Monday, 28 January 2013

More books to review

The Journal of Intellectual Property Law & Practice (JIPLP) is offering four further books for review.  As usual, offers are invited from prospective suitably-qualified reviewers.  If you would like to review one of these titles, please email Sarah Harris at sarah.harris@oup.com by not later than Thursday 31 January and let her know.  If you are not already a contributor to JIPLP and have not previously reviewed a title for us, can you please attach your CV or give a brief explanation as to why you feel entitled to review the book in question.

The books now offered are as follows:


Regulating Genetic Resources: Access and Benefit Sharing in International Law Author: Charles Lawson
Publisher: Edward Elgar Publishing
Hardback: 336 pages
Price £75 (online from the publisher £67.50)
Further information concerning this title can be found here
"This detailed and concise book surveys the international genetic resources laws applying in Antarctica, space, the oceans and seas, the lands, and the airspaces above land and water.

The well-structured analysis traces the evolution of these various schemes and their contributions to the comprehensive arrangements under the Convention on Biological Diversity, the International Treaty on Plant Genetic Resources for Food and Agriculture and the World Health Organization’s PIP Framework. The book details the different avenues and concluded positions, documenting a laboratory of legal approaches and possibilities.

Regulating Genetic Resources will be a valuable addition to academics, governments, NGOs and students in environmental and intellectual property law".
************************************ 
The TRIPS Agreement: Drafting History and Analysis (fourth edition)
Author: Daniel Gervais
Publisher: Sweet & Maxwell
Hardback
Price £225.
Further information concerning this title can be found here

"The most significant change is the addition of four early versions of the TRIPS text in the article-by-article analysis in Part II, with underline and strike-through to show the changes, which chart the evolution of the final text of the Agreement
  • The 1991 “Dunkel” text is incorporated in the commentary and compared to other versions (instead of being included in an annex) 
  • The early history of TRIPS as it was pre-negotiated outside of the General Agreement on Tariffs and Trade (GATT) is significantly enhanced 
  • The commentary on each article is updated and revised to reflect dispute-settlement panel reports and other developments, including the fate of the Doha Round later this year and relevant bilateral and regional negotiations. 
  • More on the role of the dispute-settlement mechanism".
************************************ 

Trade Dress: Evolution, Strategy and Practice 
Authors: Darius C Gambino and William L Bartow
Publisher: Oxford University Press
Paperback: 480 pages
Price £135.
Further information concerning this title can be found here
"Trade Dress: Evolution, Strategy, and Practice analyzes the differences between the two major types of trade dress - product configuration and product packaging - describes the standards of proof for each, and explains how these standards have been interpreted (and in some cases misinterpreted) by the federal courts. The book also reviews the evolution of trade dress in the United States and its recent emergence as an enforcement alternative. Finally, it offers practical suggestions on how best to utilize trade dress rights in protecting a client's intellectual property".
************************************ 

Thesaurus of Claim Construction (Second edition)
Authors: Stuart B Soffer and Robert C Kahrl
Publisher: Oxford University Press
Paperback: 2,304 pages
Price £235.
Further information concerning this title can be found here
"Claim construction is a major phase of a patent litigation where the meaning and scope of the claims themselves - the invention - is determined by the court. The outcome of this definition phase is crucial to the respective infringement and invalidity positions of the parties. The Thesaurus of Claim Construction directs practitioners to cases-and in contrast to searches on more general electronic databases, only those cases-in which claim terms have previously been construed, and further to the sources of the evidence used by past courts to construe the terms in dispute.

This two-volume Second Edition is updated to include over 3,500 additional entries, some of which focus on Biotechnology, Pharmacology, and Cleantech. Ordinary Skill is now included as a topic".

Dealing with peer reviews

I frequently receive emails from JIPLP contributors regarding the observations made by the peer reviewers who have assessed the suitability, or otherwise, of their articles for publication.

Never have I received correspondence from authors whose articles have been rejected outright, and only rarely do I hear from authors whose submissions have been immediately accepted.  Almost all this correspondence comes from authors who have received the message with which most submissions are met. This runs along the lines of: "the peer reviewer recommends publication, but suggests that you consider making (substantial) amendments ..."

