Showing posts with label authors' take. Show all posts

The Authors' Take - Trademarking “COVID” and “Coronavirus” in the United States: An Empirical Review

Trademarking “COVID” and “Coronavirus” in the United States:

An Empirical Review

by Irene Calboli

Since its global debut in early 2020, the COVID-19 pandemic has led to a tsunami of trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. In this Article, I examine the applications that have been filed with the United States Patent and Trademark Office until the end of 2020. In particular, I present a comprehensive set of data regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period. Based on these data, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic-related products, but also for unrelated and promotional products. Individuals and small businesses were the largest groups of filers, and over two thirds of the applications were based on intent-to-use rather than use in commerce. The number of filings closely mirrored the development of the pandemic during the various months of 2020. In addition, when compared with previous filings for signs including terms related to past sensational events, including pandemics, the numbers of “COVID-19 related” applications were much higher than any previous filings. This confirms the catalyst effect of the COVID-19 pandemic also on the trademark application system, even though a large number of these applications may ultimately not be registered as several signs may be found to be generic or descriptive—in particular for medical and pandemic-related products—or deemed not to function as trademarks—for example if they are used as ornamentations on promotional products. The signs may also be found to be deceptive if they imply a specific cure or solution, when this may not be accurate. Still, the data presented highlight several interesting aspects of the phenomenon of “filing sensationalism,” even though it remains difficult to understand what triggered this large number of filings precisely with respect to the COVID-19 pandemic--a time that we all hope to put behind in the nearest future.

The Authors' Take - Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum

Meet My Artificially-Intelligent Virtual Self: Creative Avatars, Machine Learning, Smart Contracts and the Copyright Conundrum

by Eugene C Lim

Artificial intelligence (AI) technologies have triggered a dramatic paradigm shift in how we conceive of authorship and creation. Intelligent machines, such as those powered by the new GPT-3 neural network technology, are capable of generating human-like creative expressions, composing text, performing translations and producing other creative outputs once thought to be beyond the ability of computers.

This article focuses on intelligent applications (or “creative avatars”) that are programmed to replicate the style of a human author (such as Shakespeare, Rembrandt or J.K. Rowling), and the regulatory challenges flowing from the generation of such works. The challenges surrounding the production of such content relate not only to questions of ownership and authorship, but extend to issues of how, if at all, these works can be treated as copyrightable subject matter.

While much of the literature in the field has proposed significant modifications to traditional copyright rules to accommodate the emergence of AI-generated content, this article highlights the limitations of relying on copyright law in regulating rights in AI-generated derivative works. In developing this argument, the article adopts a novel approach by suggesting that interim solutions, in the form of alternative business and technological models, can be found outside of the “copyright box”. In particular, the article proposes a consent-based contract framework, featuring digital watermarks, Creative Commons licences and blockchain technologies, as part of an interim solution to regulate rights in relation to works generated by “creative avatar” programs. It is suggested that existing contractual and technological tools, drawn from current practices in the software licensing and cryptocurrency industries, can be useful to stakeholders in the AI industry, especially in the early years of emerging neural network technologies. In this regard, the article offers a utilitarian justification for the proposed consent-based framework by explaining how it can help to facilitate the dissemination of AI-generated derivative works in the absence of clearly-defined copyright rules, and promote the eventual enrichment of the public domain.

The Authors' Take - European Court of Human Rights rules that collateral website blocking violates freedom of expression

European Court of Human Rights rules that collateral website blocking violates freedom of expression

by Elena Izyumenko

In a decision in the case of Vladimir Kharitonov v. Russia rendered in June this year, the European Court of Human Rights (ECtHR) has held that an incidental blocking of the applicant’s website as a result of a State agency’s decision to block access to another website which had the same IP address as the applicant’s website violated freedom of expression.

