissioner of Patents found that the use of a cookie to retrieve purchaser-specific information was obvious (point 87), and the single-action ordering aspect not obvious (point 102), but an unallowable business method (point 181) and not technical (point 186). On appeal, the Federal Court overturned the latter findings for having no basis under Canadian law for such exclusions. D1 was not discussed in either of these decisions.
On 8 September 2011 I attended TEDxBristol, an independently organised TED conference showcasing local leaders in the fields of sustainability, innovation and creativity. The event was held at Bristol’s newly-opened Mshed in a waterfront area that is quickly becoming a creative hub for digital industries.
The theme for the event was the World Around Us. A particular strength of Bristol enterprise is the ability to work both at a global and local level.
- Wendy Stephenson, a renewable energy engineer, described how The Converging World helped a small Somerset village, Chew Magna, build wind turbines in India to offset their carbon emissions.
- Tony Bury, a philanthropist and serial entrepreneur, explained the difference a mentor can make. His charity, The Mowgli Foundation, matches mentors with entrepreneurs in South West UK, Jordan, Lebanon and Syria.
- Richard Noble of Bloodhound CC entertainingly explained how they found themselves inspiring the next generation of engineers as part of their efforts to obtain a Eurofighter jet engine. The Bloodhound Education Programme involves over 2,410 primary and secondary schools, 176 further education colleges and 33 universities. Their journey to build a 1000mph car is now gathering pace, with tests due to begin in just over a year. They are aptly based just behind the SS Great Britain in Bristol Docklands.
- Professor Mervyn Miles presented some of the Centre’s current research including some mind-bending work on a holoassembler. This device use optical traps of focused near infra-red radiation, positioned in space via a dynamic hologram, to assemble microscopic, and even nanoscopic, structures. Researchers have combined this technology with a multi-touch interface to create a system that would not look out of place in a science fiction film.
- Tom’s talk provided a fascinating insight into the ups and downs of a private inventor. Over the last 10 years Tom has worked on a 360 degree camera for capturing immersive images (a “BubbleScope”). Tom explained his journey from his initial inspriation while travelling to his current iPhone pre-production accessory.
The event also featured preformances that built upon another of the West Country’s strengths: an ability to combine technology and the arts to produce truly original creations.
- nu desine, a young start-up from Bristol, showed off their AlphaSphere musical instrument. Their presentation also produced one of my favourite quotes from the event: “I don’t rap, I’m an electronic engineer”.
- David Glowacki, a theoretical chemist at the University of Bristol, demonstrated his Danceroom Spectroscopy project. This fuses theoretical Feynmann-Hibbs molecular dynamics simulations with a 3D imaging camera to allow the motion of dancers to warp the external forcefields felt by the simulated particles. The result is projected onto a screen with collisions mapped onto a muscial output. View it here.
- Tom Mitchell and Imogen Heap ended the day with a demonstration of Tom’s musical gloves. These gloves allow wearers to manipulate music using just hand gestures. The result is unbelievable; you can watch the performance here.
In all, the day was a resounding success. A big thank you to Karl Belizaire, the event orgnaiser and his team. Hopefully those that attended were inspired to create their own impact in Bristol and the wider World Around Us.
A couple of recent copyright cases, one in the European Court of Justice (ECJ) and one in the England & Wales High Court, have me worried about the balance between copyright and technology.
Before I begin, let me emphasise that I believe copyright is necessary to provide a reward for intellectual endeavour. There is nothing better to promote and pay for artistic and journalistic works. The problem is ascertaining an appropriate balance between the rights of copyright owners and the rights of the public and technologists. I also have a natural dislike of the use of copyright as a control mechanism, rather than as a (temporary) way to recoup commercial investment. With these recent cases I think the balance has tipped too far in the direction of rights holders. I wish to point out that this is my amateur interpretation of the cases, feel free to comment on corrections etc and do not use it as legal opinion.
The first case is C-5/08 – Infopaq International A/S v Danske Dagblades Forening (“Infopaq”) at the ECJ. The case considers a number of questions referred by the Danish Courts (Højesteret). The background is set out in the judgement, but to crudely summarise: Infopaq digitised newspapers (scan and OCR) in order to provide a searchable database of articles. A search term could then be entered and the results printed, together with an extract of 11 words indicating the context in which the search term appeared. The ECJ found that those 11 words could be subject to copyright protection if “the elements thus reproduced are the expression of the intellectual creation of their author”. The comments of the ECJ, for example in paragraphs 40 and 47, suggest that this test, in most cases, would likely be satisfied.
