REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL …€¦ · REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW #1 2014 Introduction Scandinavian design is known worldwide

REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW #1 2014

AWA Review contains comments and analyses relating to the very latest developments in IP law. All the articles are written by IP specialists at Awapatent who have extensive experience in a number of key fields. To become a subscriber, visit www.awapatent.com or simply send your name and e-mail address to [email protected].

Enhanced protective measures at customs in the EUREAD MORE ON PAGE 3

The latest change in UK copyright protection of industrial design – is it sufficient?READ MORE ON PAGE 3

A story about the ancient Greeks, hot dogs and patentability of software in EuropeREAD MORE ON PAGE 5

New decisions regarding supplementary protection certificates (SPC’s) in EuropeREAD MORE ON PAGE 6

Linking away…READ MORE ON PAGE 7

EU proposal to harmonize protection of trade secretsREAD MORE ON PAGE 8

Introduction of fee reductions for small entities before the EPOREAD MORE ON PAGE 8

Page 3 Enhanced protective measures at customs in the EU Reported by: Mattias Karlsson Page 3 The latest change in UK copyright protection of industrial design – is it sufficient? Reported by: Anders Michael Poulsen Page 5 A story about the ancient Greeks, hot dogs and patentability of software in Europe Reported by: Lasse Henze Page 6 New decisions regarding supplementary protection certificates (SPC’s) in Europe Reported by: Sidsel Hauge Page 7 Linking away… Reported by: Mattias Karlsson Page 8 EU proposal to harmonize protection of trade secrets Reported by: Anita Gillior Page 8 Introduction of fee reductions for small entities before the EPO Reported by: Troels Peter Rørdam

Table of contents

Editorial Board: Niklas Mattsson, Mattias Pierrou, Sidsel Hauge and Peter Kenamets

e-mail: [email protected]: www.awapatent.comCopyright © 2014 Awapatent. All rights reserved.

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IntroductionScandinavian design is known worldwide for its quality, simplicity and modern minimalistic style. The main asset of a creative product is its IP. In Scandinavian countries, most industrial designs by well-known designers are considered to be original works, which therefore enjoy a copyright protection that expires 70 years after the life of the author. The same long-term protection applies in most other continental European countries.

The latest change in UK copyright protection of industrial design – is it sufficient?

However, until recently, the UK held a common law view that industrial design that has been pro-duced in multiple copies should not enjoy any special copyrighted protection, but merely be pro-tected for the standard term of protection of de-sign, which is 25 years. Through the Enterprise and Regulatory Reform Act, however, Section 52 of the UK Copyright, Designs and Patents Act 1988 (CDPA) has now been repealed, extending the copyright protection of such designs to the

length of the author’s life plus 70 years – equiva-lent to the protection available in Scandinavia1.

UK requirements for copyright protectionDespite this change, it is still debatable whether the long-term copyright protection of industrial designs will be the same in the UK and Scandina-via, primarily due to the nature of the statutes. Indeed, as the CDPA adopts a “closed list” approach, the industrial

Enhanced protective measures at customs in the EUON 1 JANUARY, the existing regula-tion on customs action (EC 1383/2003) was replaced by a new regulation (EC 608/2013). The new regulation expands the scope of customs applications and attempts to facilitate actions against counterfeit goods.

It should be noted that existing applications will be valid for their du-ration, i.e. until their expiry date. After that, it will not be possible to extend applications made prior to 1 January 2014; instead, a new customs application according to the new regulation will have to be filed.

The first new aspect is the expansion of the range of intellectual property (IP) rights that can be covered by a customs application. Applications can now cover trademarks, designs, copyrights and related rights, geographical indications, pat-ents, supplementary protection certificates for plant and medicinal products, plant variety rights, topographies of semiconductor products (new), utility models (new) and trade names (new).

As before, applications can be filed by the right-holder, or with the express consent of the right-holder. An application can either be national or cover the whole of the EU (in which case, it is restricted to EU rights only and no national rights). All applications are to be filed with the competent national customs au-thority. An application is valid for 12 months and can be renewed with at least 30 days’ notice prior to ex-piry. It is possible to add new IP rights upon renewal.

As well as a list of the IP rights to be covered by the application, additional information, typically information about authentic goods and informa-tion about past counterfeit goods, must also be provided. It is important to provide as much infor-mation as possible, as this will facilitate detection by the customs authorities of possible counterfeit goods and enhance the effectiveness with which they are able to protect rights.

In order to protect the importer, every application must be accompa-nied by an undertaking by the ap-plicant to assume liability in cases where the importer suffers wrongful damage. This may be the case if suspended goods are later found not to infringe the IP rights in question, for example.