The article exposes the different stages of the Court’s analysis that allowed it to reach this conclusion and assesses the practical significance of the case for copyright enforcement online. With regards to the latter, specifically, the ECtHR had already held in March this year (in the case of Pendov v. Bulgaria) that the limited functionality for a significant period of time of the applicant’s cultural website that had resulted from criminal copyright enforcement proceedings against third parties violated the applicant’s freedom of expression.

The Court of Justice of the European Union had likewise confirmed previously, in a much discussed judgment in UPC Telekabel, the need to assess the effects of the measures blocking copyright-infringing websites upon the fundamental rights of those affected, including the Internet users’ freedom of expression and information.

This is not to say, though, that the ECtHR is necessarily to provide for substantially more extensive guidelines in the area of website blocking for copyright enforcement beyond those already elaborated in Luxemburg and Strasbourg. It worth noting that Kharitonov concerned one specific, particularly intrusive type of website blocking – IP address blocking – that the courts in a number of European jurisdictions had already ruled disproportionate. With regards to other, less aggressive forms of blocking, the ECtHR might feel less at ease to intervene.

Overall, however, the general possibility to test website blocking practices from the human rights perspective can only be approved of, and the recent Kharitonov judgment certainly adds weight to this possibility.

The Authors' Take - The rainbow flag between protection and monopolization: iconic heroine or damsel in distress?

The rainbow flag between protection and monopolization: iconic heroine or damsel in distress?

by Andrea Rossi

Last year the Stonewall Riots’ 50th anniversary was celebrated. Those demonstrations marked the beginning of the fight for the recognition of the rights of coloured transgenders, homosexuals and various other outcasted minorities. Fifty-one years later, the process for social acceptance of same-sex relationships is still ongoing. During this time, the LGBT community has adopted a unique representative symbol, which has acquired worldwide recognition: the rainbow flag.

Recent events have shown how the issue of social discrimination is still rooted within modern society and is yet fiercely combated by various movements that adopted different marks to identify themselves, such as the #MeToo or the #BlacklivesMatter supporters. Similarly, the LGBT community and its affiliates have adopted and used, for more than half a century, the rainbow flag and its colourful pattern to stand in defence of the LGBT community’s rights.

The article tackles the type and level of protection that intellectual property law offers to such well-known LGBT Pride symbol under the EU and US legal framework. The flag was designed to be freely used. On the one hand, this allowed a global diffusion and identification of the LGBT community under one emblem. On the other hand, such free use also allowed various misuses of the rainbow design in social and economic settings. Furthermore, the Pride symbol’s lack of protection endangers the distinctive meaning the flag has acquired (for example, in Italy the “peace” flag features an inverted rainbow pattern), considering also that new variations of the rainbow flag have been introduced to include different minorities (for example, the flag designed by Daniel Quasar in 2018).

The article suggests that a possible solution to safeguard the flag’s inherent distinctiveness may consist of an official, international recognition that would enhance its protection, representative meaning, and endurance for the next fifty years and more. The current damsel in distress, who has fought for many years as a valiant heroine, may have the opportunity to returning to being the iconic and powerful symbol it used to be.

The Authors' Take - No Time to Laugh – The Parody Defence is Unavailable under Hungarian Copyright Law

No Time to Laugh – The Parody Defence is Unavailable under Hungarian Copyright Law

by Péter Mezei

Hungary is one of those EU Member States that did not implement the parody exception of the InfoSoc Directive. In the first ever court of appeals level decision on parody (reference No 8.Pf.20.424/2019/5), the Municipal Court of Appeals has confirmed that the parody defence is unavailable under Hungarian copyright law due to the lack of an express statutory recognition.

The plaintiff holds the IP rights to the Superman character. The defendant (HVG) is the publisher of a weekly journal. The 18 September 2016 issue was published with an image imitating Superman’s ‘S’ logo as a dollar sign ($) and the character had a big fat belly popping out of his shirt. The title of the image was ‘Strawman – Sham Billionaires and True Wealth’ (‘STRÓMAN – Álmilliárdosok és valódi vagyonok’). This was a reference to the article that discussed the enrichment of businessmen, who were closely connected to the innermost political circles. The plaintiff claimed that the use of the Superman character was an unauthorized adaptation of the Superman character.

