Bonsoir à tous,

Navré mais septembre étant une période surchargée nous avons pris du retard.

Nous avons effectivement envoyé l’information quelques jours seulement avant la date de la conférence soit le 26 septembre.

PI France a fait de son mieux…pour notre part nous ferons tout pour informer dans les meilleurs délais les prochaines manifestations.

Cordialement votre,

Lucien David LANGMAN

Président de la Compagnie Nationale des Experts M.C.T.H.

Administrateur de l’Institut des Hautes Etudes sur la Justice

Membre du Collège Européen de Résolution des Conflits

Médiateur Arbitre à l’Organisation Mondiale de la Propriété Intellectuelle

1, avenue de Friedland

F-75008 PARIS

T.01 45 62 33 69

F.01 42 56 36 30

E-mail: ld.langman@...

Stockholm (Sweden), 13th October 2009: Public Procurement of Innovations - A driver for future health

VINNOVA (The Swedish Governmental Agency for Innovation Systems) is organising a conference on the 'Public Procurement of Innovations - A future for future health' to be held in Stockholm (Sweden) on 13th October 2009

The event aims to mobilise Europe for a public procurement of innovation (PPI) policy in the field of life science and to offer an opportunity to discuss and illustrate PPI with stakeholders so that it, hopefully, becomes an obvious alternative when planning procurement.

Related Links

Further information

COMPAGNIE NATIONALE DES EXPERTS M.C.T.H.

SYNDICAT PROFESSIONNEL INSCRIT A PARIS SOUS LE N° 18357 APE  9411Z

8, rue Montesquieu – 75001 PARIS

France

En Relais MCTH

POUR TOUS NOS ADHERENTS ET PARTENAIRES / FOR ALL MEMBERS AND PARTNERS

Bien cordialement Lucien David LANGMAN Président MCTH

La Chaire Régulation et la Cour de cassation consacrent, comme vous le savez, leur cycle annuel de conférences, sous la direction du Professeur Michel Vivant, au thème « Droit et économie de la propriété intellectuelle ».

Espérant vous y rencontrer,

Marie-Anne Frison-Roche

Directeur de la Chaire Régulation

Cycle Droit, économie, justice 2009-2010

3^e conférence du cycle de conférence

Droit et économie de la propriété intellectuelle 

« Clef » pour comprendre : la fonction sociale des droits de propriété intellectuelle

Lundi 28 septembre 2009

Exploitation des droits, usage, mésusage, conflits de droits : la considération de la fonction sociale des droits de propriété intellectuelle (économique, culturelle…) comme de leur place dans l’ordonnancement juridique général permet de substituer à l’approximation une approche raisonnée de ces situations indécises.

18h30 à 20h30
Grand'Chambre de la Cour de cassation

(Entrée par la place Dauphine, 75001 Paris)

Intervenants :

Claude Henry (F), Professeur d’économie à Sciences Po et Columbia University

Christophe Geiger (F/All), Directeur Général du Centre d’Études Internationales de la Propriété Intellectuelle de Strasbourg, Chercheur à l’Institut Max Planck de Munich

Marie-Françoise Marais (F), Conseiller à la Cour de cassation, en charge des affaires de propriété littéraire et artistique, vice-présidente du CSPLA et membre de l’ARMT 

Manifestation validée au titre de la formation continue des avocats 

Entrée libre, inscription nécessaire :

Auprès de la Chaire Régulation : Télécopie : 01.45.49.72.33 / courriel : colloque.piregulation@... 

Auprès de la Cour de cassation : par formulaire en ligne : http://www.courdecassation.fr/formu_01.php3?id_article=12633

ou par télécopie : 01.44.32.78.28

(Sous toutes réserves des disponibilités en place)

Cordialement votre,

Lucien David LANGMAN

Président de la Compagnie Nationale des Experts M.C.T.H.

Administrateur de l’Institut des Hautes Etudes sur la Justice

Membre du Collège Européen de Résolution des Conflits

Médiateur Arbitre à l’Organisation Mondiale de la Propriété Intellectuelle

1, avenue de Friedland

F-75008 PARIS

T.01 45 62 33 69

F.01 42 56 36 30

E-mail: ld.langman@...

P SVP, pensez à l’environnement avant d’imprimer ce mail. Please think about the environment before printing this e-mail 

COMPAGNIE NATIONALE DES EXPERTS EN MODE MACHINES MATERIELS COMMERCE CUIR Couture CREATION CONTREFACON TECHNOLOGIE TEXTILE HABILLEMENT

Tél. (33) 01 42 96 21 01 - Fax. (33) 01 42 61 79 29 - Email : contact@...

Brussels (Belgium), 29th September-1st October 2009: Innovation Forum

The Île-de-France Region, in partnership with Brussels-Capital Region, is organising an 'Innovation Forum' to be held in Brussels (Belgium) on 29th September-1st October 2009.

The event aims to promote and support innovative projects carried out by regional companies and innovation intermediaries. Participants will have the opportunity to discover innovations developed in Ile-de-France, specifically four 4 Clusters will present their R&D activities and regional SMEs will also present their innovations.