In the second case – The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors  EWHC 3099 (Ch) (26 November 2010) (“Meltwater”) – the English High Court cites Infopaq and considers similar issues. Both cases rely on an interpretation of Directive 2001/29/EC (“InfoSoc Directive”). Meltwater runs a Media Monitoring Service, which involves monitoring newspaper websites to create a database of articles. Website content is scraped to create the database, which can be searched for a particular term. Like Infopaq, the service may be used by commercial organisations who wish to monitor references to their brands in the media. An email report is sent out containing a hyperlink to each relevant article, the opening words of the article after the headline, and, like Infopaq’s service, an extract showing the context in which a search term appears. One of the questions was whether an End User infringes publisher’s copyright in the articles by receiving the email, and thus requires a licence. The Court found that copyright could exist in a headline and text extract. Receipt of the email constituted making a copy and thus there was infringement (see paragraph 102).
Meltwater then continued to suggest that supply of a hyperlink may infringe copyright (in this case an End User clicking on a link, and thus creating a copy would infringe) and that forwarding the hyperlink would also infringe (see paragraph 104). The exceptions were considered and found not to apply.
Both cases appear to introduce an additional layer of legalistic worry on day-to-day digital activities. For example, the ECJ state that:
23. According to the Højesteret, it is not disputed in this case that consent from the rightholders is not required to engage in press monitoring activity and the writing of summaries consisting in manual reading of each publication, selection of the relevant articles on the basis of predetermined search words, and production of a manually prepared cover sheet for the summary writers, giving an identified search word in an article and its position in the newspaper. Similarly, the parties in the main proceedings do not dispute that genuinely independent summary writing per se is lawful and does not require consent from the rightholders.
This seems to suggest that the automation of this activity introduces civil liability. Automation necessarily involves storage of data, which in most cases is synonymous with copying. This has been considered and the InfoSoc Directive provides exemption for technological use. The exemption requires:
- the act is temporary;
- it is transient or incidental;
- it is an integral and essential part of a technological process;
- the sole purpose of that process is to enable a transmission in a network between third parties by an intermediary of a lawful use of a work or protected subject-matter; and
- the act has no independent economic significance.
However, it both cases the exemption was found not to hold. In my opinion, conditions 4 and 5 are too onerous; for example, processing thousands of articles to determine sentiment for commercial ends would not comply with 4 or 5 but in my mind could be exempt.
It is interesting that reference is repeatedly made in Infopaq to the “printing” of the search results. If a hardcopy was not made, for example the search results were viewed on a computer screen or iPad, would the finding of infringement have been the same?
Small Parts and Twitter
I have generally been impressed with the common sense decisions in cases such as Francis Day & Hunter Limited v. Twentieth Century Fox Corp Limited AC 112, wherein copyright was found not to subsist in the title “the man who broke the bank at Monte Carlo”. More cases are set out in paragraph 61 of Meltwater. I think it is very dangerous to extend protect to short passages, titles, names and headlines, especially without any straightforward exemptions for citation. Indeed one of the reasons titles were denied copyright was to allow the free citation of books and articles.
While Infopaq introduces the condition of “the elements thus reproduced [being] the expression of the intellectual creation of their author”, I think it would be difficult to prove this did not apply; every headline, even if mostly factual, has at least a scintilla of creation, e.g. word choice, placement etc.. I think the Court in Meltwater accepted this was a likely result of following Infopaq.
The result of Infopaq and Meltwater is the situation that a Tweet, or even a newsagent’s sandwich-board, containing a newspaper headline is likely a prima facie infringement of copyright. Further a Tweet with a hyperlink accompanying the headline is a further infringement, if permission has not been obtained. Clicking on the link is also an infringement. If you RT a Guardian, New York Times, Washington Post or Telegraph tweet linking to an article you may be infringing copyright. I cannot see this interpretation as being practical or commercially desirable. I would thus expect an appeal from Meltwater in due course and some clarification from the higher courts.
UPDATE: The Court of Appeal have now dismissed Meltwater’s appeal. Read the judgement: here. The concerns set out above remain. While, in this particular case, the Courts have come to the right conclusion commercially – i.e. Meltwater’s customers required a licence, some guidance is required here on use and exclusions to avoid losing the trust of common Internet users.