The Municipal Court of Appeals upheld the trial court decision by confirming that the original work’s main characteristics remained noticeable, while the secondary work differed from the original one. Those differences were not aimed at distinguishing the two works, but rather sought to create a contraposition of the two works to reach critical, humorous effects. The court concluded that the cover image lacked any individual, independent meaning, and failed to keep the necessary distance from the source material. The court also noted that the defendant would be unable to escape liability based on parody, as the Hungarian Copyright Act includes no such exception.

The court seemed to misinterpret parody as a concept. On the one hand, it appeared to misunderstand the purpose of the cover image. HVG did not dispute the message of the Superman character, but rather criticized corruption. On the other hand, the court appeared to interpret the obligation to keep distance from the original work and the requirement of independent, individual meaning in a pure formalistic sense: are the two images visually different? This logic is flawed. First, it unnecessarily limits ‘parody’ to ‘style parody’, and so it empties the concept of parody as ‘style’ has never been protected by copyright. Second, it disregarded the CJEU’s ruling in Deckmyn. There, the CJEU favoured ‘parody with’ over ‘parody of’. HVG’s cover image, however, seems to fully comply with the ‘parody with’ concept. Based on the very images at issue in Deckmyn, we can also argue that “noticeably different” shall not be limited to formal differences; it also includes noticeably different meanings.

The ruling itself is nevertheless correct in its outcome as the parody exception is not codified in Hungary. Courts are not in a position to introduce new laws either. This means that there is no way under the effective Hungarian laws to publish a work that evokes an existing work while having a noticeably different meaning from it in order to constitute an expression of humour or mockery.

All these concerns might be the past soon though. Directive 2019/790 on copyright in the Digital Single Market (CDSM-Directive) obliges Member States to mandatorily implement the parody, caricature and pastiche exception with respect to user-generated content that fall under the scope of Art. 17(7) second sentence (b) therein. The draft proposal for the implementation of the CDSM-Directive proposes to introduce a parody exception with a general scope into Hungarian law.

The Authors' Take - Communication to the public online: protecting copyright or breaking the Internet?

Communication to the public online: protecting copyright or breaking the Internet?

by Andrew McWhirter

The exclusive right to communicate a copyright work to the public under Article 3(1) of the InfoSoc Directive has been considered in detail by the CJEU. In the context of online communications, the decisions of the CJEU illustrate a tension between the interests of copyright owners and the right to access information and freedom of expression online.

The leading CJEU case of Svenssonv Retriever Sverige AB [2014] 2 WLUK 451 concerned hyperlinking to copyright works online without the specific authorisation of the copyright owner. The CJEU held that by consenting to the work being freely accessible online, a rights holder had authorised worldwide communication of that work provided the subsequent communications took place by the same technical means, namely online. Any hyperlink to the work was not making the work available to a new public and so was not copyright infringement.

In the recent case of WarnerMusic v TuneIn Inc [2019] EWHC 2923 (Ch), the High Court considered the right of communication to the public in the context of a radio aggregator website which hyperlinked to streams from over 100,000 radio stations worldwide. TuneIn's website relied on hyperlinks to the streams from the radio stations. The streams were freely available online and so could theoretically be accessed by anyone worldwide provided that they knew where to look. However, the TuneIn site was very different to the type of hyperlinking considered by the CJEU in Svensson. The TuneIn site allowed its users to access streams either through a search function, through recommendations based on the user's listening history or by searching by artist. Warner Music and others claimed that this was copyright infringement.