Related Links

General programme



Programme innovation



and Registration

Bonjour,

Je travaille pour le cabinet de recrutement Spring Technology et je viens de trouver vos coordonnées sur le site de Monster.

Un de mes clients recrute pour un poste en CDI un ingénieur de propriété intellectuelle. Vous trouverez ci-joint la description du poste - si vous êtes interessé par cette offre n'hésitez pas à me contacter pour en discuter. Par contre si cette offre ne vous correspond pas, n'hésitez pas à communiquer cet email aux personnes de votre entourage ayant ce profil.

Profil ingénieur brevets

Formation en école d'ingénieur dans le domaine des nouvelles technologies logiciel, complétée par un diplôme du CEIPI de préférence, ou mandataire européen, ou d'un cursus juridique.

Expérience dans le domaine de la Propriété Industrielle au sein d'un cabinet de PI ou dans un service spécialisé d'une entreprise.

Missions Principales et Objectifs prioritaires :

La détection et l’accompagnement des innovations réalisées par l'entreprise,

La rédaction, le dépôt et la procédure d'examen des demandes de brevets aux Etats-Unis et en France,

L’extension des brevets déposés à d’autres pays.

Autres missions :

L'étude de la liberté d'exploitation des solutions techniques retenues.

Le traitement du point de vue de la Propriété Industrielle des innovations réalisées dans le cadre des projets de développement logiciel.

Maîtrise de l’anglais technique et juridique à l'oral et à l’écrit exigé. 

Poste basé dans le Sud de la france

Merci

Cordialement,
Cédric Mureau

Office Manager

Spring Technology Staffing Solutions

T: 04 20 10 25 15

M: 06 48 13 8007

F: 04 20 10 25 00

E:  cedric.mureau@...

P Please consider the environment before printing this email. Even small changes can make a big impact.

___________________________________________________________________________________________________

Spring Group plc is one of the UK's leading recruitment and staffing services companies and is an active member of the Recruitment and Employment Confederation (REC). Our services encompass contract and permanent IT and technology staff, office and industrial staff, workforce management services and recruitment outsourcing (RO). Spring Technology is the winner of the 2008 Recruiter Awards for Excellence for 'Best IT Recruitment Firm'  and engages the REC 2008 'IT Contractor of the Year'.   To find out how Spring can help your organisation, please email enquiries@....

____________________________________________________________________________________________________________________

The contents of this e-mail and any attachment(s) are strictly confidential and are solely for the person(s) at the e-mail address(es) above. If you are not an addressee, you may not disclose, distribute, copy or use this e-mail, and we request that you send an e-mail to postman@... and delete this e-mail. Spring Group plc accepts no legal liability for the contents of this e-mail including any errors, interception or interference, as internet communications are not secure. Whilst Spring Group plc and the sender have taken every precaution to prevent transmission of computer viruses, should this inadvertently occur we do not accept any liability. Spring Group plc, Hazlitt House, 4 Bouverie Street, London, EC4Y 8AX. Registered in England, company number: 590054. Web: http://www.spring.com

____________________________________________________________________________________________________________________

Karlsruhe (Germany), 26th October 2009: Coordination of Complex Projects

Forschungszentrum Karlsruhe's training centre (FTU) is organising a workshop on 'Coordination of Complex Projects' to be held in Karlsruhe (Germany) on 26th October 2009.

Many scientific projects, especially EU-funded projects are often very complex and requirespecial know-how. People involved in complex projects must have a good understanding and knowledge of the state-of-the-art project management and coordination methodologies.

The aim of the workshop is to provide knowledge and skills required by project managers and project staff in complex projects. It is designed for research managers and administrators, scientists, engineers, technical and administrative staff involved in projects and limited to 12 participants to ensure a high quality standard.

Related Links

Further information

Cranfield (UK), 26th-28th April 2010: Fundamentals of Intellectual Asset Management course

The Licensing Executives Society (LES) Britain & Ireland is organising a course on 'Fundamentals of Intellectual Asset Management' to be held in Cranfield (UK) on 26th-28th April 2010.

The event will give an introduction to the main types of intellectual property, including trade secrets, patents, trade marks, copyright and design rights, as well as an introduction to the basics of licensing including exercises and a review of the important clauses of a licence.

Fee for non members is £720

Related Links

Further information

Hertogenbosch (Netherlands), 6th October 2009: 'Regional Innovation for Demographic Change'

The Assembly of European Regions is organising the conference 'Regional Innovation for Demographic Change' to be held in Hertogenbosch (Netherlands) on 6th October 2009.

The event will provide the regions an opportunity to exchange best practices and knowledge that may be needed to respond to demographic changes.

Related Links

Further information and registration

Visby (Sweden), 29th September - 1st October 2009: Targets for biodiversity beyond 2010 - research supporting policy

The European Platform for Biodiversity Research Strategy (EPBRS) is organising a meeting on 'Targets for biodiversity beyond 2010 - research supporting policy' to be held on Visby (Sweden) on 29th September - 1st October 2009.

The event will aim to allow discussion between natural and social scientists, policy-makers and other stakeholders on how science can support policy makers setting new targets for biodiversity beyond 2010.