When dealing with peer reviewers,
authors may need to cultivate a thick skin
The range of reactions is wide. Some authors gratefully incorporate the suggestions of the peer reviewer into their article; indeed, they occasionally even acknowledge their peer reviewer as the source of an idea which they articulate and develop.  Others are frankly abusive. "This reviewer doesn't know what he is talking about" is a not uncommon refrain (curiously, reviewers who allegedly don't know what they are talking about are always referred to as "he", although a large proportion of articles are reviewed by women). Some authors give a sigh and knuckle down to the often tedious work involved in restructuring articles, rooting around for proper references and citations and providing reasoning to support statements which appear to them to be so obvious as to require no justification.

 Occasionally, of late, I have heard from contributors who have contemplated the peer reviewers' comments, decided that they constitute an impassable barrier to publication and have simply abandoned their projects.

My observations on the various phenomena described above are as follows:

* Authors should never assume that the peer reviewer "knows nothing". Most are themselves accomplished writers and personalities in the field of intellectual property, and all are skilled in the art of constructive reading.  If they feel that something is missing from an article and say so, the very least that a contributor can do by way of response is to explain why that missing ingredient is unnecessary.  To say "well, it's obvious", or "anyone would have known this if they had read my previous article, which I refer to in my footnotes", is not an adequate response.

* As a class, and speaking in entirely general terms since there are some major exceptions, top intellectual property lawyers are generally better at giving criticism than in receiving it.  Added to this is the fact that, while a busy writer might have allocated time and resources for researching and writing a piece for JIPLP, he or she may have not made provision for the exercise of revising or rewriting.  Thus disheartened and placed under pressure of time, an author may be reluctant to press on and polish the submission in question.  This response is wholly understandable, but authors should counterbalance their sentiments of despondence against the anticipation of far happier feelings when their article, often substantially improved beyond the original, sees the light of day and, upon publication, attracts favourable comments.

* Peer reviewers, as a class, are neither more nor less omniscient than authors who submit articles for publication (many are actually contributors to the journal in their own right). If a peer reviewer suggests making a change but the author disagrees, it doesn't hurt to enter into a little constructive dialogue. Sometimes the peer reviewer will agree that the author is right. On other occasions the outcome is that the article is effectively metamorphosed into two articles, with the suggested amendments or additions becoming the subject of a second, independent article. There are many variations on this theme.

* On the whole, peer reviewers read far more articles than authors write. And, unlike authors -- who may be writing in order to promote a cause, a law firm or themselves, or in a sincere desire to explain or discuss an interesting point of law or practice, the peer reviewer is tasked only with the responsibility of quality control.  This task relates to the assessment of the text under review, not the author.  The peer reviewer has no personal interest in whether any article is published or not.

* It is the quality of the article with which the peer reviewer is concerned, without reference to the reputation of the author.  Just as a world-class footballer can have a bad game or a famous actor can fluff his lines, so too can a distinguished intellectual property practitioner, professor or pundit create a piece that does not reflect that person's quality. JIPLP will ultimately be judged by its readers on the strength of its content, not the celebrity of its authors.

* In every journal, regardless of the rigour of the assessment process, there are bound to be instances of uneven quality of content.  Peer reviewers, like authors, can miss important points or fail to appreciate weaknesses in a presentation. Sometimes the non-availability of relevant source materials, the haste to get a particularly topical article into print or the difficulty of identifying contributors from certain jurisdictions may affect the substance or readability of an article too. However, JIPLP does its best to provide a product of consistently high quality.

As usual, readers' thoughts and comments are welcome.

Saturday, 26 January 2013

Best IP judgment never written: the runner-up

Last Sunday the jiplp weblog published David Flynn's winning entry in the "Best IP Judgment Never Written" competition -- and now we are delighted to publish the entry which came second -- Robin Fry's report on the might-have-been judgment in The Estate of Publius Ovidius Naso v William Shakespeare.  Congratulations, Robin -- and thanks for sharing your legal expertise and your erudition with us!
JUDGMENT 
Mr Shakespeare is a writer of 'popular entertainments'.  These are produced in 'Southwark' which is a disputatious parish of Surrey, my colleagues on the bench often reporting to me the licentiousness there.  I, however, put such matters out of my mind. 