Once an application has been filed, the customs authorities will monitor incoming goods and will, in cases of suspected infringement,

notify the applicant or an appointed representative. Such notification will, where appropriate, contain information about the nature and quantity of the goods, images of the goods, and information about the sender and importer of the goods.

Applicants who suspect that the goods consti-tute an infringement may request suspension of release of the goods awaiting further actions. Such suspension will be permitted for an initial period of ten working days (three days for perish-able goods). The customs authorities may extend that initial period by a second period of ten work-ing days (not available for perishable goods). Be-yond that, no further extensions will be granted.

During the period of suspension, the appli-cant must either come to some agreement with the importer or file a suit for infringement with the competent authority (usually the court). Failure to do so will result in the suspended goods being released.

An agreement between the applicant and the importer could, for instance, involve destruction of the goods, subject to agreement in writing by the importer. In some cases, failure by the importer to respond to notification by the customs authority of the decision to suspend the release of the goods or to object to the destruction of the goods may be deemed by the customs authority to constitute passive agreement to destruction of the goods.

If an application has not already been filed with the customs authority or where an existing application does not cover the specific IP right in question, a period of four working days from notification will be given in which to file a national application. In these circumstances, a simplified application may be filed, omitting otherwise necessary information regarding the nature of authentic goods. The draw-back here is that the application will then only be valid for that specific suspension. Therefore, we recommend always filing a complete application.

One novelty of the new EU regulation is that the procedure for so-called “small consignments” (a maximum of three units weighing no more than two kilograms) is now compulsory. The applicant may request the use of a special procedure for the destruction of small consignments on the applica-tion form. The effect of the procedure is that the applicant will not be notified at all upon suspen-sion of small consignments. Only the importer will be contacted and will be given a ten-day window to object to the destruction. If no protest is made, customs may interpret that as agreement to the destruction of the goods concerned.

It should be noted that the regulation does not apply to parallel imports between EU Member States, goods of a non-commercial nature in a traveller’s personal luggage or goods which are merely transiting through the EU (with no inten-tion of being released within the EU).

It is our belief that customs applications are an effective and important tool for detecting counter-feit goods. Our lawyers and patent attorneys are highly skilled in handling all matters concerning counterfeit goods, infringement and customs mat-ters. We will assist you at every step, from filing the application to taking proper action against suspended counterfeit goods. ■

Reported by:Mattias Karlsson, Attorney at [email protected]

Mattias Karlsson

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design must firstly fit into one of the eight categories explicitly mentioned in the Act

in order to enjoy copyright protection. The most relevant of these are “sculptures” and “works of artistic craftsmanship” (CDPA Section 4(1)).Although more iconic and famous industrial de-signs will probably enjoy copyright protection as “works of artistic craftsmanship”, the UK re-quirements make it harder for less iconic and more functional design from a lesser known de-signer to achieve copyright protection, as it re-quires the establishment of either “intended pur-pose of visual appeal”2 as a sculpture or “an artistic quality based on the intention of the de-signer”3 as artistic craftsmanship. According to UK case law, merely looking nice does not suf-fice, and originality in the design does not neces-sarily make the work artistic. Accordingly, the

UK requirements are interpreted much more strictly than the Scandinavian “originality” re-quirement, the level of which has been set rela-tively low by national courts. Consequently, if an item is essentially function-al and its artistic expression is constrained by functional considerations, it is unlikely to quali-fy for copyright protection in the UK4. This will not pose a problem for famous designs from e.g. Arne Jacobsen, Verner Panton and Poul Henningsen, as these designs are deemed to be artistic. But the higher requirements for protec-tion in the UK will impact lesser-known func-tional designs, should they become popular in the UK – at least after the term of design pro-tection has expired.

What about supplementary protection?The fact that the supplementary protection of-fered in, for example, the Danish and Swedish Marketing Acts is not relevant in the UK either, only increases concern for rights holders with-out (or with expired) design rights. The UK rules concerning passing off5, which do in theory pro-tect the get-up or design of a product, require that the design function as a badge of origin – something that case law shows is highly diffi-cult to establish6.

Even if this is established, there are other limi-tations to the protection of get-up through the passing off principle, as was shown in an Austral-ian case regarding the Bodum Chambord coffee plunger. Even though the product possessed

goodwill, there was still no in-fringement, as a distinguishing la-belling on rival products meant there was no consumer confusion or deception7.

Which law is applicable to web-based sales of counterfeit industrial designs?The above-described difference be-tween UK and Scandinavian pro-tection has resulted in a large num-ber of UK-based websites offering counterfeit copies of Scandinavian design articles.

