Monday, 13 June 2011

July JIPLP now online -- with an editorial on the wisdom of the crowd

Subscribers to the electronic version of the Journal of Intellectual Property Law & Practice (JIPLP) will be delighted to note that the July 2011 issue is already accessible to them in full. The contents of this issue can be viewed here, and non-subscribers can purchase access to individual articles and current intelligence notes if they so choose.

This month's editorial, "Time to Participate", endorses the peer-to-patent experiments currently underway in several countries and asks whether the wisdom of the crowd might equally benefit the registration process of other intellectual property rights, notably trade marks. You can read it below, in full:
"Time to participate

Two years after the completion of the first phase of its trial in the USA and launch in Australia, the Peer-to-Patent experiment is to be tried in the UK. The notion is simple: by involving members of the public in the process of identifying relevant prior art and, ideally, pinning it to specific claims in a published patent application, hard-pressed examiners will be assisted in determining whether the application should be rejected for lack of novelty or inventiveness or be allowed to proceed to grant. This is achieved by the wiki, which enables experts in the relevant who are distant from the patent-granting office to post their comments on a website which acts as a repository for comments, observations, and references to relevant material.

There were some initial rumblings of discontent from those who felt that Peer-to-Patent was misguided, that it exposed patent applications to attacks from competitors and disgruntled cranks, and that it undermined the role of the highly trained, skilled examiner. However, there is now a general if sometimes grudging sentiment that the experiment has succeeded. Patent applications within the narrow parameters of the experiment have been exposed to the vigilance and the intellectual prowess of members of the public who have helped to improve the quality of granted patents and who have assisted in making sure that some applications which did not deserve to proceed to grant were stopped in their tracks.

The experiment proceeds with caution. Apart from the three countries mentioned above, only Japan and Korea are committed to similar trials, but the great civil law jurisdictions of Europe, China, and India have yet to do so. Even if all the experiments and trials are successful, one does not yet sense that there is a momentum towards the adoption of Peer-to-Patent as the norm, in all countries and for all sectors of technology.

This Editorial speculates that, if the contribution of members of the public who possess the relevant skills is demonstrated to be of assistance to the processing and examination of patent applications, it might also be of assistance elsewhere. There is no better place for an experiment than the field of trade marks, in respect of oppositions based on a likelihood of confusion of similar or identical marks in respect of similar or identical goods or services.

It appears that there is an unwillingness to admit the truth—in the USA, in Europe, and elsewhere—which borders on self-delusion. In virtually every country, the legal test is relatively straightforward. However, attempts to rephrase or reformulate that language have resulted in the weaving of a web of ludicrously complex verbal formulae for seeking to define whether one mark is, in its commercial context, likely to be confused with another by consumers of the goods or services provided by the trade mark applicant's opponent. Office actions involving oppositions can be long, complex, and unbearably legalistic, taking years (in Europe sometimes more than a decade) to resolve.

At this point a little experimentation would be worthwhile and the EU, the main offender in terms of incomprehensible over-intellectualization of simple and intuitive concepts, would be the best place for it.

Take 100 randomly selected oppositions in which the Opposition Division, Board of Appeal, and General Court have differed as to whether there similarity has led to a likelihood of confusion. Show the marks at issue to two separate groups of relevant consumers. Members of the first group are given legal instructions representing the verbal formulations of the European Court of Justice, plus as much time as it wants, to determine whether there is a likelihood of confusion. The second group is given no legal instruction other than the text of the Community Trade Mark Regulation itself, plus no more than 5 minutes for their response. Compile the five sets of results (the three tribunals, the legally informed and the uninformed) and compare their results.

If there is little or no difference between the General Court's ‘right’ results and either of the consumer groups, one could well argue that the time has come to replace the former—formal, slow, and costly—with a wiki to which the latter could contribute. Or is it really more difficult to tell if two trade marks are confusingly similar than to pin prior art to a patent claim?".

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