A plaintiff's bill has been laid by the executor of the estate of Publius Ovidius Naso writing under the name 'Ovid', contending that the deceased's 'Pyramus and Thisbe' has been copied by Mr Shakespeare in his 'Romeo and Juliet' and thus infringes Mr Ovid's common law copyright. 

Evidence has been given (exceeding 217 folios in length) as to the similarities in the plot, structure and language between the two works. I do find that Romeo and Juliet is a striking representation of the other. 
The giving of such evidence has been constantly interrupted by brawls between aficionados of Mr Shakespeare's work and hierophants for, inter alia, Christopher Marlowe, the Earl of Oxford and Sir Francis Bacon who assert that Mr Shakespeare has in fact stolen their work and they are the writers of such work. 

 I put that all to one side and find that the fact that a work may be a piratical copy of another does not subvert the copyright in the first work nor does it render the writer or publisher in any way exempted from actions brought against them. Cary v Faden (1799) distinguished. 
Mr Shakespeare says that there are many similar stories, pointing to a manuscript of Mariotto and Gianozza by Masuccio Salernitano published in 1476 and a book of 'The Thirty Six Dramatic Situations' by Georges Polti. He dramatised to the court (with actors) the 29th Situation  ('The Beloved is the slayer of a Kinsman of the Woman who loves Him' ). His peroration continued with an ambitious justification of copying under Ecclesiastes 1.9 'nihil novi sub sole" ("there is nothing new under the sun") and then proceeded to recite his 59th Sonnet. 
Further, he points to numerous other infractions of the same story by Leonard Bernstein, Esq., in his futuristic 'West Side Story' and an 'electronically displayed' version by the quaintly named Mr Baz Lurhman. He maintains that Ovid lost his rights by failure to act, laches and dilution. I find nevertheless that each single performance or reproduction is a fresh tortious act. As to dilution, this has never been a part of copyright law: in my judgement, copyright can never be lost or invalidated by inaction. 
I addressed earlier the locus standi of the estate of Mr Ovid under the reciprocal copyright provisions between Constanța and England. That was conceded by the defence. 
However the plaintiff admits that no probate has been yet obtained in England and defendant so responds that the current executor has no proven title to sue. I have regard here to the principles set out by the Lord Chancellor in Spottiswode v Clarke namely that 
'The first question is to be decided is as to the legal right, and if the court doubts about that, it may commit great injustice by interfering until that question has been decided''. 
I therefore order this case adjourned sine die until the estate has obtained probate. 
Naturally one wishes to make advantageous use of such temporary interruption to these proceedings.  There have been produced to the court so-called 'VIP entry platinum cards' to the Globe Theatre which will allow me, and such of counsel here present, on occasions to attend at such theatre weekly until the next return date. 
Scrivener's note: Court clerk interrogates diary. Date six years hence announced. Consternation in court. Tipstaff summoned. Alleged trespass to person as Judge is kissed by a lady. 

Reported by Robin Fry, attorney-at-law

Thursday, 24 January 2013

2014 —The perfect IP storm? February guest editorial

The guest editorial for the February 2013 issue of JIPLP is written by Gill Grassie, a seasoned Scottish IP practitioner and a partner in the law firm Brodies LLP.  While much discussion is taking place in the United Kingdom about the UK withdrawing from the European Union, a contrasting debate has been running in Scotland as to the extent to which that country may continue to be part of, or benefit from, the European Union if it should withdraw from the UK.  In this context, Gill's editorial, which we reproduce below, is particularly apposite:
"2014 —The perfect IP storm? 
Much has been done over the years to achieve a globally harmonized IP system and there are many continuing initiatives with this aim. The Patent Prosecution Highway, the launch of the Cooperative Patent Office as a joint project between the European Patent Office (EPO) and United States Patent and Trademark Office (USPTO) on 1 January 2013 and the America Invents Act are just some examples of these.

Yet another is the proposed introduction of the much debated European Unitary Patent (EUP) and its central, regional and national courts on 1 January 2014. It will not displace the national patent systems in place throughout the EU but the plan is for the current European Patent system to be phased out with an initial transitional period of 7 years. The new system will exclude Spain and Italy who are challenging its legality under EU law. Given the ongoing euro-zone economic crisis there is a real question as to whether the EU will itself remain intact by 2014. Perhaps that possible break up is now more of a threat to the birth of the EUP than that legal challenge or the considerable opposition it has faced to date from representatives of the patent and legal profession and business community. Assuming that the EUP does come into being in 2014, the landscape of patent law in Europe will have changed dramatically.

