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Friday Fantasies

 The IPKat, India bound

India's new Intellectual Property Policy. The IPKat has been racking up the airmiles over the past week, investigating the Indian government's new IP policy. The policy promises to streamline the processes for applying for trade marks and patents and establish specialist courts for IP disputes.  The policy lists several key objectives, including:

• To modernize and strengthen IPR administration.  In particular, Finance Minister Arun Jaitley has pledged to reduce the time period for registering a trade mark to one month by 2017.
• To strengthen the enforcement and adjudicatory mechanisms for combating IPR infringements.   

Many thanks to Katfriend R.S. Praveen Raj, a former patent examiner for the Indian government, for informing the IPKat about this development. You can read the full policy here.

Paramount Pictures opposes trade mark application by shoe emporium:  Paramount says it has been using its trade mark since 1972. The Sneakerdon applied to register its trade mark in the US in August 2015. Paramount Pictures has opposed Sneakerdon's application. Sneakerdon may try the parody defence, but this is always a difficult argument before the USPTO. It may be that that Snearkerdon's application will shortly be resting with the fishies.... 

IP gets a mention in the Queen's Speech:  At the State Opening of Parliament, the Queen announces the laws that the government hopes to get approved by Parliament in the coming year. This year's speech, given earlier this week, promised to bring in a new bill to tackle unjustified threats relating to IP rights.  Yesterday, Baroness Neville-Rolfe, Minister for IP, introduced the Intellectual Property Unjustified Threats Bill in the House of Lords (track the status of the Bill here).  According to the IPO's e-mail update the Bill will:

She who wears the crown,
said very little about IP
this year....

"help create an IP environment that favours negotiation and settlement rather than litigation. It proposes changes that help clarify the existing provisions making the provisions more consistent across the relevant IP rights - patents, trade marks and designs."

Key elements of the Bill include:

• protecting retailers, suppliers and customers against unjustified threats
• bringing the law for trade marks and designs into line with that for patents by allowing a rights holder to challenge someone who is a primary actor without fear of facing a groundless threats action
• protecting professional advisers from facing personal legal action for making threats when they act for their clients
• making the necessary changes to threats law so that the protection against unjustified threats can apply to European patents that will come within the jurisdiction of the Unified Patent Court

Thanks to Robert Watson at Mewburn Ellis LLP for spotting this in the Queen's Speech and Vicki Salmon (IP Asset) for flagging the IPO's statement.  If you have any questions please feel free to email them to IPUnjustifiedThreats@ipo.gov.uk

AIPPI Trade Mark Reform seminar:  As summarized in the guest post earlier this week, AIPPI's seminar on the Trade Mark Reforms elicited a great deal of debate and discussion.  If this left you wanting more, you can delve back into the detail of the evening via a guest contribution from Alex Woolgar (Allen & Overy) which has been posted on the MARQUES Class 46 blog here.

WIPO's roving seminar takes them to France:  The IPKat is pleased to announce an excellent (and free) opportunity to learn about WIPO and network with like minded professionals at two events being held in France - the first in Paris (7 June 2016) and the second in Lille (9 June 2016).  Presentation and event materials will be in French. For more information and to sign up click here.

Fancy contributing to the Kat. Be it by Guest Post or Comment, have a quick read of our policies here and get writing/commenting.

The IPKat IP Limerick Competition

Readers with a keen eye on their diaries will have noted that we have had in rather short succession World Intellectual Property Day on 26 April and National Limerick Day on 12 May.  The IPKat has decided to merge the two, and wishes to announce the running of an IP Limerick Competition.

To get readers in the mood, he will offer his own piece, which was in turn prompted by one from his friends at Managing Intellectual Property, whose opening lines he stole borrowed was inspired by.

The judges at the Supreme Court
Don’t always do what they ought
And so they malign
A breakthrough design
Whose representations fall short.

This pays homage to the recent Trunki decision, reported by the IPKat here.

So, for this competition, contestants are invited to contribute a limerick on the subject of a decision from a supreme court (or similar - including CJEU and Bundesgerichtshof*) in any country in the the world on any intellectual property or related matter.  The limerick should conform to the traditional aabba rhyme pattern of the example above and at least pay homage to the customary scansion. The submission should also include a reference to the case being referenced, and a very brief (50-100 words) precis of its subject matter.  Please identify yourself in your submission - anonymous submissions will be disregarded.   (*the IPKat realises that this will offend purists, but is adopting a purposive construction)

Please email your submissions to ipkatlimerick@gmail.com  Submissions made elsewhere (eg in the comments section of this post) will not be considered in the competition.