With the participation of representatives from the European Commission.

Related Links

Further information and registration
Further information on the electronic preparatory conference
EU Biodiversity Action Plan

Hasbro Wins Trademark Battle in Robot War

Contributed by Norsker & Co

On August 3 2009 the Maritime and Commercial Court ruled in Hasbro Europe v VN Legetøj A/S (Case V-107-07).

International toy group Hasbro has owned the EU trademark TRANSFORMERS since 1996 and the Danish registrations THE TRANSFORMERS and AUTOBOT since 1987.

In 2007 Danish toy wholesaler VN Legetøj distributed its catalogue containing toys under the name TRANSFORMAX. VN Legetøj also exported toys to Norway under the designation X-BOT-TRANSFORMABLE. Furthermore, VN Legetøj used packaging in colours similar to those used by Hasbro.

Hasbro sued VN Legetøj for trademark infringement and infringement of Hasbro's rights under the Marketing Act.

The court found the trademarks to be confusingly similar for the following reasons.

The words 'Transformers' and 'Transformax' contained three syllables, of which the first two - 'trans' and 'form' - were identical. The word marks differed from each other only by their endings - 'ers' and 'ax', which may have been difficult to hear when the marks were pronounced. The visual and phonetic likeness between the marks might also have led to confusion, particularly when being recalled, since they were being used for similar products. In addition, both marks had been written in characteristic big, square letters, both containing an 'A' where the transverse line was at the bottom instead of in the middle and it did not close the letter. Thus, the court ruled that VN Legetøj had violated Section 4(1) of the Trademarks Act, Article 9(1)(b) of the Trademarks Directive and Sections 1 and 18 of the Marketing Act.

With regard to the trademarks AUTOBOT and X-BOT-TRANSFORMABLE, the court found Hasbro's trademark to have distinctive character, but ruled that the two marks were not confusingly similar. The trademarks did not look like each other visually or phonetically, and the syllable 'bot', which derived from 'robot', was an ordinary suffix relating to robots. Thus, VN Legetøj's use of the designation X-BOT-TRANSFORMABLE did not imply a trademark violation.

However, the packaging in which X-BOT-TRANSFORMABLE was marketed, including the choice of colours and the use of a mask as a sign, might have led consumers to think of Hasbro's AUTOBOT products. Following a general assessment of the composition, the court found the use of the packaging to violate Sections 1 and 18 of the Marketing Act.

VN Legetøj was ordered to pay Dkr100,000 in reasonable compensation and Dkr150,000 for disturbance of market and lost sales.

Supreme Court Sets Threshold for Copyright in Applied Art

Contributed by Advokatfirman Lindahl

Facts
Supreme Court Decision
Comment

In April 2009 the Supreme Court rendered a judgment may be one of the most significant in decades regarding copyright protection for industrial design. In its reasoning the court thoroughly set forth the legal position and the threshold of originality required for copyright protection for applied art.

Facts

The dispute was between two major parties, the US company Mag Instrument and the Swedish company IKEA. Since 1980 Mag has marketed and sold various torches in Sweden, including the Mini Maglite model. IKEA marketed a torch with a design that, according to Mag, infringed Mag's copyright in the Mini Maglite. In 1998, Mag filed a summons application with the Stockholm District Court claiming infringement by IKEA. The infringement allegations were contested by IKEA, which claimed that the design of the Mini Maglite was insufficiently original to enjoy copyright protection.

The district court held in Mag's favour, stating that the threshold for originality for applied art is considered to be low. IKEA appealed the decision to the Svea Court of Appeal, where experts in the field of IP rights were invoked by both parties to give their opinions. The essential question in dispute was how requirements for copyright protection of industrial designs were to be defined. Unlike the district court, the court of appeal found that due to its functional elements the Mini Maglite was insufficiently original and independent to enjoy copyright protection. Mag appealed.

Supreme Court Decision

The principal questions that the Supreme Court had to assess were: (i) how the standard of originality for industrial designs is to be defined considering recent developments; and (ii) whether the Mini Maglite could be deemed to meet this standard.

In its reasoning, the court summarized the main legal developments during the past few decades relating to applied art. The preparatory work to the Act on Copyright of Literary and Artistic Works stated that applied art could enjoy copyright protection, provided that it was considered an artistic work. The requirement of creative efforts for applied art has varied over the years, depending on the other protection available. For instance, in connection with the introduction of the Designs Act, the threshold with regards to copyright for works of applied art was raised. According to the preparatory work, this was motivated by the availability of alternative means of protecting applied art. This position also took into consideration the fact that copyright provides long-lasting protection, remaining in place for 50 years (now 70 years) after the death of the originator.

The court was aware that copyright protection for industrial designs may have a suppressing effect on competition, but held that it would be inconsistent with the object of copyright legislation to limit the scope of protection to identical copies. In this respect, the court particularly emphasized the possibility of a product enjoying both copyright protection and design right protection.