Whether or not rights holders can apply Scandi-navian law – with the extended protection – to these cases of infringement has been highly de-bated. In the so-called “Donner” case8, the Euro-

pean Court of Justice stated that when a copyright-protected product is purchased online from a foreign website (in this case Italian), the laws in the country of delivery (in this case Germany) can be-come applicable, as the distribution to this country is seen as “making available to the public”. The additional requirement for making the seller re-sponsible is that the website in question specifi-cally targets the public of the state of destination. In this regard, the Court lists relevant factors as being choice of advertising materials, choice of lan-guage and opportunities for foreign distribution.

The same principle has been confirmed by the Higher Eastern Court in Denmark, in a case that specifically concerned the sale of Scandi-navian furniture designs from a UK website9. The court found the UK website to also be tar-geting foreign consumers, as it had a “.com” domain name and not a “.co.uk” domain name. Furthermore, the fact that the phone number listed on the website included the country code for the UK indicated that people from abroad could order the offered items as well. Finally, internet advertisements for the page could be found on Danish national websites. Conse-quently, Danish law was found applicable.

Regarding the question of court jurisdiction, Ar-ticle 5(3) of Council Regulation (EC) No. 44/2001 states that a person domiciled in a Member State may be sued in the courts of the place where the harmful event occurred or may occur; in other words, the place where the purchases can be con-ducted. The right holder enjoys sufficient copy-

right protection.The aforementioned case law shows that the differences in leg-islation and lesser protection in the UK can be overcome in cases where the infringing sale comes from a website that in some way is directed towards the consum-ers of a country with more com-plete copyright protection.

Harmonization at the EU levelThe current position shows that

UK legislators are of the opinion that there is a reason for the limited period of design protection, after which the work should be free for all. An expansion of copyright protection into the field of more common industrial designs would not sit well with the UK’s preference for free competition for more functional items.

The UK government has, however, acknowl-edged that the landscape is changing in view of the delivery of a number of recent judgments from the European Court of Justice, which have had the effect of harmonizing the conditions under which copyright protection applies10. These devel-opments may mean that more items will poten-tially qualify for copyright protection and, conse-quently, the impact of repealing Section 52 would be more significant.

Since the EU case law harmonizing the scope of copyright protection has not concerned indus-trial design specifically11, protection in the UK in this area remains different. In a global society, where cross-border trade continues to increase, it is my opinion that a level playing field is of high importance. Indeed, that is one of the main rea-sons for the extensive harmonization of protection for other IP rights, such as trademarks, patent rights, design rights and other types of copyrights. Accordingly, I believe that every party involved would benefit from harmonization of this area at the European level.

ConclusionAlthough the recent repeal of Section 52 of the CDPA has reduced the difference in copyright pro-tection between the UK and continental Europe, this seems to only concern more iconic and artis-tic industrial design items, which meet the stricter requirement for copyright protection established by the CDPA.

However, the long-term copyright protection of more common and functional industrial designs is only an issue after the expiry of any design rights. Therefore, this problem only concerns a smaller group of items, which, despite their common and functional nature, have become very popular and sustainable within the industry. Even so, this difference in copyright protec-tion is damaging for rights holders.

The fact that the supplementary protection offered in, for example, the Danish and Swedish Marketing Acts is not relevant in the UK either, only increases concern for rights holders without (or with expired) design rights. Anders Michael Poulsen

Anders Michael Poulsen

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1 This change was the outcome of an ongoing debate as to whether or not the former law complied with the requirements of the EU directives and conventions applicable to the UK, pri-marily the Term Directive (2006/116). This debate originated from the so-called Flos decision of the European Court of Justice (C-168/09).

2 See Lucasfilm Ltd v. Ainsworth, [2008] ECDR 17.3 See George Henscher Ltd. v. Restawhile Uphostery (Lancs)

Limited [1976] AC 64.

4 As confirmed in the Impact Assessment Report, Copyright protection for designs (IPO 15 May 2012), page 5.

5 The rationale for this is that “a man is not to sell his own goods under the pretence that they are the goods of another man”, cf. Perry v. Truefitt [1842] 6 Beav. 66; 49 ER 749.

6 See Hodgkinson & Corby v. Wards Mobility Services [1995] FSR 169.

7 Peter Bodum A/S v. DKSH Australia Pty Ltd [2011] 92 IPR 222, Full Court of the Federal Court of Australia.

8 C-5/11.9 Case B-3295-12 of 3 June 2013 (the so-called ”VOGA

2-case”).10 See Infopaq International A/S v Danske Dagblades Forening,

C-5/08, and Eva-Maria Painer v Standard VerlagsGmbH, C-145/10.