TuneIn argued that any decision that went against it would risk breaking the Internet as hyperlinking, particularly in search engines, is crucial to the functioning of the Internet. The copyright owners argued that a decision in TuneIn's favour risked undermining copyright. The Court engaged in a detailed analysis of the CJEU authorities and determined that the majority of TuneIn's activities did amount to copyright infringement. The primary reason for that was that TuneIn was not hyperlinking to a work in the traditional sense and had a much more active role in recommending radio streams, and therefore the copyright works, to users.

This article examines the reasoning in the TuneIn case with reference to the CJEU authorities and asks whether the reasoning does in fact "break the internet" as suggested by TuneIn.

The article concludes that the nature of TuneIn's activities was clearly very different to the type of hyperlink relied on by search engines. Instead of simply linking to a work, TuneIn aggregated, simplified access to and recommended streams for its users.

However, the court also concludes that by making a work available in a different territory, a new public is reached. There is difficulty with this conclusion given the worldwide nature of the internet. A linker would need to be sure that the rights holder had authorised their work to be published in the particular territory. Ascertaining the rights holder's intention would be extremely difficult, particularly where the work is freely accessible online without any technical territorial restriction. The article suggests how this could be mitigated to ensure that there is no chilling effect on freedom of expression or access to information online.

The Authors' Take - How dynamic is a dynamic injunction? An analysis of the characteristics and the permissible scope of dynamic injunctions under European Law after CJEU C-18/18 (Glawischnig-Piesczek)

How dynamic is a dynamic injunction? An analysis of the characteristics and the permissible scope of dynamic injunctions under European Law after CJEU C-18/18 (Glawischnig-Piesczek)

by Berdien van der Donk

In its judgment in C-18/18, the Court of Justice of the European Union concluded that injunctions including not only future identical infringements, but also similar infringements to the infringement in the initial proceeding do not constitute a general monitoring obligation and, as such, are not incompatible with the prohibition in Article 15 of the e-Commerce Directive. Such broad-scoped injunctions have been on the rise as they have proven to be an effective enforcement tool to tackle online infringements.

This article focuses in particular on the concept of dynamic, which are ordinary injunctions with two possible dynamic add-ons: a dynamic-content and a dynamic-infringer part. Unlike their general counterparts, the content of a dynamic injunction is subject to change. All this can increase the enforcement possibilities for online infringements, as general blocking injunctions are easy to circumvent by infringers through re-uploading the infringing content to IP addresses or domain names that fall outside the scope of the injunction.

Based on the primary and secondary Union law limitations, the article concludes that dynamic injunctions to prevent infringements of intellectual property rights can include an obligation for an online intermediary to block access to active infringements and to monitor its service for and block access to all future identical infringements to these initial infringements, irrespective of the uploading party. Similar content can be included when the injunction properly defines such content, and the injunction does not effectively oblige an online intermediary to carry out an assessment of the infringing nature of the content. To avoid such an obligation to carry out a legal assessment of the content, and based on the way dynamic injunctions have been successfully applied in several Member States of the European Union, it is recommendable to require similar infringements to be blocked only after a rightholder’s notification. All this would be necessary to prevent the over-filtering of legal content and unduly transfer the burden of identification from the rightholder to the receiving intermediary.

The Authors' Take - Fashion Piracy and Artificial Intelligence - Does the New Creative Environment Come with New Copyright Issues?

Fashion Piracy and Artificial Intelligence - Does the New Creative Environment Come with New Copyright Issues?

by Heidi Härkönen

The development of artificial intelligence (AI) creates challenges both for the copyright system and for the fashion industry. Nowadays and especially in the future, creative outputs by fashion designers are being challenged by AI-generated works. This is likely to create new copyright issues for an industry that is already notorious for its complex copyright environment. What is more, the approach that copyright law takes towards AI-generated fashion designs might have an effect on the sustainable development of the fashion industry.

The key copyright challenge that the fashion industry faces is related to fashion designs passing the originality threshold and hence qualifying for protection. Because the functionality of a garment dictates its design usually at least to some extent, it is rather difficult for fashion designs to pass the originality threshold. In many cases, this reduces the legal risks of copying fashion designs. As long as the modern fashion industry has existed, it has struggled with copying, imitation and knock-offs. Hence, this paper has a particular focus on copyright infringement issues that the fashion industry is likely to face due to the increasing use of AI fashion designers.