The court found the requirements for a work to enjoy copyright protection as applied art to be only slightly lower than those applicable to copyright as artistic works. However, the requirements of originality and creative effort should be viewed against the scope of protection granted. A product which meets the threshold, but shows only limited originality will enjoy a more limited scope of protection. However, this scope of protection should, at least in principle, be extended beyond mere protection from direct copying or imitation.

The next question for the court was whether Mini Maglite, as a work of applied art, met the requirements for a work to enjoy copyright protection. The court stated that the elements of the design, viewed separately, were not particularly original. However, this did not preclude the combination of such elements and the design as a whole from incorporating sufficient originality for copyright protection. Considering the limited possibilities for design variation given the functional considerations of small torches, the court found that the design of Mini Maglite was created an overall impression that was distinctive from its precedents. The torch was considered to be more than merely a functional object. In accordance with the opinion of the Svensk Form Copyright Panel, the court finally found the Mini Maglite to be sufficiently original and individual to enjoy copyright protection. However, the scope of protection afforded to the design was limited and the court concluded its reasoning by stating that this was a borderline case.

Comment

This ruling can be seen as a landmark in which the court established a standard for the requirement of originality for industrial design. The ruling is regarded as a triumph for rights holders of industrial designs, emphasizing that such designs can – despite their functional characteristics – be entitled to copyright protection. The fact that the court considered the Mini Maglite to be a borderline case is also important, since this more clearly defines the outer limit of the scope of protection for works of applied art. However, some reactions to the ruling have been sceptical and have expressed concerns that industrial designs will now enjoy overly far-reaching protection that will impede competition and discourage innovation.

For further information on this topic please contact Håkan Borgenhäll or Lulu Li at Advokatfirman Lindahl by telephone (+46 8 527 70 800), fax (+46 8 667 73 80) or email (hakan.borgenhall@... or lulu.li@...).

Supreme Court Rules on Corporate Names, Trademarks and Domain Names

Contributed by Lideika Petrauskas Valiunas ir partneriai LAWIN

Facts
Decision
Comment

In a recent dispute over the exclusive rights to a corporate name, the Supreme Court ruled that such rights may be infringed by a trademark or unregistered mark containing the corporate name if the mark is used as a means of commercial identification to distinguish goods and services. A domain name that is similar or identical to a corporate name may also infringe such rights if it is used for commercial identification.

Facts

The plaintiff and the defendant were both furniture retailers. The plaintiff's corporate name consisted of the words 'Baldu Centras' ('furniture centre') which, accompanied by a few figurative elements, was also its trademark, registered in Classes 20 and 35. The defendant used the same words on its signage and had also registered the domain name 'www.balducentras.lt'. The plaintiff filed an infringement action against the defendant, demanding that it (i) refrain from using the words 'Baldu Centras', without other distinguishing words, on its signage, and (ii) cancel its registration of the domain name.

Decision

The court upheld the lower court decisions on the matter, finding in the plaintiff's favour.

In light of previous case law, the court stated that the respective functions of corporate names and trademarks must be congruent and consistent. If this relationship is strained, confusion is likely to arise, with trademarks being erroneously associated with unrelated companies and vice versa. The court emphasized that although the defendant had not registered the words 'Baldu Centras' as a trademark, it used them as a mark distinguishing its goods and services (ie, as a means of identifying its business). The court found that the principle governing the relationship between trademarks and corporate names also applies to unregistered marks that are used for the purpose of distinguishing another party's goods and services. The court concluded that the defendant had infringed the plaintiff's exclusive rights by using the symbolic element of the plaintiff's corporate name, without distinguishing words, as a means of business identification.

Upholding the plaintiff's claim regarding domain name use, the court held that a domain name, in addition to its technical function, identifies a company and is an important means of advertising and selling a company's goods and services. Although there is no established Lithuanian case law on the matter, the court found that the contested domain name was used as the defendant's business identification, as the website contained commercial information relating to the defendant. It concluded that exclusive rights to a corporate name may be infringed if an identical or similar domain name is used to distinguish another party's goods and services (ie, as a means of business identification).

The court rejected the argument that the defendant had a legitimate interest in using the disputed domain name because it had registered it two years before the plaintiff's claim. The court ruled that registration of a domain name is not of itself sufficient proof of legitimate interest. The 'first come, first served' rule does not prevent a party from contesting subsequent use of a domain name in the event of infringement. However, the court noted that permanent use of a domain name may create a legitimate interest in its further use - for example, where a circle of business customers is familiar with a website of that name, uses it and reasonably expects to use it in future. However, the defendant failed to prove that this was the case.

Comment

This decision could set a precedent that exclusive rights to a corporate name may be infringed by similar or identical trademarks, unregistered marks or domain names that are used as means of business identification to distinguish a party's goods and services. The decision also sets the first notable precedent on cybersquatting in Lithuania.

For further information on this topic please contact Edita Ivanauskienì at Lideika, Petrauskas Valiunas ir partneriai LAWIN by telephone (+370 5 268 1888), fax (+370 5 212 5591) or email (edita.ivanauskiene@...).

US and New Zealand Patent Applications: Where to File First

Contributed by James & Wells Intellectual Property

An effective international filing strategy should take into account not only what to file for and where, but also the country in which the first application should be filed.

