Swiss are patent application champions

March 14, 2017 under all posts

Swiss are patent application championsEach year, the European Patent Office releases in-depth statistics about patent applications by country. The results of their research are published in handy ranking tables – one of them comparing the number of patent applications from inventors in each country with the total population of that country for a “Ratio of [patent] applications per million inhabitants”

So, according to this methodology, who are the most inventive Europeans?

It’s the Swiss! With a long-held reputation for high quality design, Swiss-domiciled inventors rank the highest for European Patent applications, with measurement technology, life science and factory plant being their most patented technology.

Top 5 countries in terms of applications by population (2016 full year data)
1. Switzerland
2. Netherlands
3. Sweden
4. Denmark
5. Finland

As for the UK, we’re in 16th place but certainly deserve an honourable mention for our research and expertise in the transport sector and life sciences.

More statistics and fun are available here:
https://www.epo.org/about-us/annual-reports-statistics/statistics.html

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Bite-sized IP

March 8, 2017 under all posts

We like to keep you informed about the legal structure and remedies for intellectual property, so we were pleased to discover IP watchdog recently published a very helpful article comparing some interesting differences between IP enforcement in the USA and UK.

For example, did you know?

  • In order to enforce rights in copyright in the USA, they must be registered
  • Copyright rights in the UK last 70 years after the death of the original creator
  • UK unregistered design rights (UK UDR) protect 3-dimensional designs and are automatically afforded to a creator

More information is available here: http://www.ipwatchdog.com/2017/03/07/intellectual-property-rights-uk-law/id=79057/

Our IP insurance policies can cover any intellectual property right held by a business.

You can also look at our guide to find out more about some IP terminology.

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Streams of lawsuits

February 8, 2017 under all posts

Streams of lawsuitsThere have been further developments in intellectual property litigation in the USA as San Francisco-based OpenTV, now owned by Swiss digital company Kudelski, continue to assert their rights in the on-demand and streaming media sector.

After securing successful licence resolutions following a litigation against Netflix and Apple in California, OpenTV are now pursuing the NFL Enterprises LLC for alleged infringement of seven of their patents. It is alleged the NFL’s streaming media service infringes certain protected methods of broadcasting and security controls.

The case is being brought in the court of East Texas, generally regarded as a plaintiff-friendly jurisdiction and often used by patent trolls and non-practising entities.

That is not to say that OpenTV operate as a patent troll. Although they are not an active consumer-facing brand, they are regarded as an early adopter of technology in digital television – and could be seen as an example of how an organisation with a focus on a robust competitive service can also be very proactive in patent litigation as a core element of their business strategy. Even if that means taking up legal arms against some of the industry’s biggest names.

Sources:
https://www.law360.com/articles/880477/kudelski-group-hits-nfl-with-digital-content-ip-suit
http://www.fiercecable.com/broadcasting/nfl-latest-target-opentv-patent-suit
https://dtv.nagra.com/opentv-files-patent-suit-against-nfl-enterprises

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Parodies in trademark – the case of Louis Vuitton

February 6, 2017 under all posts

Parodies in trademark - the case of Louis VuittonA recent case in the Southern District of New York resulted in a loss for luxury brand Louis Vuitton when the provisions of a ‘parody defence’ was tested under US trademark law.

Louis Vuitton lodged a suit against My Other Bag and a subsequent appeal, but both were unsuccessful. The two bags were deemed sufficiently dissimilar in order to be confused with one another, as well there being a lack of market proximity between consumers of the two brands. As such, my Other Bag successfully defended their case as ‘Nominative Fair Use’, a type of freedom of expression defence to balance the rights afforded to registered intellectual property rights owners.

The result may be seen as a blow to Louis Vuitton, particularly as the legal case has given My Other Bag more attention and publicity than it otherwise would. At the time of writing, representatives for Louis Vuitton have gone on to submit a request to the court for a rehearing.

Would the outcome of the legal proceedings have been different in Canada, Europe or elsewhere?