11 The Flos decision only concerned harmonization of the term of protection, not the requirements.

A story about the ancient Greeks, hot dogs and patentability of software in Europe Patentability of software in Europe: common fallacies Around 500 BC, everyone thought that the Earth was flat and floating in a pool of water (with the excep-tion of a few Greek philosophers). This theory was the result of first-hand observation; i.e., people could observe that the ground they were standing on was flat (most of time) and water seemed to sur-round all known areas of land. This is a classic example of a fallacy. A fallacy is defined as a mistaken belief based on unsound arguments. Another example of a com-mon fallacy is the planning fallacy. The planning fallacy occurs when a forecast is based on the best case scenario, thereby resulting in an overly optimistic plan. The term has, until now, mostly been used in the fields of economics and psychol-ogy, but this is about to change.

Recently, an appeal board at the European Pat-ent Office (EPO) got tired of hearing the same ar-guments being put forward by creative patent at-torneys in their attempts to argue for the patentability of computer-implemented inven-tions. Thus, in addition to refusing the main re-quest together with all auxiliary requests, result-ing in rejection of the patent application in its entirety, the board decided to put down in words three fallacies that are often cited by patent at-torneys arguing for the patentability of computer-implemented inventions: the technical leakage fallacy, the broken technical chain fallacy and the non-technical prejudice fallacy.

The specific Appeal (T 1670/07) was an ap-peal against a decision of the Examining Division

of the EPO to refuse a patent ap-plication. The invention related to a method of planning a shopping trip. In a nutshell, the method works by asking a user to specify a list of items that the user needs and, in response, generating an itinerary on a server and sending it to the user. An example of a list could be: one litre of milk, one pair of new shoes and two hot-dogs. An example of an itinerary could be: start by walking to the

hotdog stand and buying the two hotdogs (and eating them), then go to the shoe store and buy the shoes, and finally go to the supermarket and buy the milk.

The technical leakage fallacyUnder the European Patent Convention (EPC), it is established practice that non-technical features of an invention are not taken into account when assessing inventive step. In this case, the genera-tion of itineraries is an example of a non-technical feature* as it occurs all the time in the human mind, whereas processing of data on a server is, by its nature, technical. The applicant attempted to argue that the (alleged) non-technical feature,

i.e. the generation of the itinerary, interacts with the technical feature ”processing data on a serv-er”, thereby transforming the non-technical fea-ture into a technical feature. The board did not agree and termed the applicant’s argument “the technical leakage fallacy”. The board concluded that the intrinsic technical nature of the imple-mentation cannot leak back into the intrinsically non-technical nature of the problem, or, in other words, a non-technical element of a process does not become technical just because the process is carried out on a computer.

The broken technical chain fallacyDuring prosecution of the application, a document (D1) was cited as disclosing a method of finding a particular shop that can provide all the items on a

list. Continuing the above example, this would be a single shop that sells hotdogs, shoes and milk (and yes, such a wonderful place does exist). The applicant argued that a logistic problem was solved by finding a plurality of shops instead of just one shop. When the board reminded the ap-plicant that itineraries are non-technical, the ap-plicant replied that even if the itinerary itself is non-technical, it becomes technical when the user follows it, i.e.

Lasse Henze

Under the European Patent Convention (EPC), it is established practice that non-technical features of an invention are not taken into account when assessing inventive step. Lasse Henze

Almost every new functional design de-veloped is inspired by existing products.

This is only natural, and is accepted as long as the new design achieves its own identity. However, when considering the acceptance of direct repli-cas in the UK, I believe the opinion should be dif-ferent, as these must not be allowed simply by

referring to the preservation of free competition. The majority of industrial designs are complicat-ed; they entail numerous choices regarding lines, materials, colour, size etc. Therefore, it is rare that two pieces of industrial design – despite sharing a common function – will look identical by chance. An exact replica is produced when someone cop-

ies the original in bad faith. In these instances, one might ask: what is most important, free com-petition or fair competition? I prefer the latter. ■

Reported by:Anders Michael Poulsen, Attorney at [email protected]

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when the user actually goes to the hotdog stand, the shoe store and the supermarket.

The board did not agree and termed the above argument “the broken technical chain fallacy”. The board concluded that technical effects that might result from the user’s reaction to informa-tion cannot be used to establish an overall techni-cal effect because it is conditional on the mental activities of the user.