An individual New Zealand company can sometimes file its first patent application in a country other than New Zealand. However, a foreign filing licence must be obtained from the New Zealand Patent Office in advance.

Apart from individual commercial reasons, filing first in the United States provides certain advantages over filing in New Zealand if:

• there is some relevant prior art within the past year that the client wishes to have eliminated from consideration, as the United States has some unusual patent novelty requirements and some clients may need to take advantage of them;
• the client is concerned about interference proceedings - that is, not being considered the first inventor - as, statistically, parties that are first to file in the United States have an advantage;
• the client is entering into negotiations with another party that wishes to have the comfort of a US patent application; and
• the client does not need to take advantage of post-dating, as the United States does not recognize the shifting of a priority date.

If a client decides to file in the United States, it should advise its primary IP adviser of the reasons for its decision, as these could affect filing strategies in other countries. New Zealand attorneys (and Australasian attorneys in general) tend to be less expensive than US patent attorneys; therefore, a client filing in New Zealand may not need to allocate the additional budget for filing costs that would be necessary for a US filing.

A useful strategy is to file a New Zealand patent application on the same date as a US application or, preferably, a day earlier, thereby providing the option of using the New Zealand application as the priority application. This is a cost-effective exercise in view of obtaining priority documents for future applications in other countries.

New Zealand patent attorneys have the advantage of being able to file Patent Cooperation Treaty (PCT) applications through Australia. Unlike the EU and US patent offices, the authorities can examine applications in sufficient time to put them into shape during the PCT process. A positive PCT examination report can provide a client with confidence in deciding whether to file national phase applications.

If a New Zealand company is seeking protection in New Zealand and other countries, not merely in the United States, it would be well advised to ask a New Zealand patent attorney to draft the specification. This may seem counterintuitive, but New Zealand attorneys generally act for exporters. Therefore, most of their drafting and subsequent patent prosecution is designed around gaining patent protection in numerous overseas jurisdictions. This contrasts with a US tendency towards US-centred claims that often have too much specificity with respect to the integers for some jurisdictions. The typical New Zealand approach thus avoids the trap of filing for a narrower claim set than is required to obtain a strong and valid patent in many other countries.

For further information on this topic please contact Kate Wilson at James & Wells Intellectual Property by telephone (+64 7 957 5660), fax (+64 7 957 5661) or email (katew@...).

Brussels (Belgium), 12th-16th October 2009: First European Innovation Summit'

Knowledge4Innovation (K4I), a not-for-profit and independent platform for the stakeholders of the knowledge and innovation economy, is organising the '1st European Innovation Summit' to be held in Brussels (Belgium) on 12th-16th October 2009.

The event will 'Turn the European Parliament into an Innovation Showcase' through exhibitions, workshops and special events. It will also be a unique opportunity to raise awareness and outline the issues relevant to the development of Europe's knowledge and innovation economy and society among EU policy makers.

Related Links

Further information and registration

Imitation of Products or Services by Third Party Constitutes Unfair Competition

Contributed by Grau & Angulo

In a July 7 2009 judgment the Supreme Court confirmed the decisions issued by the first instance and appeal courts in unfair competition proceedings initiated by Ariete SpA and Ariete Hispania SL against Comelec Import-Export SL.

The judgment confirms that Comelec's importing and selling of juice makers which were slavish copies of the plaintiffs' products (which the plaintiffs first introduced into the Spanish market) constituted unfair competition in accordance with Article 11(2) of the Law of Unfair Competition.

According to the judgment, Article 11(2) applied on account of the following:

• Ariete sells fruit juicers which are fully identified as belonging to the plaintiff and the products have singularity and are recognized in the market in question.
• Unfair imitation exists where similarity unfairly misleads the average consumer about the business origin of the product. The existence of imperceptible variations or variations in incidental or accessory features does not prevent imitation.
• Marking a word sign on the imitating product that is different from the word sign on the product being imitated does not prevent the application of Article 11(2), as the products must be compared in their entirety, not just in terms of isolated features. The visual impact of the products in conflict is the key consideration.
• The different types of establishment where the products are sold and the difference in price between the products are irrelevant to the assessment of the likelihood of association.
• Comelec's selling of juicers in the Spanish market when Ariete's products were already fully introduced in such market implies that it unfairly took advantage of the industrial and commercial efforts made by Ariete.

For further information on this topic please contact Antonia Torrente at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (a.torrente@...).

Federal Court Clarifies Final Action and Post-appeal Procedures

Contributed by Smart & Biggar/Fetherstonhaugh

The Federal Court recently ruled that the commissioner of patents must not restart examination of a patent application after the Patent Appeal Board has previously ruled that the defects alleged in a final action are not substantiated.

Belzberg v Commissioner of Patents (2009 FC 657) relates to Canadian Patent Application 2,119,921 entitled "Computerized Stock Exchange Trading System", which was filed on March 23 1994. A special order for expedited examination was granted on December 9 1996. Between that date and May 30 2002, eight separate examiner's reports (office actions) were issued, the eighth of which was a final action alleging that the application was defective on the grounds of obviousness, insufficient disclosure, indefinite claim language and improper subject matter.

