This article describes the new European regime for identifying the ‘applicable law’ in unfair competition cases with an international element, according to the Rome II Regulation. It also discusses the relationship of the Rome II Regulation with the Unfair Commercial Practices Directive.
The Rome II Regulation introduces a new regime for determining the applicable law in all cases of non-contractual liability with an international element. If the act of unfair competition affects markets or consumers in general, then the applicable law is that of the state or states where competitive relations are affected. If a single competitor alone is affected (as with theft of trade secrets), then a more complicated three-stage scheme applies, possibly leading to a single system of law governing a multi-jurisdictional claim.
The Rome II Regulation creates new opportunities for litigating unfair competition actions on an international, and even Global scale. In the longer term, its main significance may lie in forcing common lawyers to think of ‘unfair competition’ as a distinct and homogeneous category of law, separate from IP, and more extensive than the various nominate torts which go to make it up in English law.
This paper examines the argument that patenting has become an impediment to innovative activity, rather than the incentive it was originally designed to be.
Using economic analysis and empirical evidence, I take up three main issues: deterioration in the quality of patents issues, with ‘weak patents’ unlikely to be enforced by courts if challenged; patent thickets, where firms must secure license agreements from many patentees in order to undertake R&D; and the costs of enforcing patent rights.
The analysis leads to five main policy recommendations: 1) an opposition procedure in the patent office, 2) a mechanism for third-party provision of information on relevant prior art, 3) a substantial increase in patent renewal fees to generate a progressive tax on patent rights, 4) an effective, market-based system of patent litigation insurance, and 5) a centralized patent court to increase predictability of patent enforcement.
Knowledge, its generation, appropriation, and control, is at the heart of the modern knowledge economies—and IP rights (in particular, patents) that protect this knowledge can be described as their currency. It is therefore unsurprising that issues around knowledge and its ownership have become contested by an increasing number of actors, as the stakes are very high. As the role of the patent system has become more visible, it has been subject to increasing scrutiny not only by societal groups but also by the users of the system. Detractors often criticize the patent system for its perceived lack of openness or transparency, yet the very word patent is derived from the Latin word for open.
The health of the patent system is of critical importance to many stakeholders. This article discusses how the different definitions of openness—open v secret, or open v proprietary—might provide some useful thinking on how to restore this sense of inherent openness to the current system. The authors contend that the issue of openness is often a surrogate for societal concerns about trust in the patent system and its institutions. They suggest three questions that the system should address in order to regain public trust and argue that the issues of transparency and trust should be at the heart of any initiatives to reform the patent system and protect its threatened virtue.
This article studies the current understanding of copyleft by the Spanish judicature from the analysis of the collection of judgments delivered since the first appearance of this new concept in court in 2005.
Two different main issues are discussed in this article: on one hand, the attitude of Spanish courts to copyleft, on the other, their approach to copyleft and moral rights. The study of the first point is based on the review of 20 judgments concerning musical works and the characteristics and importance of two existing case law presumptions, their application by the courts, and the lessons that may be drawn from four relevant cases. The study of the second element is based on the review of the only case which connects copyleft with moral rights by contrasting court's findings with the broad frame of protection to moral rights existing in Spain.
Europe has recently witnessed a first launch of judicial decisions on open content and copyleft issues. From a practical perspective, the author explains the general framework designed by case law in Spain and points out several critical issues about the exercise of some moral rights over copyleft works in one of the jurisdictions with stronger moral rights protection.
Copyright exhaustion ensures that the owner of copyright does not have resale downstream control over the copies of copyrighted material once they have been sold. This keeps anticompetitive practices at bay and at the same time ensures that the copyright holder is rewarded once for every copy produced.
This article examines the difference in approach of the different constituent elements of the overall umbrella of IP Rights jurisprudence, for issues like exhaustion of the IP creator's rights after the first sale of the IP has already taken place, while doing so the authors explore the difference of rights in the same doctrine under different jurisdictions like India and the USA.
The difference in position with respect to patents and copyrights on exhaustion has been amply highlighted. This article explores the fact that the USA extends the doctrine of copyright exhaustion and parallel importation to all kinds of ‘works’, whereas the applicability of the same is much restricted in India, is highlighted as one of the issues to be resolved to attain a state of harmony in applicability and enforceability between apparently similar laws. This article thus compares and contradicts the issue of copyright exhaustion in two very different jurisdiction.
In 1992, Directive 92/100/EC required Ireland to enact a remuneration scheme in respect of authors whose works were made available by public lending. Ireland missed the deadline and when the Directive was transposed, with effect from 2001, the ECJ ruled that, in exempting all public libraries from the duty to pay remuneration to authors and peformers, Ireland had exceeded the limits of the cultural purposes derogation in the Directive. The Copyright and Related Rights (Amendment) Act 2007 and SI No. 597 of 2008 set up a Public Lending Right (PLR) system, effective from March 2009.