Bath. Well known for this kind of thing:
Not, however, so well known for this kind of thing:
While the professional, scientific and technical, and information and communications, industries make up 13% of Bath’s workforce, they contribute 27% of the total gross-value-added (GVA) contributions (see page 24 of BANES’s Economic Strategy publication). The future of this area was the subject of a talk at the Octagon, Bath as part of the Treasure & Transform exhibition. The Chimp was in attendance (any factual errors in the reportage are my own, for which I and my hastily iPhone-typed notes apologise).
The talk was in the form of a panel discussion chaired by Simon Bond, Director of Bath Ventures Innovation Centre (University of Bath). The panel featured the cream of Bath’s software industry: Paul Kane, CEO of CommunityDNS, Richard Godfrey, Director and Founder of i-Principles and Shaun Davey, CEO of IPL.
What Makes Bath Good for Software?
First up was a discussion of the attributes that make Bath attractive for software and high-tech companies. This included:
- Excellent local universities (e.g. Bath & Bath Spa) providing a stream of talented people.
- Great quality of life, especially for families.
- Unique concentration of creative skills, e.g. in publishing, design and the arts.
- A culture of quality, of building things well.
- A good (if not affordable) transport link into London.
- A concentration of affluent people, e.g. for investment.
What Difficulties do Businesses in Bath Face?
Next, the talk moved on to the difficulties faced by software and high-tech companies in Bath. These included:
- Transport problems; e.g. high cost of train travel, difficulty getting into the center of the city; unpredictabiltiy of traffic; congestion and pollution.
- Lack of office space suitable for software firms. Many offices were converted houses which were not suitable for the kind of open plan offices needed to allow productive brainstorming and idea sharing.
- Communications infrastructure: outside of Bath University’s JANET link high-bandwidth connections were rare (although we were told BT are looking to install fibre in Kingsmead, mainly for residential customers). Also poor wi-fi (and 3G) coverage.
- Cost of housing (I wholeheartedly agree with this one!): this prices out talented young people, e.g. between 18 and 40; who find other areas more affordable.
How Can Bath Improve?
Having looked at the difficulties, ways in which Bath could improve its position were discussed:
- Stop non-city-centre traffic from needing to pass through the city centre (this would need lobbying of the Highways Agency on a national level).
- Lobby BT/Virgin to upgrade communications infrastructure. Innovative ideas such as laying fibre along the river/canal tow-path or in existing drains and/or providing wi-fi from the hills were put forward.
- Develop world-class conference venues. International conferences were a great way for Bath to attract talented people and become a thought leader (this was thanks to Muir Macdonald, MD of BMT Defence Services).
- Continue the recent co-operation between the public and private sectors; consultations were always welcomed.
- Use SMEs in Bath for local services; there are many companies in Bath that outsource services to London-based firms when local equivalents exist.
- Increase promotion of high-tech industires in Bath. High-tech industry has often been the poor relation to the tourism industry when it comes to press coverage and marketing, which needs to change.
My Two Cents
Comparisons were made with Old Street (so-called “Silicon Roundabout”) and Cambridge (so-called “Silicon Fen”). I have worked in (and with) software and high-tech comapnies in both these locations. Bath can learn certain lessons from these areas:
- Bath needs more innovation centres. The current Innovation Centre is at capacity and the awkward location in the bow of the river in the city centre is not great for commuting. BANES has earmarked the Bath City Riverside (where I will soon live) as sites with potential for development. These industrial areas on the edge of the city (Twerton / Newbridge), with easy road access, would make ideal (and cheap) sites for incubation centres that would solve the office space problems discussed above. Cambridge have recently opened their Hauser Forum in a similar edge-of-city location, which complements sites such as St Johns Innovation Centre (where I have worked). These buidling provide more than office space, they enable like-minded talented young people to mingle and connect, building a network effect that results in real growth and GVA.
- The panel discussed attracting highly-educated, young 18-30-somethings to Bath to work in the high-tech industries. It was amusing listening to the ideas put forward, because the Chimp falls exactly within that demographic. For the Chimp the greatest difficulty coming to Bath is a lack of affordable family housing; if you were employed in Bath on a good yet (business-wise) affordable salary you would not be able to afford any 3-bed property outside of the estates in the south-west of the city. There are more affordable properties outside of Bath, but this means you will need to drive into Bath, and thus face the traffic problems discussed above. Here real brave thought and leadership is required, not only from the public sector, but from the more conservative and outspoken Bath public who often put a blanket ban on talk of development.