Furthermore, 2014 may also herald a big change on a much smaller scale for the UK as a member state of the EU. In mid-October of 2014 (the 700th anniversary year, not by coincidence, of the Battle of Bannockburn) Scotland will vote on the issue of its political and constitutional independence from the UK. It is difficult to predict the ultimate outcome with 18 months or so still to go but it does give rise to the possibility that Scotland will separate from the UK and thus also from the EU. If so, what impact could this have on Scotland as well as on the overall UK and EU IP regimes? Would Scotland be kept out of the EUP as well as the current UK national registered IP systems? These types of issues have not so far been part of the independence debate and despite the wealth of IP rich industries in Scotland, it is unlikely that intellectual property will be a central plank in the respective for and against campaigns.

The European Commission's president Manuel Barroso's view is that an independent or separate Scotland will not warrant automatic membership of the EU and Scotland would be required to re-apply by making a request for accession. Assuming that is so, in the absence of a negotiated agreement in advance, could there be a hiatus in any IP protection by way of currently available EU IP rights? These include Community trade marks (CTMs), Community designs and existing European patents. It seems unlikely that these rights, if already existing, could be extinguished insofar as they covered Scotland. If they were, this would create a period of (temporary or even on a permanent) amnesty and make Scotland a potential haven for infringers to make hay while the sun shines. However, it will mean that current applications for these could be at risk and of course there could be no new applications made which designated Scotland until the constitutional position was sorted out.

Also irrespective of whether an independent Scotland subsequently becomes a separate member State of the EU, it would still be legally separate from the rest of the UK. Thus would the relevant UK wide legislation on IP rights such as patents, trade marks, copyright and design right still be applicable in Scotland? Again it is likely that existing rights would remain in play but future applications and possibly even those which are pending for these could be extinguished.

At a time when the trend is for globalization of economies and IP rights, the prospect of a UK divorce is ironic especially when the UK National patent system may increase in popularity as businesses may start to favour national patent systems over the EUP due to its perceived disadvantages. For example, to avoid losing entire patent coverage for the whole of the EU in one central validity attack. If this turns out to be the case for a business wishing to protect its IP in Scotland, these UK wide rights may no longer be available to it.

Of course if separation comes about, irrespective of whether Scotland then remains part of the UK (and the EU) for IP purposes or not, it will have its own ability to bring additional intellectual property rights into existence. These could well bolster its IP regime. One area giving food for thought is unfair competition. A new law on this could potentially offer a considerable advantage to businesses operating in Scotland which so often find the current UK law of registered trade marks and passing off frustratingly depriving them of any ability to prevent look-alike, copycat products and services taking advantage of their considerable investment and innovation.

All of these issues are important ones not just for Scotland and its economy/business community but also for businesses in the rest of the UK, the EU and even further afield who could all stand to lose out in the absence of an effective IP system in Scotland whether only temporary or not. Certainty about the shape of the future Scottish, UK and EU IP regimes would be beneficial well in advance of any division of constitutional ties with the rest of the UK.

In conclusion, 2014 is shaping up to be an exciting year on the IP front EU-wide and closer to home in the UK. A new pan-European patent system and the possibility of an independent Scotland with many IP questions remaining unanswered, are just two of many potential scenarios. It is worth keeping on top of the debates as they evolve and is this the calm before the perfect storm?"

February JIPLP now live

The February 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available online.  Subscribers to the online edition can access it immediately in full.  Non-subscribers can purchase short-term access to the current issue of the journal if they click here and navigate towards the features of their choice.

Usually, the announcement of the publication of each issue is accompanied by the reproduction full of the Editorial for that month (don't worry: Gill Grassie's Guest Editorial will be posted soon, as a stand-alone item). This month, for a change, we are posting the journal's contents so that you can get an idea of the spread of topics that appear in JIPLP. We hope that this will encourage more new authors to come forward -- and readers too!

This month's contents look like this?


Guest Editorial

Current Intelligence

Practice Point

Articles

From Grur Int.

IP in Review