In Canadian patent prosecution practice, when an impasse is reached between the examiner and the applicant - and a final action has been issued by the examiner - a patent appeal board is formed to hear an appeal in respect of the objections raised in the final action. Following a board hearing, the board is tasked with advising the commissioner of patents, who is then charged with making a decision with respect to the patentability, or lack thereof, of the patent application in question. In Belzberg the crux of the court's ruling focused on the decision that the commissioner of patents is required to make after the board's recommendation.

In Belzberg the board concluded that none of the defects alleged by the examiner in the final action had been substantiated, and recommended "that the examiner's rejection of the application be reversed and that the application be returned to the examiner for further prosecution consistent with these recommendations". Immediately following the board's recommendation was the commissioner's decision, which stated that:

"I concur with the recommendation of the Board that the Examiner's rejection of the application be reversed and return the application to the Examiner for further prosecution consistent with the Board's recommendation."

However, upon remand to the examination division, rather than issuing a notice of allowance the examiner restarted examination of the application and issued two further examiner's reports raising grounds of rejection that had not been raised in the final action. In response, the applicant sought judicial review of the commissioner's decision to restart examination following the commissioner's earlier decision that "rejection of the application be reversed".

In arriving at the decision that the commissioner of patents must not restart examination of the application, the Federal Court clarified final action and post-appeal procedures. Firstly, the Federal Court held that a final action must list all outstanding objections to the granting of the patent. The commissioner's position that the term 'outstanding defects', as codified in Section 30 of the Patent Rules, was selective and not comprehensive, was rejected by the Federal Court. Secondly, the Federal Court held that following a Patent Appeal Board hearing, the commissioner of patents is to make one of two decisions: (i) to refuse the patent application under Section 40 of the Patent Act if the appeal board has found the alleged defects to be justified; or (ii) to grant the patent application under Section 27 of the Patent Act.

Ultimately, the court ordered the commissioner of patents to grant the application and awarded costs in the proceedings in favour of the applicant.

While the decision in Belzberg is a positive one from the perspective of both patent applicants and patent practitioners seeking clarity with respect to final action practice, the decision may be constrained by its facts. The board in Belzberg had ruled that none of the objections to the application was substantiated. As such, the Federal Court did not have to address a factual situation where the board deemed some of the objections to be substantiated and other objections to be unsubstantiated. For example, it is conceivable that in a given case the board might conclude that the broadest claims are anticipated by or are obvious over the prior art, but that the narrower dependent claims are novel and non-obvious. If read literally and out of context, the Federal Court's decision that the commissioner of patents has but two options following a board hearing (ie, to refuse the application or grant the patent) might be seen as unduly limiting the commissioner's options in this different factual context. However, other passages of the judgment recognize that Section 31(b) of the Patent Rules expressly authorizes the applicant to amend an application following a favourable board decision, and this entitlement to amend the application was cited by the court as the underlying reason for the stock language routinely used by the board in ordering "that the application be returned to the examiner for further prosecution consistent with these recommendations", rather than simply ordering that the application be allowed. Although not mentioned in the judgment, Section 31(c) of the Patent Rules also authorizes amendment of an application "where the Commissioner has informed the applicant that the amendment is necessary for compliance with the Act and these Rules". Accordingly, the court's directive that the commissioner must "grant the patent application under section 27 of the Patent Act" can fairly be interpreted as permitting the commissioner to inform the applicant that the patent application will be granted following amendment under Rule 31 to address any defects that the board found to be substantiated.

The 15-year saga of the Belzberg application continues, as the commissioner of patents has appealed this decision to the Federal Court of Appeal. Patent applicants and practitioners must now wait to see whether the clarification of final action and post-appeal procedures provided by the Belzberg decision will be maintained.

For further information on this topic please contact Jeffrey D Morton at Smart & Biggar/Fetherstonhaugh by telephone (+1 604 682 7780), fax (+1 604 682 0274) or email (jdmorton@...).

Proposed Amendments to Revise Declaration of Entitlement Requirements

Contributed by Smart & Biggar/Fetherstonhaugh

September 01 2009

On July 11 2009 proposed amendments to the Patent Rules were published for public comment in Part I of the Canada Gazette. Although many of the proposed amendments are essentially editorial in nature, they concern at least one matter of substance: the requirement for a 'declaration of entitlement' in a Canadian patent application.

Prior to June 2 2007, an applicant was required to register evidence (usually in the form of an assignment) that it was the legal representative of the inventor. Pursuant to amendments to the Patent Rules that came into force on June 2 2007, this requirement was removed and replaced with a requirement for a declaration as to the applicant's entitlement, as of the filing date, to apply for and be granted a patent.

Although the 2007 amendments were intended to simplify the application procedure, the complexity of the prescribed declaration of entitlement form has proven to be problematic. The existing declaration of entitlement form, which is based on a general purpose form prescribed in the Patent Cooperation Treaty Administrative Instructions, requires identification of a specific basis of entitlement selected from a prescribed list, including terms such as 'an agreement' 'consent' or 'transfer of entitlement', none of which is defined in the Patent Act or the Patent Rules. Furthermore, the form requires specific dates to be attributed to most of these bases of entitlement.

