Thursday, 24 January 2013

Secondary protection of innovations: seminar report

"Secondary protection of innovations", the first of the two seminars organised to celebrate the cooperation programme shared by JIPLP and leading German intellectual property title GRUR Int., took place this Tuesday afternoon. The venue was symbolic of Anglo-German cooperation, being the London office of Freshfields Bruckhaus Deringer -- a law firm whose identity has been strongly influenced by the traditions of those two jurisdictions.

In these thoroughly congenial surroundings the battle-lines were drawn between those who advocated the adoption of a sub-patent system for protecting innovations as utility models, based on the German concept of the Gebrauchsmuster, and those who doubted both its objectives and its ability to achieve them.

Opening the case in favour of the much-discussed German right was Wolrad Prinz zu Waldeck und Pyrmont (right), an IP/IT genie who, released from the distant confines of Freshfields' Düsseldorf office, had the international audience spellbound with his advocacy of the right in question. In his paper, "Secondary protection of innovations in Germany - what are the advantages?" (visuals available here), he explained not so much the history of its right as its pedigree. Wolrad then described the flexibility, economy and utility (which of course we would naturally expect from a 'utility' model right) in terms which made us wonder why this right was not the natural first choice for any small, medium-sized or even giant enterprise intent on securing maximum punch for minimum cost.

Then came the turn of Karsten Koeniger (left), fresh from the office of Hamburg-based IP specialists  Harmsen Utescher. Delivering his paper (visuals available here), "Secondary protection of innovations in Germany: is there another side of the story?" he strove to undermine Wolrad's case. Without seeking to dispute or contradict his adversary's paper, he based his approach on the technique of measuring German utility model protection against its stated aims and in seeking to measure the distance between aspiration and actuality. Karsten's conclusions: the protection was no protection, given the reluctance of courts to grant any interim injunctive relief to protect an unexamined right; the economies were false economies and, faced with a choice between adopting a Gebrauchsmuster system or improving the tried and tested patent system, the latter was by far the more preferable.

The audience liked it too ...
It was then the turn of the panellists.  Patent attorney Darren Smyth (EIP), litigation lawyer Ian Karet (Linklaters), competition/IP expert Chris Stothers (Arnold & Porter) and scholar Timo Minssen (University of Denmark) gave their reflections on the presentations, following which the audience of some seventy people demonstrated their knowledge of the issues and shared their experiences too.   The conclusion? The German system is neither as good as some of us had hoped nor as bad as some of us had feared -- and, on account of the length of time in which it has been used, it is ripe for some evidence-based research into its legal cogency and commercial efficacy.

JIPLP thanks the GRUR Int team for making the occasion so memorable and  looks forward to publishing the text of both Wolrad's and Karsten's papers in due course.

The second JIPLP-GRUR Int. seminar, which will be held in The German Patent and Trade Mark Office in Munich on 6 March, covers the new European Patent Package.  It is already fully booked.

1 comment:

  1. Jeremy did anybody mention the GBM Abzweigung (cleaving a GBM off of a pending application at the EPO)? The EPO case continues on the back-burner while the GBM goes rapidly to issue, with narrow claims of your choice that have been tempered by EPO prosecution and are tuned to the characteristics of the competitor's product in view. Three months after the spin-off, the GBM has issued and can be vigorously asserted.

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