The non-technical prejudice fallacyIn the oral proceedings, the applicant argued that

the system of D1 only identified one shop, where-as the invention identified a group of vendors and gave navigation information about how to visit them. The applicant further argued that since there might be no single vendor capable of provid-ing all the items, the invention solved the problem of reducing the number of failed attempts to fulfil an order. The board did not agree and termed the argument “the non-technical prejudice fallacy”. The board concluded that effects of non-technical differences between an invention and the prior art cannot be used as an argument for why a skilled

person would not find the invention obvious. In my opinion, this decision does not change the

way the patentability of computer-implemented in-ventions is assessed in Europe. The decision should, instead, be seen as a summary of existing practice. That being said, knowing that the Earth isn’t flat (and remembering it) can still be valuable. ■

Reported by:Lasse Henze, European Patent Attorney

[email protected]

* A specific method of generating an itinerary, e.g. a specific method using fewer computational resources, or a specific method capable of solving complex problems with greater precision, could, however, be considered technical.

Does the Court of Justice of the Eu-ropean Union intend to develop a patentability criterion for supple-mentary protection certificates, or has the line of interpretation gone beyond the edge of reason? On 12 December 2013, the EU Court of Justice handed down decisions in three cases all relating to interpre-tation of Article 3(a) of Regulation (EC) No. 469/2009 concerning the creation of supplementary protec-tion certificates for pharmaceuti-cals (the Regulation): when is a product protected by a basic patent in force? These decisions consti-tute a second wave of decisions on this topic.

Article 3(a) of the regulation reads: “A certifi-cate shall be granted if […] (a) the product is pro-tected by a basic patent in force”.

Historically, some national patent and trademark offices (PTOs) have interpreted this point as “the ex-tent of protection of the basic patent” (e.g. the Ger-man PTO) while other PTOs have read this as “explic-itly claimed” (e.g. the Swedish and French PTOs).

But, everything should now be clear: a product is protected by a basic patent in force when it is identified or specified in the wording of the claims, when the claims relate implicitly but nec-essarily and specifically to the product and (or?) when the core advance claim of the patent is re-lated to the product. Confused?

When is article 3(a) fulfilled?In late November 2011, a first wave of decisions came when the CJEU ruled on the infamous Medeva case1. Shortly after, Medeva was followed by the first Georgetown case2, the Daiichi Sankyo case3

New decisions regarding supplementary protection certificates (SPC’s) in Europe

and further cases relating to similar issues, namely the interpretation of when Article 3(a) is fulfilled. From these decisions, the standard rule for interpreting Article 3(a) of the Regulation was established: a prod-uct is considered to be protected by a basic patent in force if the product is identified or specified in the word-ing of the claims.

There was little comfort in that an-swer, at least if you asked one of the referring judges from the UK. There-

fore, shortly after these decisions, the first referrals began to arrive on the desk of the CJEU again.

These included C-493/12 Eli Lilly and Company Ltd vs Human Genome Science Inc., the second Georgetown University case C-484/12, and Act-avis vs Sanofi C-443/12, all three of which were decided on 12 December 2013. Actavis Group C-577/13 has now been referred to the CJEU and is currently pending. All relate at least to the inter-pretation of Article 3(a) of the Regulation.

At the root of all these cases lies the question of how to deal with so-called combination prod-ucts (medicinal products comprising more than one active ingredient) and whether or not such combinations should be eligible for SPC or not.

In short, the questions that were referred in this round concerned determining whether something is “specified in the wording of the claims” if the claims relate to:

• One active ingredient which is functionally claimed (Eli Lilly vs HGS, C-493/12);

• Two active ingredients, of which one is func-tionally claimed (Actavis vs Sanofi, C-443/12).

It is clear that the CJEU is no fan of certain types of combination products. This is revealed in Act-avis vs Sanofi C-443/12, para. 30, where the Court states that it cannot be accepted that the holder of a basic patent …may obtain a new SPC each time he places […] a medicinal product containing [..] the principle active ingredient [….] and another active ingredient […] on the market.

The Court then goes on to discuss various sce-narios where the patent holder might enforce such SPCs: first the SPC for the principal ingredients which could be enforced against any combination and, next, the combination SPC which could be enforced against the specific combination and that combination with further active ingredients.

So what is all the fuss about? The referring judge may have tried to elicit the real issue out of the CJEU with his second question in Eli Lilly vs HGS, C-493/12 (para. 23):

“Are the criteria different where the product is not a combination product, and if so, what are the criteria?”

However, the CJEU completely ignored this question in its decision and only addressed ques-tions 1 and 3. That is a shame, because all these non-literal interpretations of the Regulation have in fact been made due to combination products. The issue is rooted in that the interpretation of Article 3(a) must be valid regardless of whether the product is a single or combination product.

Different way of answering questionsIt seems that the CJEU has chosen a different way of answering the questions asked in this round, and includes its view on which types of prod-ucts should be granted a supplementary protection certificate and which should

Sidsel Hauge

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Linking away…IS IT SAFE to provide hyperlinks to copyright-protected work?