The lack of protection has helped especially fast fashion companies to knock off popular designs of others. Fast fashion – meaning cheap, mass-produced, low quality garments that imitate popular designs created by, e.g., high fashion houses or indie designers – has played a significant role in driving the fashion industry into an environmentally catastrophic situation. Currently, fashion is one of the most polluting industries in the world. The total greenhouse gas emissions from textile production are more than those of all international flights and maritime shipping combined (Ellen MacArthur Foundation, 2017). Hence, one could state that sustainability is probably the most significant challenge of today’s fashion industry and cannot be excluded when considering the future legal environment for the industry. Thus, the sustainability perspective is also taken into account in this article.

In the current copyright environment, it seems that AI-generated fashion designs would be more vulnerable for copyists than human-created designs. The copyright system is primarily created in order to protect the creative endeavours of human creators. Since an AI fashion designer is not a human being, in most cases creations generated by it would fall into the public domain if there is not sufficient human input behind the creativity. This means that these AI-generated fashion designs would be free for everyone to copy, and fast fashion companies would have even less legal risks when it comes to their habit of knocking off popular designs by others. This creates a challenge that is especially related to sustainability: according to some previous legal research, copying is the engine of the fashion industry that keeps the industry going. Without copying, the fashion cycle would appear much slower (Raustiala & Sprigman, 2006). However, in today’s world, where way too many clothes are being produces, purchased and disposed, a faster fashion cycle is the last thing that the world needs. Instead, when considering how the copyright system should treat AI generated fashion designs, one should not come up with solutions that make fashion copying even easier.

This paper concludes that, due to the aforementioned reasons, the copyright system should find a way to include AI-generated fashion designs in its protected subject matters. One option to do so would be that a computer user who initiates the creation of an AI-generated work should be recognized as the author and copyright owner of the resulting work (Denicola, 2016). Another possibility would be to develop copyright protection into a “dual system”, that would be divided to “romantic” protection of human-created original works, and “industrial” protection of investments and development of machine creation (as suggested by Alén-Savikko, Ballardini and Pihlajarinne, 2018).

Furthermore, this article states that recognizing AI creativity in the eyes of copyright law would be a suitable solution for fashion houses that actually do create designs themselves – with or without the help of AI. It would not serve the business strategy of the kind of fashion operators that just rely on copying successful designs of others, which is what many fast fashion companies tend to do. If the copyright system would consider AI creativity worth protecting, the system could also provide incentives to develop and utilize AI designers, in addition to promoting creativity instead of imitation.

The Authors' Take - Liability for trade mark infringement of online marketplaces in Europe: are they 'caught in the middle'?

Liability for trade mark infringement of online marketplaces in Europe: are they 'caught in the middle'?

by Carina Gommers and Eva De Pauw

Online marketplaces reach potential customers all over the world, but can also be used for goods infringing intellectual property rights. Even when online marketplace operators do not themselves participate in such transactions, they do draw economic benefit therefrom, e.g. by charging a fee per transaction. So, to what extent can they be held liable for the sale of infringing goods through their platforms?

Whereas such operators qualify as providers of information society services in the sense of the E-Commerce Directive, they are also intermediaries in the sense of Article 11 of the IP Enforcement Directive. And like any economic operator, they must abide by the trade mark laws and other legislation.

The interpretation of these distinct sets of rules has given rise to a number of decisions of the Court of Justice of the European Union (CJEU). Certain aspects seem to have been settled by now, but many issues remain open. Absent contributory infringement in EU trade mark law, one of the most pressing questions is if, and to what extent online marketplaces can be held liable for direct trade mark infringement. Another question of concern is whether injunctions can be imposed requiring them to take preventive measures without running afoul of the prohibition of imposing general monitoring obligations as provided for in Article 15 of the E-Commerce Directive. The article focuses on these two questions and also discusses the limits of the liability (‘hosting’) exemption of Article 14 of the E-Commerce Directive.