In 2015 Managingip.com compiled a trademark defence guidance document accessible for registered users, which includes analysis on how parody as a defence in trademark infringement might be interpreted in various legal jurisdictions. Broadly, where the parody is made in detriment to the reputation of the trademark, most jurisdictions will find trademark infringement. Whether or not a parody was made for commercial gain appears to influence the outcome in court to a varying extent.

Other sources:
https://www.law360.com/articles/744684/louis-vuitton-loses-trademark-suit-over-parody-bags

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UK & Europe – IP update

January 12, 2017 under all posts

UK & Europe - IP updateUnified Patent Court
The biggest development in European patents this year will be the Unified Patent Court (UPC). The UPC is an agreement which seeks to create a single court for all patent litigation for Member States subscribing to the Unified Patent Court Agreement.

Article 89 of the agreement requires 13 Member States to ratify the agreement, but it is also a requirement that France, the UK and Germany must all ratify in order for the UPC to go ahead.

The Brexit vote initially threw up some uncertainty as to whether the UK would proceed with ratification. However, in November 2016 the UK indicated its intention to ratify the agreement by signing a pre-legislative Protocol on Privileges and Immunities of the Unified Patent Court. Next, it will go to Parliament for full ratification.

With France having already ratified the UPC in 2014, Germany has restarted its legislative process for ratification.

What will this mean for patent holders?
The UPC will impact on holders of a European Patent (EP). Currently, a European Patent is a standardised legal framework for applying for patents. It does not automatically provide rights across Europe. European Patent holders currently elect the territories in which they would like intellectual property rights for that patent to apply.

Following the introduction of the UPC, all granted European patents will be automatically enforceable across all the Member State territories subscribed to the UPC, as well as enabling enforcement actions to be brought to the UPC itself.

While there is no way of accurately predicting what impact this will have on litigation trends, some uncertainty remains. The consequences of having a patent invalidated not only in the current jurisdiction where they hold rights but across all the UPC territories will be of concern to a patent holder.

Patent holders may be able to risk manage their exposure, to some extent, by monitoring litigation and legal developments closely, and considering if they would like to ‘opt-out’ their patents from the new regime. For more background information, please see the reference links below.

To find out more about transferring risks through IP insurance, do get in touch.

Latest timeframes
Spring 2017 – UK expected to complete the ratification process through Parliament
Spring/Summer 2017 – Germany expected to ratify UPC, after UK completes its process
Late Summer/Autumn 2017 – Full operation of UPC begins

References
http://www.bristowsupc.com/latest-news/germany-restarts%20legislative-process-for-ratification-of-the-upc-agreement/
https://www.unified-patent-court.org/faq/opt-out
http://www.hgf.com/media/679013/UPCBriefing.pdf
https://www.unified-patent-court.org/about
https://en.wikipedia.org/wiki/Unified_Patent_Court

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Farewell 2016, Hello 2017 – the year in review

December 15, 2016 under all posts

Farewell 2016, Hello 2017 - the year in reviewIt’s the end of the year and as always, there’s a slew of reviews out there, of everything from movies to albums and songs, to the inevitable ‘fails’ and much more irreverent entertainment. We like reviews. Especially this one, from the good people at IP Watchdog – looking back on 2016 and ahead to 2017, it’s the kind of ‘Best of IP’ list folks like us love reading during our lunch breaks.

Though US-centric, this list does cover some pretty important IP events throughout 2016, from the waning power of the PTAB (Patent Trial and Appeal Board) to the decisions around software patent eligibility. The new year, according to this article could bring much-needed PTAB reforms off the back of this year’s cases and some crucial decisions by the Supreme Court with regards to design patents.

Read all about it here: http://www.ipwatchdog.com/2016/12/06/patent-year-review-2016-2017/id=75331/

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Christmas shopping ideas…the cutting edge version!

December 1, 2016 under all posts

Christmas shopping ideas…the cutting edge version!We have been kept busy this year, with our broker partners sharing some of the most innovative risks we have ever seen, including a lot of start-ups with some pretty neat products. Creativity and originality (not to mention ambition), it seems, are not in short supply.