The Irish PLR is closely modelled on the UK PLR system that pre-dated the Directive by a decade and in following the UK model, in particular by making the right conditional on registration and preventing the estates of authors who died between 1994 and March 2009, the legislation fails to meet the rationale that lay behind the 1992 Directive and the legitimate expectations of authors following the passage of the Directive. The scheme is financed by the Irish taxpayer and is administered by the Library Council, the body in charge of administering the public library system. As the rules make the author entitled to whatever is left after expenses have been deducted, one fears that this may not be very much in the straitened financial conditions that Ireland is currently in. The first distribution will be made in 2010 when the ‘per loan’ statistics are available.
It will not be possible to evaluate the Irish PLR system until the first distribution is made, but we are going to see that the estates of Irish authors who registered in the UK but who died before registration was possible in Ireland will get cheques from the UK PLR authority but not from the Irish body. The fact that the Directive has been narrowly construed to exclude authors of other than literary works and performers is a cause of concern and while Ireland is not alone in taking this approach, the European Commission needs to re-examine the 1992 Directive and whether EU states have broadly ignored some key objectives that prompted its adoption by the Community legislator.
The question of whether disclaimers are allowable in respect of the exclusion of methods of medical treatment, in particular surgical methods, will be considered by the EBA of the EPO pursuant to a referral by the TBA in MEDI-PHYSICS/Treatment by surgery.
The TBA decisions that have considered the issue of whether disclaimers are permissible for methods of medical treatment have been inconsistent, with some TBAs claiming that they are allowable, whereas others making it clear that they are not. The EBA in PPG/Disclaimer made it abundantly clear that under the EPC such disclaimers are in principle allowed. The question of whether disclaimers should be allowed is now a moot one. There is some uncertainty relating to the role of disclaimers in methods of medical treatment claims.
Where a patentee seeks patent protection for a cosmetic (or other) method, but the invention also embraces a surgical or therapeutic method, disclaimers might be useful tool in limiting the claims to only the cosmetic (or other) aspect by using such words as ‘non-surgical’ or ‘non-therapeutic’. This should be a sufficient disclaimer unless the cosmetic (or other) purpose arises directly from the medical purpose. It is hoped that the EBA will provide the much-needed certainty in its decision in MEDI-PHYSICS/Treatment by surgery. Oral arguments are scheduled for November, 2009, and a decision is expected in 2010.
Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favoured route to resolution of these disputes tends to be the Alternative Dispute Resolution (ADR) policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP), which celebrates its 10th anniversary this year (2009).
Complaints launched under the UDRP are decided by independent panellists selected from lists held by the various UDRP service providers, one of which is the World Intellectual Property Organization. The panellists are mainly trade mark lawyers. They come from all over the world. That fact combined with the fact that there is no system of binding precedent under the UDRP means that there is scope for divergence of view among panellists. Of late, panellists have been demonstrating potentially significant divergence of views in relation to the practices of domainers (ie entities whose business is the commercial exploitation of domain names). This article celebrates the success of the UDRP over the last 10 years, but highlights the need for consensus among panellists if the UDRP is to maintain its usefulness in the face of these new domainer practices and principally the automated bulk transfer and commercialisation of domain names.
If some route to consensus is not found (by amendment to the UDRP or otherwise), there is a risk that the outcome of disputes involving domainers as respondents will become something of a lottery, leading to a reduced willingness on the part of rights owners to rely on an otherwise cheap and effective form of ADR.
Major event management legislation has now been enacted in several jurisdictions to restrict ambush marketing and other not necessarily unlawful trade practices.
The new special interest laws, however, have the capacity to jeopardize freedom of expression and undermine carefully constructed statutory IP and consumer protection regimes as well as judicially pedigreed causes of action based on allegations of misrepresentation, connection confusion, or misappropriation without offering the checks and balances that these mechanisms afford.
New Zealand's one size fits all Major Event Management Act 2007 goes further than most in this direction by presuming infringement and creating new quasi property rights and open-ended criminal offences. Application of the new law may have unintended consequences.
In 2007, UNCITRAL adopted the Legislative Guide on Secured Transactions (henceforth, the Guide).
Currently, the organization is endeavoured in drafting an Annex to the Guide aimed at identifying and resolving the particular issues that may arise when IP rights are the object of the security. The purpose of this project is to provide a legislative model for those countries wishing to reform their secured transaction laws, in such a way as to allow for an efficient employment of IP rights as collateral.
Indeed, the growth in value of IP rights brought by the advent of the information society has generated a growing interest worldwide in both offering and taking these assets as security for debt finance. This article describes some of the main issues that are currently being discussed in the development of the Annex and the different solutions under consideration; in particular (i) the interaction between the general security register set out in the Guide and the specialized IP registries; (ii) the ordinary course of business exception and its application to IP licences; and (iii) the choice of law rule for transactions creating a security interests over an IP right.
As China's World Trade Organization entry obliges the state to comply with international IP rights (IPR) treaties, China has now put in place an IPR strategy as the developmental strategy of the economy. Its enterprises have also responded to the strategy by harnessing IPRs and the IPR regimes to enhance their competitiveness vis-a-vis multinational corporations.
This article examines (i) why China has formulated an IPR strategy; (ii) what the Chinese IPR strategy is about; and (iii) where Chinese enterprises feature in the state IPR strategy and how they have responded to the strategy. It explores in detail the implications of the IPR strategy, particularly to multinational corporations.