The Coty/Amazon case (C-567/18), currently pending before the CJEU, might shed some light over the first question, namely the liability for direct trade mark infringement of online marketplace operators, especially when they engage in additional services like they often do nowadays. Such additional services can include supplying the goods to buyers, assisting sellers in promoting the sale of their goods.

The teaching to be expected from the Coty/Amazon judgment will largely depend on how the CJEU will interpret the preliminary referral. If it sticks to the facts as presented to it by the German Supreme Court, then it will probably not go as far in its analysis as did the Advocate General, who opened the door to direct liability for trade mark infringement of online marketplace operators, and by extension, online intermediaries in general. Hence, further guidance might be on its way … or not just yet.

In any event, a comprehensive ‘toolbox’ will probably not be available in the near future. In the meanwhile, to deal with that, the authors think that several considerations made in the Google Adwords and L’Oréal/eBay cases (C-238/08 and C-324/09, respectively) are still relevant today. Liability for direct trademark infringement should not be accepted too soon, at least if online marketplace operators clearly communicate their role to the consumer. After all, establishing a direct trade mark infringement requires an adverse effect on one of the functions of the trade mark. At least as far as the essential origin function is concerned, no impairment thereof can be presumed if the advertising is not misleading as to the nature of the operator. As stated by the Advocate General in L’Oréal/eBay, in 2011, and even more so today, consumers are used to the existence of various intermediary economic activities.

Of course trade mark owners should not be left without ammunition. An equitable balance between the interests of online marketplace operators and the interests of trade mark owners could be found by imposing higher monitoring duties on online marketplace operators assuming an ‘active’ role. Where such ‘active’ intermediaries cannot benefit from the hosting exemption, they can be liable for tort if they have not been sufficiently diligent and a causal link exists between their lack of diligence and the damage suffered. Requiring them to display a higher degree of diligence could therefore solve a lot. It would make sense to have a proactive monitoring duty the extent this is proportionate to the degree of their involvement.

The article also discusses some interesting examples of preventive measures imposed on operators of online marketplaces or social media by judges in The Netherlands, Belgium and Germany, as well as the CJEU’s ruling in Eva Glawischnig-Piesczek/Facebook (C-18/18).

In this area – the prevention of infringements – an important challenge for online marketplace operators lies in setting up more performant technologies to reveal potential trade mark infringement by their customers/vendors. Automated identification and/or enforcement and voluntary, non-judicial takedown mechanisms established between online intermediaries and IP rights owners are bound to become increasingly important.

The Authors' Take - CJEU rules that repeal of provisional measure does not automatically create liability for wrongful enforcement

CJEU rules that repeal of provisional measure does not automatically create liability for wrongful enforcement

by Léon Dijkman

In its important decision in Bayer Pharma AG v. Richter Gedeon Vegyészeti Gyár Nyrt. and Exeltis Magyarország Gyógyszerkereskedelmi Kft., C-688/17, the Court of Justice of the European Union (CJEU) interpreted Article 9(7) of Directive 2004/48/EC (the Enforcement Directive) to mean that the repeal of provisional measures does not automatically entitle a defendant to damages for wrongful enforcement.

The case concerned two generic pharmaceutical companies that launched at risk, i.e. entered the market without first invalidating the relevant patent. The patentee, Bayer, requested and obtained provisional measures restraining the generic companies. The patent was subsequently revoked and the generic companies sued Bayer for damages.

The CJEU found the launch at risk objectively indicative of the existence of a risk of irreparable harm for the patentee, which made the request for provisional measures justified. The mere fact that the patent was later revoked did not, in itself, suffice to make Bayer liable for damages suffered as a result of enforcement of these measures.