The proposed amendments would replace the requirement for the relatively complex declaration of entitlement document with a simple declaration that "the applicant is the legal representative of the inventor". The term 'legal representative' is defined broadly in the Patent Act as including "heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions".

The proposed amendments were open for public comment for a 30-day period that commenced on July 11 2009. In the absence of representations received during this 30-day comment period identifying significant problems with the proposed amendments, it may reasonably be expected that the proposed amendments will be registered shortly after the end of the comment period. The amendments would come into force 30 days after the date on which they are registered. The amendments should be published in Part II of the Canada Gazette within 23 days of registration.

Although neither the existing declaration of entitlement regime nor the proposed simplified declaration procedure requires an assignment from the inventor to the original applicant to be registered with the Patent Office, provisions regarding assignments nevertheless remain in the Patent Act. In this regard, Section 51 of the Patent Act provides that an assignment is void against a subsequent assignee unless the assignment is registered with the Patent Office before registration of the instrument under which the subsequent assignee claims. This suggests the possibility that if the original applicant for a Canadian patent obtained rights in an invention from the inventor by way of assignment, but did not record that assignment, the inventor could fraudulently execute a subsequent assignment in favour of a third party and record that subsequent assignment with the Patent Office, thereby defeating the earlier (unrecorded) assignment to the original applicant.

This is an unlikely possibility in view of a requirement under the Patent Rules to preserve the chain of title. Provided that the assignee (and not the inventor) is named as the original applicant in the application (which is standard practice in Canada), the inventor is not part of the chain of title in the Canadian patent application. Therefore, an assignment from the inventor to a third party should not be registered by the Patent Office. This is provided for in Section 38 of the Patent Rules, which states that:

"No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the current recognized owner to the new owner has been registered in the Patent Office in respect of the patent or application."

The 'currently recognized owner' referred to above would be the originally named applicant and not the inventor. This requirement to maintain the chain of title is acknowledged in Section 6.09 of the Patent Office's Manual of Patent Office Practice.

However, because the provisions of the Patent Act with respect to assignments do not appear to be entirely consistent with the provisions of the Patent Rules, it is possible that Canadian law or practice may develop in such a way that recording an assignment to the original applicant would be beneficial. In view of this possibility, the cautious course is to record any such assignment. Any subsequent steps within the chain of title (eg, from the original applicant to a subsequent assignee) must be registered with the Patent Office in the usual manner if the new owner is to be recognized in the Patent Office records and the potential application of Section 51 of the Patent Act is to be avoided.

For further information on this topic please contact David E Schwartz at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email (deschwartz@...).

Protecting Rights of Authors, Performers and Phonogram Producers

Contributed by Al Tamimi & Company

In order to control the use and licensing of copyright-protected works in the digital context, owners of such protected works often adopt technological measures such as encryption. These technological measures provide safeguards against the unauthorized use of the works and the removal or alteration of rights management information used for the management of protected copyright (eg, licensing and the collection and distribution of royalties).

Realizing that such technological measures needed legal cover, the World Intellectual Property Organization (WIPO) instigated two treaties: the WIPO Copyright Treaty of 1996(1) and the WIPO Performances and Phonograms Treaty of 1996.(2) The key obligations set out in these treaties are as follows:

• Member states should provide legal protection for technological protection measures that copyright owners may employ to prevent unlawful use of works of authorship.(3)
• Member states should protect electronic rights management information against knowing and unauthorized removal or tampering that induces or enables infringement of economic or moral rights.(4)
• The phrase 'rights management information' refers to information which identifies the work/performance/phonogram, the author/performer/producer of the work/performance/phonogram or the owner of any right in the work/performance/phonogram, or information about the terms and conditions of use of the work/performance/phonogram and any numbers or codes that represent such information. Such information constitutes rights management information when it is attached to a copy of a work/performance/phonogram or appears in connection with the communication of a work/performance/phonogram to the public.(5)

The United Arab Emirates acceded to the WIPO Copyright Treaty on July 14 2004 and to the WIPO Performances and Phonograms Treaty on June 9 2005. Accordingly, it also transposed these treaties' mandates into its national laws when it amended its Federal Law 7/2002 through the Amendment Law 32/2006 Regarding Copyright and Related Rights (UAE-CL 7/2002).

With regard to affording legal protection to technological measures protecting the rights of authors, performers and phonogram producers in the digital context, Article 38 of the Law Regarding Copyright and Related Rights provides that:

"Without prejudice to any severer penalty provided for in any other law, a jail term of not less than three months and a fine of not less than [Dh]50,000 and not more than [Dh]500,000 shall be the penalty against any person who does any of the following:

• Produces or imports, illegally, with the intention of selling, renting out or distributing a work, fake copies or any equipment, devices or means specifically designed or adapted to circumvent forms of copy-protection used by the Author or the Related Rights Holder to broadcast or distribute or regulate or manage those rights or maintain a specific purity criteria for reproduction;
• Unjustifiably delays or damages any copy-protection or electronic information that regulates or manages the rights defined by this Law; or
• Loads or stores on computer a copy of computer software or application or database without a license from the Author, the copyright holder or their successors.