IP insurance, like many other classes, can be a ‘business enabler’, as companies can trade in the knowledge that they, and their clients, are protected from competitors disputing their intellectual property, particularly where they might be entering a market place with some larger incumbent players.

In honour of the inventors out there, we’d like to direct your attention to Time Magazine’s list of ‘The 25 Best Inventions of 2016’. Which one tops your Christmas shopping list? (Let us know if you get a soccer field!)

http://time.com/4572079/best-inventions-2016/

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Intellectual Property in the USA – things to watch

November 28, 2016 under all posts

Intellectual Property in the USA – things to watchFollowing his election victory earlier this month, the next few weeks will likely see most of President-elect Trump’s time spent formulating priorities with his new team. Recently, cabinet reshuffles and high-level international relations have been dominating the column inches – but what about intellectual property?

There has been a lot of discussion in IP circles about the impact of the election result on a multitude of issues – venue reform, the USPTO Director appointment, alleged theft of US property overseas, as well as the President-elect’s personal experience with IP in the courts in China.

Harter and Quinn at IP Watchdog argue VP-elect Mike Pence’s experience in the House of Representatives and his track record in patent legislation may influence decision-making in the upcoming administration when it comes to US patent reform – that’s if there are any discernable reforms.

It may be a while before we see any key decisions to do with IP that will directly affect the costs, strategies and prevalence of IP litigation, but even in the absence of specified ‘positions’ during the Presidential campaign, there appears to be an expectation for the new administration to have a formal position on intellectual property reform soon.

Sources:
http://www.wsj.com/articles/donald-trump-scores-legal-win-in-china-trademark-dispute-1479169494
http://www.ipwatchdog.com/2016/11/11/mike-pence-provides-substance-trumps-patent-policies/id=74631/

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Google vs Oracle: APIs and ‘fair use’

July 19, 2016 under all posts

Google vs Oracle: APIs and 'fair use'Earlier this summer the high profile legal battle between Oracle and Google took a new turn, when a Federal Jury found that Google’s use of certain Oracle code in its android system was permitted under the doctrine of “fair use”. The case caused shockwaves through the industry all the way back in 2013 when an appellate court held that Oracle’s “Application Programming Interface” (API) code was entitled to copyright protection, overturning decades of legal precedent. APIs are pieces of code that allow pieces of software to communicate with one another and as such developers often incorporate third party APIs without a license to allow for interoperability. The court’s decision to extend copyright protection to APIs therefore could leave many open to accusations of copyright infringement; unless, like Google, they can prove the unlicensed incorporation of the code is permitted under the doctrine of fair use.

Technology behemoths Oracle and Google have been engaged in a 6 year dispute over whether Google’s use of Oracle APIs in the Android operating platform constituted copyright infringement. Multi-billion dollar suits between large tech companies are something of a common occurrence in the US and not something we regularly report on as they are of only a passing concern to our clients. The Google & Oracle dispute is different though, as the legal questions at the heart of the case impact the software industry as a whole, indeed they do so to a degree that is difficult to overstate.

In order to understand why the Oracle and Google case matters so much to the industry, it is necessary to first unpack the cryptic acronym “API”. APIs or Application Programme Interfaces are essentially blocks of code that allow a piece of software to operate with another piece of software. A Guardian article on the topic used the rather helpful analogy of a plug socket, which allows electrical devices to interface with the electricity grid.

Up until the Google & Oracle dispute, the courts in the US had uniformly held that APIs were not protected by copyright, predominantly because copyright protects means of expression rather than ideas or functionalities, and APIs were held to be the latter. However, in 2013 the Federal Circuit Court of Appeals overturned decades of rulings and held that APIs did in fact warrant copyright protection.

The decision has been heavily criticised both in the software industry and the legal profession. Many feel that the software industry has thrived as a more narrow interpretation of copyright encouraged a software ecosystem where developers could enhance interoperability without needing to obtain a license. Oracle, however, contested that Google had generated billions by using 37 Java APIs verbatim in their operating system, and that, given they could have written their own APIs to achieve the same functionality, this was simply unfair.