First and foremost, the decision makes clear that a launch at risk by a generic company is very much at their own risk. European courts readily grant preliminary injunctions (PIs) in cases of imminent generic market entry due to the damage this can cause to the patentee. A generic company is now unlikely to recover any damages from the originator company for damages suffered as a result of the PI, even if the patent is subsequently invalidated or found not infringed.

The big question is how Bayer applies beyond launch-at-risk scenarios. It is worth noting here that several European jurisdictions apply a strict liability rule to enforcement of preliminary decisions that are later revoked. Thus, if the outcome in Bayer indeed extends to all provisional measures in IP cases, that would mean a major departure from well-established legal practice in a significant number of Member States.

The Authors' Take - How to make a video game Easter Egg: legal tips and tricks

How to make a video game Easter Egg:

legal tips and tricks

by Anastasia Chuvaeva

The legal profession is permanently fuelled by new challenges generated by the game industry. One of such thought-provoking topics is the use of Easter Eggs. In gamedev, Easter Eggs serve to provide more exciting user experience by broadening in-game world with inside jokes and references to famous games, films, books etc. Such references to third-party works, however, may cross the line of IP infringement.

Game developers are not the first lured to using third-party content and trying to justify such use by some ‘noble’ purpose. So, does naming a third-party content as Easter Egg makes this a novel topic for legal discussions?

Yes and no.

Easter Eggs do not require a new legal framework to regulate them, although finding the right legal tools to make non-infringing Easter Eggs may be a problematic task. Since Easter Eggs are not always a matter of humour, can a parody be used as a universal ‘safe harbour’? Do Easter Eggs comment on or criticize the original work? Where is this thin line between a lawful Easter Egg and a copyright infringement and how not to cross it?

What if a game only mentions a famous character, or makes a joke about him? Is there any difference between the following types of use: (1) Superman runs cross a battlefield; (2) A main playable character of a game is a big fan of DC Comics and never takes off his Superman T-shirt; (3) A game contains a dialogue discussing a recent Superman film; (4) A game has a road sign to Smallville?

The answers to these questions may be of interest both to those amongst us who stand as an obstacle between a game development team and their creative endeavours, and outside professionals wondering what might trouble the quiet lives of in-house counsel.

The Authors' Take[s] - Obviousness: what’s the problem?

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution is available in Advance Access.

A few months ago, Roy Marsh, a British and European patent attorney currently practicing in Munich, approached JIPLP to express his disagreement with the criticism expressed by some authors and judges towards the EPO's Problem and Solution Approach. We encouraged him to discuss his point of view in an article, also to stimulate further debate among our readers and more widely. In the following Authors' Take posts, Roy provides not one but two short summaries of his work: the first is a more typical abstract, while the second illustrates Roy's ideas with his characteristic verve and enthusiasm We hope readers will appreciate both versions, as well as Roy's full article (available here)!]

Obviousness: what’s the problem?

by Roy Marsh

Take 1

When it comes to judging obviousness, the simplest mechanical contrivances can present the most ticklish problems. The author, upon entry to the profession in 1973, discovered that one of the landmark House of Lords cases on patent validity in England was the tractor-drawn hay rake case between van der Lely and Bamfords. Being the son of a dairy farmer, he well knew the products of the respective parties, their attributes in the field, and the commercial success of the patentee’s “ACROBAT” device, not at all surprising to him, given its elegant and robust design and its delightful effectiveness, speed and agility in use.

Since then, the author has gradually come to the view that the EPO’s “effects-based” problem-and-solution-approach (PSA) to obviousness has manifold public policy benefits which continue to go largely unrecognized even today, 40 years after its creation back when the EPO first opened its doors for business. PSA cut through the encrustations of national law on obviousness. But that is not all. PSA also:

1) obliges patent drafters to render their specifications attractive reading for R&D people;

2) short-circuits the “eligibility” argument in the software space; and

3) subsumes much of the argument on enablement.