I will leave you with a corruption of Paul Kane’s ad-libbed marketing soundbite:
High-tech businesses in Bath thrive.
That they continue to thrive will be down to a continuation of the brave public-private partnerships and investments exemplified by the Treasure and Transform exhibition and seminars.
I have always been a fan of the progressive nature of the European Patent Office, for example, including Turkey which is (at present) a non-EU state.
I was thus glad to see signs of a new partnership between the Moroccan Patent Office and the EPO. An agreement has been signed that appears similar to existing extension state agreements (wherein an European patent can be registered as a national patent in Balkan states that are not yet signatories to the European Patent Convention).
Whereas the extension state agreements became a stepping stone for becoming a full EPC signatory, the new Moroccan agreement appears to be a looser co-operation agreement that could pave the way for easy conversion of a European patent into a Moroccan national patent. Exact implementation details will follow amendments to Moroccan national law.
More details can be found here:
Plans have been afoot since the dawn of time (well at least the 70s) for a unitary patent right across the whole of the EU (plus special guests like Turkey). See Wikipedia for background.
As many may know, the existing “European Patent” is a bit of a hydra; on grant a centrally administered application is converted into a number of national rights which need to be managed and enforced nationally. For years European politicians have been labouring away to sort out this messy back-end to make it easier for patent owners to enforce their rights Europe-wide. However, the proposition covers a minefield of incendiary issues: language (the Italians and Spanish get particularly fired up over this); forum-shopping (the British and Germans do not like the thought of national rights being litigated in back-water jurisdictions); replacement of sovereign rights; integration with the European Patent Office; the disjoin between EU members and European Patent Convention (EPC) states (the latter being more progressive) etc..
Things had been placed back on the burner a little after several years in the wilderness. However, the language issue recently torpedoed any forward progress.
Interesting though, this weekend a number of rumours have been circulating that several EU countries are making another stab at it, this time in the form of a private arrangement under the Lisbon Treaty. This quite cleverly side-steps the language issue by leaving the Spanish and Italians on the outside of the private arrangement. For example, PatLit reports on an article in the Financial Times and Axel Horns picks up on a tweet from Mr Vincent Van Quickenborne (great name), Belgian Minister for enterprise and streamlining policy.
Without much publicity (both inside and outside of the world of IP), fundamental reforms to the procedure for IP enforcement at the Patents County Court (PCC) have come into effect.
Basically, the PCC offers a more streamlined and cost effective forum for low value/complexity claims. Designed for small to medium sized enterprises (SMEs), costs are capped at £50,000. The form of proceedings sits somewhere between proceedings before the UKIPO, the EPO and the High Court. Damages are due to be limited to £500,000 by legislation coming into force in April 2011.
The changes are summarised by the UKIPO here.
I read about this case last week. Although pretty straightforward from a legal point of view it made a good story: hard-working teenage amateur – check; evil Texan pornographer – check; lawyer-done-good – check; copyright issues – check; amusing email exchanges – check; and justice served – check.
An interesting point that arose was the separation in the US between copyright and publicity rights (see Eric Goldman’s report). Even if a photograph on the Internet appears to have a permissive (copyright) Creative Commons licence, if it features or references one or more people, and is used in advertising, you will also need to obtain permission from those people with regard to their publicity rights. This was apparently poorly considered by the court.
Another interesting aspect is the registration of copyright works in the US. If the photograph in question had been registered in the US damages would have been a lot higher (in the end they were around $4k) and costs for attorneys fees may have been available. However, is it reasonable to expect a 14-year-old British amateur photographer to register her photos in the US? (Or even to know to do this?) What about a Flickr account with hundreds of photos? A quick glance at the US Copyright Office website shows that there is room for improvement in terms of usability and clarity; even the material for Teachers and Students is unclear as to the registration process (i.e. What exactly can be registered? What fees are required? How does registration function for works uploaded to Internet sites?)
In the present case, if there was no additional defamation action, it would likely not have been worth pursuing a copyright action. The issues with registration and enforcement raised by the case are not unique to the US; however, they again demonstrate that some form of global copyright is needed (e.g. to protect artists and their works) but that the present system(s) need revision in the Internet age.