This issue has been the subject of some debate over the years, al-though the reasons why may not be immediately clear, given that providing hyperlinks (clickable links) to other sources has been a practice employed on the internet more or less since its conception.

Nevertheless, a recent case (C-466/12) of the Court of Justice of the European Union (the CJEU) sheds some light on the legal aspects of everyday internet behaviour.

The matter originated from the Svea Court of Appeal in Stockholm, Sweden. The appeal fol-lowed the rejection by Stockholm District Court of the plaintiffs’ application for compensation from the defendant for providing a hyperlink to copy-righted material owned by the plaintiffs.

The copyright-protected material was an article published on the website of the Swedish newspaper Göteborgs-Posten. The defendant had provided ac-cess to the article via a hyperlink on its own website.

The short answer to the question posed at the outset is: yes, it is perfectly safe, under certain conditions.

If the copyrighted material in ques-tion is freely accessible by anyone, then you may indeed provide a hy-perlink to that material from anoth-er website. Simply put, in such cir-cumstances, you are not introducing “a new public” to that material.

These were precisely the facts of the case at hand, as the news-paper article in question was ac-cessible to everyone on the inter-net, without any restriction whatsoever.

Interestingly, it can be noted that the CJEU also stated that the same rules apply even if the copy-right-protected material is presented on the web-site containing the hyperlink and the visitor cannot distinguish that the material originates from an-other source (so-called embedded links).

The matter would, however, have been differ-ent were the copyright-protected material not freely accessible, notably if a password or other form of identification were required in order to view the content. Had that been the case, the act of providing a hyperlink directly to such restricted material would have circumvented the restriction technology and would have constituted “commu-nication to the public” in the eyes of the law. In

that case, a ”new public” would have been intro-duced to the material in question.

The specific facts of each case will always have a great impact on the outcome. Generally speak-ing, however, this CJEU case demonstrates that it is not against the law to make available copyright-protected material which is already publicly ac-cessible to everyone.

Nevertheless, a word of warning must be given. If you decide to use embedded links which do not make it clear to the visitor that the material actually comes from another source, although this does not consti-tute unlawful “communication to the public”, it may still be actionable through other avenues of the law.

So my advice is to be open with what you do. If you provide hyperlinks to protected works, make sure to do so in such a way that there is no ques-tion that you are not the originator of that material.

In addition, ensure you do not mistakenly make available material to which access is somehow re-stricted. For example, that would be the case if you provided access to an article that is only available to subscribers of a newspaper, magazine or the like. ■

Reported by:Mattias Karlsson, Attorney at [email protected]

not. The biggest problem now - and a way of increasing the diversification of national prac-

tice - is again found in Actavis vs Sanofi, C-443/12. Here, the CJEU has developed the criterion that

“… the core advance of the patent has to be related to the product (which is applied for)”.

What does that mean, and under what law should that “core advance” be assessed? One must assume that the European Patent Convention should play a major role in that assessment since most basic pat-ents originate from patents granted by the European Patent Office. Moreover, with a little imagination, the sentence “core advance” could correspond to all those technical features that provide a difference when the invention is compared to the closest prior art. Then, one would expect that at least what is claimed is a “core advance”. However, given the CJEU’s conclusion in Actavis vs Sanofi, C-443/12, this seems not to be the case. Therefore, it must be a new and different assessment, which seems to be little objective and more subjective. So much for har-monizing the application of law.

The fourth referral, Actavis Group, C-577/13, is

pending before the Court. It relates to post-grant amendments of the basic patent made to include combinations in the claims, for example by re-questing central limitation of the patent with the EPO. Such a strategy is a natural consequence of the Medeva decision. But until C-577/13 is de-cided, a new uncertainty hangs over this point.

Although these various decisions from 2011 and 2013 have brought little clarification to the field, some things can be summed up after all:• “specified/identified in the wording of the

claims” developed under Medeva et al. does not necessarily mean that the product must be explicitly claimed. Hence, the strict interpreta-tion applied by i.a. the Swedish and French PTOs is not necessarily correct. This may be supported by both Eli Lilly confirming that func-tional claiming is acceptable and the second Georgetown decision confirming that it is not necessarily what is explicitly claimed that is eli-gible for an SPC (the combination of HPV-6, HPV-11, HPV-16 and HPV-18 was found to be protected by the basic patent according to Arti-

cle 3(a), even though this specific combination is not expressly claimed in the basic patent);

• All the decisions are explicit in their formulation, stating “in circumstance such as in the main pro-ceedings”, “on the basis of the same basic pat-ent”, which must be interpreted as meaning that the decisions would not apply to circumstances where two different basic patents were relied upon (say for a single and combination product, respectively); this may become relevant in par-ticular for an SPC for a combination product.