It is up to you whether you wish to complimentary or disparaging of the judgment concerned.  UK-based readers may wish to bear in mind that while scandalising the judiciary no longer constitutes contempt of court in England and Wales, the IPKat seems to recall that murmuring judges is still an offence in Scotland.

Submissions will be judged according to arbitrary and undisclosed criteria by this Kat and a volunteer from Managing Intellectual Property.  MIP has also kindly agreed to donate the prize, which will be one complimentary place at a Managing IP event of the winner's choice within the next 12 months.  This will include catering and CPD, but will exclude travel and accommodation expenses.

The deadline for submissions is 23 June 2016 - the same day as the UK vote on whether to leave the EU, to help you remember.

Authors will retain copyright in their submissions, but, by submitting their entries, grant the IPKat a licence to publish on this blog any entries that he chooses, including the winner and runners up. They will then be subject to the usual IPKat Creative Commons licence (see the IPKat sidebar).

BREAKING: Mr Justice Green rejects judicial review challenge to UK's tobacco plain packaging law

The AmeriKat's version of plain packaging....

This morning Mr Justice Green handed down his 386 page decision in Tobacco Packaging [2016] EWHC 1169 rejecting applications for judicial review brought by several of the world's tobacco manufacturers in respect of The Standardised Packaging of Tobacco Products Regulations 2015  - the plain packaging rules - which are set to come into effect in the UK tomorrow.

The Regulations were introduced, in part, to the policy established by the World Health Organization (WHO) in the Framework Convention on Tobacco Control (FCTC).  The FCTC provided a series of measures that contracting states were encouraged to adopt, including the prohibition on advertising on packaging and upon tobacco products (refereed to in the judgment as "standardized packaging" or commonly referred to as "plain packaging" - see Kat posts here).  The decision summarizes this provision as follows:

"At base it involves a substantial limitation being imposed upon the ability of manufacturers to advertise or place branding upon the outer packaging or the tobacco product itself. The Regulations do not however involve all tobacco products being sold in a homogeneous, undifferentiated manner. The manufacturers can still place the brand name and variant name upon the box and in this way they can still communicate their identities to consumers and differentiate themselves from their competitors. But the manner in which the name and brand may be used is highly regulated in order, in effect, to strip away as much of the attractiveness of the branding or advertising as possible."

Directive 2014/40/EU (the TPD) is the European legislation that implements the mandatory part of the FCTC.  The Directive required certain restrictions to be introduced into Member States' laws in respect of the labelling and packaging of tobacco products.  The TPD introduced a series of prohibitions relating to the presentation and appearance of different products.

Australia was the first country to introduce plain packaging restrictions.  Giving evidence in this case, the Australian Government stated that, as confirmed by their post-implementation review, the legislation is working well, with data demonstrating that the measures were having a desired effect on the prevalence and use of tobacco in Australia.   The UK Regulation was introduced without the benefit of the analysis of the Australian evidence on the basis that the UK Parliament considered that there was a real risk to public health and welfare if there was a delay in introducing the Regulation pending a full-blown analysis of the Australian evidence.   Based on the evidence available, the UK Parliament felt that the measures in the Regulation would be effective.

The Grounds

The manufacturers contended that the Regulations were unlawful under international, EU law and domestic in numerous respects. Mr Justice Green consolidated these arguments into 17 Grounds of Challenge.  Most of the the Grounds will be of interest to trade mark lawyers.  In particular, in relation to Grounds 6-8  - Non-expropriation of property without compensation -the judge summarized his findings as follows:

"I reject the submission however that the rights have been expropriated. Title to the rights in issue remains in the hands of the tobacco companies; the Regulations curtail the use that can be made of those rights but they are not expropriated. Indeed, the rights remain important in the hands of the tobacco companies because the word marks can still be used on packaging and will serve their traditional function as an identifier of origin. I accept that the figurative marks cannot be used in this manner but they still have certain, admittedly very limited, vestigial uses, which the Regulations do not curtail. Further the restrictions imposed pursue a legitimate public health based interest; a conclusion not challenged by the Claimants. These two factors (retention of title and measures imposed for legitimate public interest reasons) are in large measure sufficient to defeat in law the submission that the rights have been expropriated." 