Despite these criticisms the copyright-able nature of APIs is now an established legal doctrine. Indeed, Google conceded this and sought to defend the case under the doctrine of “fair use”. This is an equitable doctrine in US Copyright law which allows copyrighted works to be used without a license in a strict set of circumstances. As it is an equitable doctrine the courts have a degree of leeway in interpreting it – basically, the decision comes down to a fairly subjective test of “fairness”.

Google’s fair use defence was deemed valid at the end of May by a federal jury in San Francisco, to the surprise and likely relief of many in the industry. Whilst this is a victory for those who believe in a more laissez faire copyright system, structured to encourage interoperability and innovation, the fact remains that APIs are now subject to copyright, and anyone using a third party API without a license will have to justify that use under the fair use doctrine. There is now a significant risk that other companies with valuable and ubiquitous APIs may sue to enforce their copyright.

A more in depth account of the case and the issues it addressed can be found here on the guardian website: https://www.theguardian.com/technology/2016/may/26/google-wins-copyright-lawsuit-oracle-java-code

Our experienced in-house IP team can help you understand your clients’ intellectual property exposures and tailor the perfect cover for them. Find out more about our IP insurance products on our website by clicking here.

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The Sippy Cup Saga

June 28, 2016 under all posts

The Sippy Cup SagaDespite its cutesy and unassuming name, the Sippy Cup, a type of spill-proof drinking cup designed for toddlers, has been the cause of a long drawn-out legal dispute which has already resulted in a seminal development for US Design Right law. The device utilises surface tension to prevent liquid from being spilled from the cup unless the child is drinking. Designed originally in 1988 by parent and engineer Richard Belanger, the first Sippy Cup created a new market for “training cups” intended to transition infants from bottle feeding to cup drinking.

The original product was protected by a US design patent. For those of you who aren’t familiar with this US IP right: design patents cover the aesthetic qualities of a three-dimensional object and offer the owner a monopoly on the design for a period of 14 years – as opposed to the 20 years afforded by a utility patent. They are granted by the US Patent and Trademark Office, which determines the eligibility of the design for protection by examining whether it is novel and non-obvious.

Of course, the design for the original Sippy Cup is long past its expiry; it is a successor product designed by Luv N’ Care Ltd. that has been at the centre of a recent high profile legal dispute. The Luv N’ Care Sippy Cup is one of the most successful on the market, and, likely as a consequence of this success, one of the most imitated. The company brought an action against Munchkin, Inc. and Toys “R” Us, Inc. in January 2012 alleging infringement of a single Design Patent D617,465. Rather than defend on the basis of non-infringement, the defendants chose to challenge the validity of the design patent on the basis that it lacked novelty. From a legal perspective, the dispute took an interesting turn at this point, as the defendants sought to use the recently instituted process of Inter Partes Review before the Patent Trials and Appeal Board (PTAB) to challenge the patent, making them the first to use the process for a design rather than utility patent.

The reviews carried out by the PTAB are far more limited in scope than a full trial and are concerned only with assessing the validity of a patent on the basis of novelty. Having such a limited scope of review makes the PTAB process significantly cheaper, at least in the short term; it also has the potential to offer a much swifter resolution of the dispute than a full trial.
That said the process is not without its pitfalls, both for patents in general and for design patents in particular. Also the PTAB has been accused of having little experience in the field of design patents.

In the case of the Luv N’ Care design the PTAB found that the design was in fact invalid due to lack of novelty, finding a number of examples of prior art which appeared to show designs for Sippy Cups substantially similar to the Patent Owner’s. Although the PTAB’s decision was later affirmed by the Federal Circuit, Luv N’ Care have sought a Supreme Court review of the invalidity proceedings on the basis that the PTAB failed to follow “fundamental” rules of due process when they raised two new issues during the trial without giving the company time to respond. It remains to be seen whether or not the Supreme Court will hear the petition, so the eventual outcome of the case remains unclear. The case does demonstrate one fact very clearly though: that even the simplest seeming products can generate lengthy and costly disputes.

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