In view of the above, it is a good thing that, from 1 April 2014, the EPO has returned to the old and more sensible rules for filing divisional applications, allowing them up until grant. This will at least give patent holders the additional possibility of filing di-visional applications for combination products. ■

Reported by:Sidsel Hauge, European Patent Attorney

[email protected]

1C-322/10 – Medeva 2C-422/10 – Georgetown University and Others3C-6/11 – Daiichi Sankyo

Mattias Karlsson

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EU proposal to harmonize protection of trade secretsONE IN FIVE EUROPEAN companies has experienced at least one attempt to steal their trade secrets in the last ten years, and the numbers are going up. Three out of four European com-panies consider their trade secrets important for competitiveness and innovative performance. These and other figures prompted the European Commission to propose, on 28 No-vember 2013, a draft directive on the protection of trade secrets.

A trade secret is generally de-fined as information of commercial or technical nature which has a business value as long as it is not disclosed to the public, and which the owner keeps confidential. The recipe of Coca-cola, the manufacturing process of Michelin tyres, and the technology and know-how used in Google’s search algorithm, are examples of trade secrets. Most companies nurse trade secrets, but not all follow the procedures necessary for legal protection.

The legal framework for protection of trade se-crets varies considerably across the EU. A few countries do not have any specific provisions on trade secrets in civil law: notably the UK and France, but also Belgium, Ireland, the Nether-lands, Luxembourg and Malta. The protection against misappropriation in these countries fol-lows from an interpretation of general rules on extra-contractual liability or common law. Such interpretations are not readily at hand for the common businessman venturing cross-border business. The other EU member states have leg-islation of misappropriation of trade secrets, but provide different scopes and levels of protection. This legal patchwork is considered an obstacle to sharing of business information across the EU. The gaps are often bridged by non-disclosure

agreements. The Commission’s at-tempt at harmonizing the protec-tion of trade secrets is welcome. It would also provide legal remedies that are not available under con-tract law.

Trade secrets have a number of advantages:• Keeping valuable information

secret can be done at a low cost • Policies and procedures for

managing trade secrets can be introduced easily

• Trade secrets may be the only or a cheaper alternative for protecting technical processes, service innovations, and new combinations of several well-known technologies

• Trade secrets may last forever

The draft EU directive suggests uniform rules for all member states. The definition of trade secrets and the prohibitions against disclosure are similar to the rules that apply in some contracting states today. However, the directive clearly spells out rules and exceptions, making the text of the direc-tive easy to follow for a non-lawyer – at least com-pared to the legal analysis often needed today. Apart from prohibiting unauthorized disclosure of trade secrets, the draft directive contains a num-ber of tools in the fight against misappropriations:• Civil liability for infringers• The power of the courts to prohibit further

infringement, and to order the return or destruc-tion of goods made through the misappropriation of trade secrets

• Safety measures such as preliminary injunctions • Confidentiality in court for trade secret information • Legal remedies against unjustified claims

EU Directives are implemented in the member states through national laws formulated and en-acted through each national parliament. It is re-grettable that the EU initiative did not take the form of an EU Regulation, which would have been directly applicable in the member states. There is a risk that the EU member states will formulate their national laws differently, attempting to ad-just the rules of the directive to their own legal culture. If so, implementation of the directive would indeed transform the current patchwork into a unified picture, however blurred by national variations. Hopefully, the national legislators will instead take the opportunity to clarify the legal framework for trade secrets by incorporating the text of the directive to a large extent, making the rules as harmonized as possible across the EU.

The EU Commission supposes that the direc-tive will be enacted not later than four years from now. It is of course impossible to say if this time plan will hold or even if the directive will be ap-proved by the EU Parliament and Council. The very far reaching directive proposal on confidenti-ality, which may bar a party from reviewing evi-dence or from attending court proceedings, will most likely be the cause for debate. Nevertheless, EU harmonization in one form or other will neces-sarily take place, considering the increasing ad-verse impact of theft of trade secrets. Companies that have already introduced a policy and proce-dures for managing their trade secrets will have an advantage when protection of trade secrets in-creases. Those companies will benefit, from day one, of the EU-wide protection of their valuable information. ■

Reported by:Anita Gillior, Attorney at [email protected]

Anita Gillior

Introduction of fee reductions for small entities before the EPOEFFECTIVE 1 APRIL 2014 the Administrative Coun-cil (AC) of the EPO has changed the rules for ob-taining reduction on certain fees charged in rela-tion to the procedure before the EPO [1].

The requirement that the applicant must be a resi-dent of or have principal place of business is in an EPC contracting state with an official language other than English, French or German or be a national of such a state who is resident abroad has not been changed.

