March 2015
1. General
United Kingdom
UK Groundless Threats Provisions to be Reformed
The UK Government has issued a response to the Law Commissions Report on groundless threats, which is in respect to provisions in the Patents, Designs and Trade Marks Acts, but not the Copyright Act.
The review was sought because of concerns that the threats provisions are overly complex and do not work as intended. The intent behind the provisions is that IP law should protect certain types of business from being unfairly threatened with legal action for infringing another party’s IP. In particular, they seek to stop threats being made for the purpose of intimidation or to seek an unfair advantage where no infringement of an IP right has actually occurred.
The Government accepts the Law Commission's conclusion that the threats provisions should be retained but with some reforms. The proposed reforms will:
• make sure that the threats provisions are much clearer
• make it easier for parties to make good faith attempts to settle IP infringement disputes before litigation, and
• stop legal advisers from being subject to threats and accusations when the dispute is between the parties that they represent.
2. Patents
Australia
Court Construes Meaning of 'Means For'
In Garford v DYWIDAG Systems one of the issues before the Full Court of the Federal Court was determining the appropriate construction of a claim containing ‘means for’ claim language. The appropriate construction was required for determining whether one of the patentee’s earlier applications had anticipated a later patent.
Claim 1 of the patent was directed to:
An apparatus for manufacturing multi-strand rock bolts having spaced apart bulbs formed therein, characterised by a feed means for supplying a multi-strand cable from a rotatable supply reel …
In the earlier Trial judgment the earlier patent application was held to not anticipate this claim because it did not ‘disclose the presence and use of a rotatable supply reel as part of the apparatus that is described’.
However, on appeal, the Full Court modified the question to be answered to ‘whether claim 1 requires that the apparatus have a rotatable supply reel or that it merely be capable of receiving cable from a rotatable supply reel’. The Full Court found that a claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose. In applying the reverse infringement test for establishing novelty it was held that to establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose.
The evidence established that the apparatus disclosed in the earlier application was suitable for use with a rotatable supply wheel and therefore anticipated the claim.
Europe
Swiss-Type Claims Not Suitable for 'Use of Device' Claims
In recent decision T773/10 the EPO Board of Appeal rejected an application that claimed as a second-medical-use in the Swiss-type format the use of a device to produce an appliance for medical purposes. In particular, claim 1 was directed to a new use of a dialysis membrane.
While being primarily concerned with exclusions to patentability, Article 53(c) of EPC 2000 recognises that products other than substances or compositions could be patentable. Articles 54(4) and (5) of EPC 2000 provide exceptions to novelty destroying disclosures for new medical uses of known substances or compositions.
The applicant argued that its new use of a dialysis membrane should be covered by the novelty exception provided under Article 54(5). In particular, it was argued that the dialysis membrane qualifies as a substance or composition within the meaning of Article 54(5) on the basis that ‘substance’ and ‘composition’ should be construed broadly to include any product for any specific use in a method referred to in Article 53(c). In this regard, the applicant argued that the relevant legislative drafting of the EPC 2000 was focused on the new uses of products of the pharmaceutical industry, but there was no intention to exclude any other medical products from the Article 54(5) exception.
However, the Board found no evidence to support a wider legislative intent and so held that the scope of the term ‘substance or composition’ in Article 54(5) does not extend to all products for a specific use in a method referred to in Article 53(c).
The Board also rejected the argument that the specific dialysis membrane of claim 1 should be considered a ‘substance or composition’ within the meaning of Article 54(5) EPC. In contrast to previous precedent the claimed dialysis membrane did not contain any further substance that might constitute an active ingredient. The Board noted that it was not decisive that the dialysis membrane could perform the same function as a drug. The Board also did not consider the membrane a single-use product consumed during use, because the reason for not re-using merely was fouling, which could theoretically be removed.
3. Trade Marks
New Zealand
Applicant Contravenes Restriction on Registration of Certification Mark
In Commissioner’s Decision [2015] NZIPOTM 1 UL LLC was denied registration of its certification mark (819001) which contains as a prominent element essentially the same mark that UL has registered in relation to the same or similar services (181136).
Section 14(b) of the Trade Marks Act 2002 prohibits the owner of a certification trade mark from trading in goods or services of the kind certified. IPONZ argued that registration 181136 is evidence that UL trades in the same kind of services. IPONZ stated that it could only register the certification mark in UL’s name if UL first cancelled registration 181136.
The Commissioner considered that the determination of whether the same kind of services are being covered boiled down to whether ‘testing and inspection services’ are of the same kind as ‘quality control services’.
In making that determination, the Commissioner considered that the public interest provision in section 14(b) that certifying authorities are independent meant that the phrase “services of the kind certified” therein should be given a wide interpretation. Consequently, the impression of independence requires that any distinctions between the services certified and the services provided by the certifier should be clear and not rely on subtle differences. The Commissioner held that, subtle differences aside, ‘testing and inspection services’ are sufficiently similar to ‘quality control services’ to be of the same kind.
The next issue was whether UL carries on a trade in “testing and inspection” services. Here the Commissioner relied on the publically notified intention to use that registration 181136 was filed on the basis of. Given the 20+ years between that application and application 819001 it was held to be fair for consumers to assume that by now UL is in fact using the mark for its “testing and inspection” services.
UL had provided IPONZ with a statutory declaration specifying that it does not trade in the services covered by the certification mark and are content to have a memorandum to that effect entered against its 181136 registration. However, the Commissioner held that the respective services were nonetheless too similar and that the declaration would not override the public perception that there is a lack of independence and impartiality, since the certifier would be using a very similar trade mark on services of the kind certified.
United Kingdom
UKIPO Loosens Restriction on Registrations for the Retailing of Services
In a 2014 judgment the Court of Justice of the European Union (CJEU) confirmed that the retailing of services is in principle a commercial activity that is entitled to trade mark protection. The UKIPO has now issued a practice note to update its practice and outline what constitutes acceptable and unacceptable specifications for the retailing of services.
The CJEU judgment clarified that the term ‘services’, as used in both Directive 2008/95/EC and the Paris Convention, encompasses the ‘retailing of services’. Previously the UKIPO only allowed the retailing of services for applications in which the services were to be provided in the context of a shopping centre. However, the UKIPO’s will now accept claims to ‘the bringing together of…’ of almost any service, subject to that claim meeting the overall requirements for clarity and precision.
In its practice note the UKIPO states that it will accept specifications conforming to the following format:
‘The bringing together, for the benefit of others of (…specified particular services…) enabling customers to view and purchase those services’.
It is noted that how or where the services are being brought together (eg. ‘in a retail store’, ‘in a wholesale outlet’, or ‘from an Internet website’) need not be specified in the specification. However, the provision of such further information is encouraged on account of the increased clarity and precision it provides.
This practice is contrasted with specifications for the retailing of goods, for which a wide variety of specification formats are acceptable. However, the UKIPO considers that only the above format is acceptable for the retailing of services. As an example, the UKIPO states that it would object to the following specification:
‘Retail services connected with takeaway services.’
Such a specification would not provide a sufficiently clear distinction between the retailing of services and the provision of those services in their own right. Consequently, it would be suggested that the specification should be amended to:
The bringing together, for the benefit of others, of a variety of takeaway services, enabling customers to conveniently view and purchase those services from a [retail outlet/Internet website/other environment].