As China has become the leading recipient of foreign direct investment, and technology transfers alone constitute almost a fifth of this amount, any policy move in the area of IPR will have an impact on multinational corporations. In this context, it is certainly relevant to examine the country's first IPR strategy and gauge its implications.
Claims covering novel nucleotide molecules or polypeptides and homologues thereof (a type of generic or ‘genus’ claim) are often rejected by the USPTO under 35 USC 112, first paragraph, for lack of written description and/or scope of enablement.
It is possible to take proactive measures to address rejections for lack of written description and/or insufficient scope of enablement—namely by provision in the specification of guidance and working examples to enable the full scope of the claim and a representative number of species or structure–function correlation of variants falling within the scope of the claim. This should be done by mutagenesis-based experimentation and/or comparison to homologous sequences, with the results incorporated into the patent specification. But even if this is not done, comparison to homologous sequences known in the art as of the filing date can be used during prosecution to support a genus claim.
Characterization of novel nucleotide or polypeptide sequences by mutagenesis-based experimentation, testing of naturally occurring variants, and comparison to homologous domains of database sequences significantly strengthens the applicant's position regarding procurement of genus claims.
In 2003, Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs set in motion the Registered Community Design, an IP right that is relatively easy to obtain thanks to the fact that there is no ex-officio novelty examination and to the swift and fast registration procedure.
According to the regulation, problems with conflicting design or other rights are solved after registration once they effectively occur. The Community legislator followed the wishes of the European industry and after more than 5 years of experience, the fairly low number of design invalidity claims seems to confirm that this decision was a good one.
So far, only six design invalidity cases have been presented to the CFI. The basic underlying concepts of the Community Design right are at the core of these cases: the concept of the informed user, the degree of freedom of the designer, the use of proofs, the conflict between designs and trade marks, etc.
The RCD being still a young right, the interpretation of these concepts is of utmost importance for practitioners. The article contributes to the general debate on interpretation.
Trade marks are symbols designed to enable the consumer to identify the source of various goods and services. Today, however, trade marks are also culturally meaningful signs. For example, the trade mark ‘Coca-Cola’ is associated with freedom and youth; ‘Chanel’ stands for exclusivity and European chic.
The cultural meaning of a trade mark is built up through marketing techniques that create associative links between the trade mark and various cultural signs such as freedom, youth, and intelligence. This article argues that these links are reciprocal. While the trade mark begins to carry some of the meaning of the cultural signs it has been linked to, these cultural signs also absorb some of the commercial flavour of the mark. An Omega watch on James Bond's hand makes the point that the Omega trade mark incorporates charm, intelligence, a suave sense of humor, etc. At the same time, however, James Bond absorbs some of the lifeless metal glow, some unsavory association with marketing.
The doctrine of dilution in the US law protects the cultural meaning of trade marks, restricting uses that add undesirable associations to them: ‘Enjoy Cocaine’, ‘Genital Electrics’, etc. The article argues that when the cultural meaning of trade marks is protected, the trade mark owners are encouraged to invest resources in marketing techniques that create this meaning. In this way, the US legal system actually contributes to cultural commercialization and reinforces the dominance of consumer culture in Western society.
]]>The US Drug Price Competition and patent Term Restoration Act of 1984 was a major revision to US pharmaceutical law. A significant provision of that law was the ability, under specific circumstances, to obtain an extension of the term of a patent that claims a new drug. The determination of eligibility for a patent extension is a complex matter that has been subject to differing interpretations by the courts and regulatory agencies.
This article reviews the circumstances under which a patent can be extended, how an application for extension is submitted, and how the term of extension is calculated. A case study is presented to further illustrate the procedures.
By limiting when a generic product can be launched, the determination of whether a patent is eligible for a patent term extension can have a major economic impact on both the innovator company and generic competitors. An understanding of patent term extension eligibility is a critical part of the life-cycle analysis of pharmaceuticals.
The protection of databases has been a debatable issue. There is little doubt that databases are important for modern society and deserve protection from slavish copying. But to what extent and how they should be protected has been a matter of intense debate for the last few years.
This article discusses the protection available to databases in the USA, the UK, Canada, and Australia and then endeavours to suggest how Singapore, seeking to be a hub for research and innovation, should react to this issue.
The author argues that Singapore should offer more protection to the database along the line of the sui generis right in the European Union.
The flags, armorial bearings or other state emblems, as well as official signs or hallmarks are not registrable as trade marks according to Article 6ter of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as well as eg article 7(1)(h) of CTMR. However, the problem is not with the plain duplication of such symbols, but with making ‘imitation’ and what is more—the imitation ‘from the heraldic point of view’.
Key questions are what is the aim of such laws, what is the importance of heraldry principles, and how ‘imitation’ should be interpreted.
Increasing numbers of entrepreneurs seek to register their signs. They sometimes do not seek to make references to national symbols, but wish to promote their nationality or affiliation to smaller group. By analysing both EU and USA legislation and rulings, the author seeks to explore whether this is possible.