However, the reduction obtainable has been in-creased from 20 % to 30 %. Now, who wouldn’t want to obtain such a reduction? Everybody, obvi-ously! However, not everybody is eligible for fee reductions. Thus, to find out whether you are eli-gible for a fee reduction, read on.

The AC has decided to introduce a fee reduc-tion regime resembling that of the US Patent- and Trademark Office by introducing specific

categories of applicants eligible for obtaining the reductions. Hence, not all applicants are eligible for the reduction.

The new part is that the applicant must also be a small and medium-sized enterprise (SMEs), a natural person or a non-profit organisation, uni-versity or public research organisation. To define these types of applicant, the AC has adopted the definitions given

9


Troels Peter Rørdam

References:[1] Decision of 13 December 2013 (CA/D 19/13) the Administrative Council of the European Patent Organisation: Link[2] Recommendation of the EU Commission dated 6 May 2003: Link[3] Official Journal of the EPO, 2/2014, A23: Link[4] Notice of the EPO dated 10 January 2014: Link

by the EU Commission in its recommendation of 6 May

2003 [2]. The definitions have also been outlined in a somewhat simplified manner in the Official Journal of the EPO [3].

As regards natural persons, non-profit organisations, universi-ties and public research organisa-tions, these types of entities are straight forward to identify.

Natural persons and non-profit organisations are considered self-explanatory. Universities are institutions of higher education and research under the relevant law. Public research organisations are institutes organ-ized under public law with the primary purpose of conduction research and development and of dis-seminating the results by teaching, publication or technology transfer and which must reinvest all profits in carrying out such activities.

As regards SMEs the definition used means that to qualify as an SME the applicant must fulfill three conditions, namely:a) employ fewer than 250 persons;b) have an annual turnover not exceeding EUR

50 million and/or an annual balance sheet total not exceeding EUR 43 million; and

c) no more than 25% of the capital may be held directly or indirectly by another company that is not an SME.

When calculating these numbers for a given enter-prise, any mother and daughter enterprises must be included subject to the somewhat complex rules of calculation given in [2].

If the applicant is an enterprise failing to fulfill

just one of the above-mentioned criteria, no fee reductions are avail-able any longer. Hence, for enter-prises, our recommendation is that if close to one or more of the above-mentioned limits pay the full fee just in case.

Furthermore, the new reduction of 30 % applies only to the filing fee and the fee for examination. Hence, fee reductions are no long-er available for the fees for opposi-tion, appeal, petition for review

and limitation/revocation.To obtain the reduction a declaration stating

the applicant’s status must be filed with the EPO when paying the relevant fee. This may be done simply by ticking a box added to the relevant ac-companying form.

And what if the applicant changes status during the pendency of an application, you may ask. For-tunately, changes in the status of the applicant occuring after the declaration is filed have no ret-roactive effect, and so the status of the applicant at the time the fee falls due applies.

It is also worth mentioning the EPO will per-form random checks of the declarations filed. If a declaration is incorrect, the associated applica-tion will be deemed withdrawn. Fortunately, in this case further processing is available to rein-state the application.

A further interesting point arises from the transi-tional provision which reads (author’s emphasis):(1) Rule 6 EPC and Article 14(1) of the Rules relat-

ing to Fees as amended under Article 1 and Ar-ticle 2 of this decision shall apply to European patent applications filed on or after 1 April 2014,

as well as to international applications entering the European phase on or after that date.

(2) Rule 6 EPC and Article 14(1) of the Rules relat-ing to Fees as amended under Article 1 and Ar-ticle 2 of this decision shall apply to oppositions, appeals, petitions for review or requests for limi-tation or revocation filed on or after 1 April 2014. (See Article 4 of [1] which is repeated in the later corresponding Notice of the EPO [4]).

This, it would seem, implies that for direct Eu-ropean applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, the 30 % discount on the examination fee will not be available.

Furthermore, as the new Rule 6 EPC as men-tioned enters into force on 1 April 2014 and the old one simultaneously ceases to have effect, it would further seem to imply that no Rule 6 EPC will be applying to these applications.

However, it seems fair to assume that the latter implication is not the intention of the EPO, and thus that old Rule 6 EPC will continue to apply for direct European applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, such that the old 20 % exami-nation fee reduction will still be available. This as-sumption would also seem to be confirmed by the EPOLine® online filing system, which asks for the filing date of the application and then, for these applications, guides the user to the possibilities of a 30 % or a 20 % examination fee reduction, no reduction not being an option. ■

Reported by:Troels Peter Rørdam, European Patent Attorney

[email protected]

www.awapatent.com

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