Today, more than ever, in an era of dangerous climate change, we need technical progress. The raison d’être of a patent system is to promote such progress. We ought therefore to be urgently seeking ways to make patents more accessible to R&D people, and worth their while to read them. One way is to adjudicate obviousness using EPO-PSA.

Courts and litigators are already influenced by the EPO case law on novelty. It is vital that they also open their minds to the public policy benefits of doing obviousness like the EPO does it.

Take 2

Must it be? Must the law get ever more complicated? Look at tax law and one might suppose that the competition between gamekeepers and poachers – the State vs. the legal eagles – makes inevitable an ever-increasing complexity, and with it ever-diminishing levels of respect for the Rule of Law.

Well, it is not inevitable. At least not in patent law.

Back in the 1970s, we made a fresh start, with the PCT and the EPC, sweeping away the accumulated encrustations of the former patent law of the UK. With this re-boot a whole new style of drafting patent applications came into force. Imperative was to explain to their readers what technical features constitute the invention and what technical problem the invention is solving. Patents are addressed to technical readers, are supposed to promote the progress of the useful arts, and so ought to be accessible to engineers and scientists, and to stimulate them into devising different and better solutions to problems in technology. Today, more than ever, we need technical solutions to save our planet from climate change effects. More than ever, we need as many design-arounds as we can stimulate.

The EPO’s problem-solution-approach (PSA) does this, and much more, but there are few people that grasp its importance. With this article, I want to change that.

By taking its “effects-based” approach to patentability over the prior art, PSA not only forces better drafting. It also cuts through over the accumulated layers of dissimulation that have become part of the enquiry whether the subject-matter claimed is “obvious”. And its success, in streamlining the obviousness enquiry, has enabled it to solve problems in the enquiry as to patentable eligibility (Art. 52 EPC) and the one into sufficiency of disclosure (Art. 83 EPC).

Can this article alert members of the litigation community to the public policy advantages of following the EPO-PSA method of exploring the ticklish obviousness problem? I do hope so.

About this weblog

The principal contents of this weblog are drawn from the Current Intelligence features which are published monthly in JIPLP.

Current Intelligence articles are designed to analyse recent key cases, legislation and topical matters. Normally they are of between 500 and 1,500 words (though in exceptional cases a greater word length may be agreed with the Editors).

The selected Current Intelligence articles are now posted on this weblog to enable readers to engage with them, posting comments if they so choose. All comments are moderated, which means that they will not appear immediately upon their being posted.

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JIPLP is a peer-reviewed journal dedicated to intellectual property law and practice. Published monthly, coverage includes the full range of substantive IP topics, practice-related matters such as litigation, enforcement, drafting and transactions, plus relevant aspects of related subjects such as competition and world trade law.

The journal is specifically designed for IP lawyers, patent attorneys and trade mark attorneys both in private practice and working in industry. It also aims to be an essential source of reference for academics specialising in IP, members of the judiciary, officials in IP registries and regulatory bodies, and institutional libraries. Subject-matter covered is chosen for its practical relevance and international interest.

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... and authors in search of an article

JIPLP is often approached by prospective authors who would like to write something, but who would appreciate guidance regarding subject-matter, style and so forth. Here are a few pointers:

* Ask yourself what is it that you'd like to read in the journal, since that is handy rule of thumb which probably reflects the interests of your colleagues and your competitors;

* IP law and practice is very much a 'here and now' activity for JIPLP subscribers. The history of a right may be inherently interesting, or even sometimes relevant to the resolution of a specific issue, but would you expect a reader to look for it in JIPLP?

* Recycled Masters' dissertations and university essays make poor articles and are often difficult to convert from a piece that is designed to display erudition and research ability into an article that addresses lawyers, businesses and decision-makers. It's usually easier to start afresh by working out who your readers are and what you want to tell them.

* Please comply with the authors' instructions and note the journal's preferred length for articles. Most authors like to publish long ones, but subscribers tend to prefer reading shorter ones.