Repeat offenders shall be jailed for at least nine months and fined not less than [Dh]200,000."(6)

For further information on this topic please contact Faisal Daudpota at Al Tamimi & Company by telephone (+971 2 674 4535), fax (+971 2 676 8762) or email (f.daudpota@...). The Al Tamimi & Company website can be accessed at www.tamimi.com.

Endnotes

(1) The treaty entered into force on March 6 2002.

(2) The treaty entered into force on May 20 2002.

(3) See Article 11 of the Copyright Treaty, which obligates the:

"contracting parties to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorised by the authors concerned or permitted by law."

See also Article 18 of the Performances and Phonograms Treaty.

(4) See Article 12 of the Copyright Treaty, which states in relevant parts that "contracting parties shall provide adequate and effective legal remedies against any person" who knowingly performs any of the abovementioned acts or has reasonable grounds to know that the performance of such acts "will induce, enable, facilitate or conceal an infringement" of any rights covered by the Copyright Treaty or the Berne Convention. The prohibited acts consist of the removal or alteration of "any electronic rights management information without authority" and the distribution, importation for distribution, broadcasting or communicating to the public "without authority, works or copies of works" with the knowledge that "electronic rights management information has been removed or altered without authority".

See also Article 19 of the Performances and Phonograms Treaty.

(5) Extracted from combined reading of Article 12(2) of the Copyright Treaty and Article 19(2) of the Performances and Phonograms Treaty.

(6) Article 38 of the Law Regarding Copyright & Related Rights.

Brussels (Belgium), 7th September 2009: "Hearing on Google Book Settlement"

The European Commission is organising a hearing on the 'Google Book U.S. Settlement Agreement' to be held in Brussels (Belgium) on 7th September 2009.

The hearing aims to seek information on the effect of the Google Book U.S. Settlement Agreement on the European publishing sector, European authors, European consumers and society at large.

Related Links

Further information and registration

Provisional or Complete Patent Specification? Alternative Filing Strategies Explained

Contributed by James & Wells Intellectual Property

A typical initial patent filing strategy is to file a provisional patent specification, followed by a complete specification 12 months later. A complete specification usually contains details of improvements made during the 12-month period and includes a set of patent claims defining the invention's most important features. The complete specification is then examined by the New Zealand Patent Office with regard to patentability.

This strategy works well for most patent applicants, as it enables them to develop the invention and explore potential markets before investing in a complete specification. However, in some instances it is preferable to file a complete specification in the first instance.

Filing a complete specification in the first instance is often recommended for applicants with a simple invention (as these often do not require much further development) or for inventions on the edge of patentability, such as games or business plans.

An applicant filing a complete specification in the first instance will receive an examination report within a few weeks, which provides rapid feedback regarding the potential scope of protection available and thus offers independent reassurance as to the invention's patentability.

In New Zealand, patent examiners do not comment on inventiveness (ie, whether the differences between the invention and what is known are obvious), although this is about to change. However, they conduct their own searches and comment on anticipation (ie, whether the same invention is already known) and whether the invention falls within the definition of 'patentable subject matter'.

This feedback is valuable. By understanding the invention's patentability, the patent applicant can strategize with an IP attorney and decide whether patents are the best form of protection for the invention or whether greater emphasis should be placed on other areas, such as trade secrets, marketing, brand protection and design registration. Any deficiencies in the complete specification, such as lack of data, will be highlighted by the examiner's comments. This feedback can be used to develop specific research guidelines in order to obtain data that can be used to augment and strengthen the patent application. Moreover, a favourable examination report can give investors confidence that patent protection can be obtained for the invention.

An understandable concern with this approach is that the invention may be developed further after the complete specification has been filed and that new features may not be covered by the application. If this problem arises, a number of steps can be taken. At the time of filing, a request to delay acceptance of the application is made - this is typically for 15 months. The specification is examined two to four weeks after filing. The Patent Office will give an indication of the invention's patentability and of any deficiencies in the patent specification. Normally, the applicant will have 12 months to address these issues. Near the end of this period the applicant will have an idea of the final form of the invention and whether any modifications or improvements are covered by the patent specification. At that stage, the applicant can decide whether to continue with the complete specification in its existing form in New Zealand or whether to file overseas applications. Alternatively, the complete specification can easily be converted into a provisional specification, after which a new complete specification can be prepared that addresses issues raised during examination and covers the latest version of the invention (if further modifications or improvements have been made). The new complete specification is then filed in New Zealand and overseas within 12 months of the original filing date.

This useful technique gives applicants early feedback on patentability without requiring them to commit to filing international applications first.

However, it is vital to discuss all matters concerning an invention with an IP strategist and to integrate any decisions into the overall business strategy, allowing maximum benefit to be taken from the specialist's knowledge of how to work the IP system to the business's advantage.

For further information on this topic please contact Kate Wilson at James & Wells Intellectual Property by telephone (+64 7 957 5660), fax (+64 7 957 5661) or email (katew@...).