What does a trade mark actually do - exclude or use?

Diving into this finding, you will find an interesting section on the judge's analysis on how to define a trade mark right - is it a negative right to exclude or a positive right to use?  The decision goes through a long analysis of the case law on the nature of trade mark rights.  Counsel for the Secretary of State argued that it is a negative right.  Because the Regulation merely limited the "use" of trade marks they did not strip away the trade mark owner;s right to prevent or exclude others from using their mark (citing Arnold J in Pinterest v Premium Interest).

Counsel for the manufacturers said that this position was artificially narrow in that it did not look at the "essence" or "substance" of a trade mark, since the real value of a trade mark for the purposes of Article 1 of the First Protocol of the ECHR is in its commercial exploitation (i.e. its use).  A trade mark would be an "economic hollow shell" if it could not be so used.  The "substance over form" analysis was the relevant test when looking at the Charter.  Under the Regulation, symbol or figurative marks could no longer be used at all either on packaging or on the tobacco products themselves, whereas the name trade marks could at least be used albeit only in a highly circumscribed manner.  Counsel for the manufacturers also cited the High Court of Australia's decision in JTI International v Commonwealth of Australia where the court accepted that the Australian measure had, in respect of the trade mark rights:

“rendered useless for all practical purposes”, according to Heydon J, at 216); and on the basis that “rights to exclude others from using property have no substance at all if use of the property is prohibited” (according to French CJ, 37); and that “each property right conferred included a right of use by the owner” (according to Heydon J at 216); and/or that the owners’ proprietary rights included “the right to turn the property to valuable account by licence or assignment” (Crennan J at page [264]. 

Mr Justice Green concluded at [744] that:

"It follows that in delineating the property rights in issue a Court is not confined to the narrow and legalistic task of identifying and “classifying” what the bare minimum legal essence of the right is.  And as to practical, real world, substance it is clear, and was not in fact disputed by the Secretary of State, that the economic value of a trade mark lay in its use as well as its ability to exclude. In particular, the commercial value of a trade mark lay in its ability to forge links of recognition or identity and reputation in the mind of consumers. The Claimants adduced a substantial body of evidence on this which included evidence of international transactions where trade marks had accounted for a significant portion of the consideration paid."

Even so, Green J concluded that the substance of the rights have not been wholly destroyed, although he did accept that they had been "significantly and even substantially diminished".  At [745] he held:

"On the contrary the rights retain important functions. Regulation 13 explicitly protects against revocation for non-use and preserves the rights attached to registration and hence the right to prevent others from using the trade marks in an unauthorised manner. This is not, as was submitted, an illusory or fictitious exercise; on the contrary the Regulations permit tobacco companies to both place their name and the brand name on the packaging. As such the trade marks still serve their core function as an identifier of origin."

In his summary of the decision, Green J stated that:

"I accept that the Regulations do substantially limit and restrict the use of those rights but they do so for entirely proper and legitimate reasons and they do so striking a fair balance between the right to property and opposing public health interests and rights.  I have in this regard rejected the contention that the tobacco companies should entitled to any compensation at all.  I cannot see any logical or rational basis for imposing upon the State a duty to pay compensation to the tobacco companies for ceasing to engage in an activity which facilitates a health epidemic and imposes vast costs upon the state.

...

When one stands back from the immense detail of these challenges, as the Secretary of State submitted during the hearings, the essence of the case is about whether it is lawful for States to prevent the tobacco industry from continuing to make profits by using their trade marks and other rights to further what the World Health Organisation describes as a health crisis of epidemic proportions and which imposes an immense clean‐up cost on the public purse.
In my judgment the Regulations are valid and lawful in all respects.   

There is no basis upon which I could or should strike down the Regulations or prevent them coming into effect tomorrow. "

This judgment follows the CJEU's decision earlier this month holding that the TPD is valid (see decision here).  The AmeriKat plainly has not read all 386 pages of the decision in detail, so imagines that there will be a wealth of further analysis on the decision to come and its bearing on trade mark law and principles.  In the meantime, Reuters is reporting that BAT is planning to appeal the decision, whereas Philip Morris has not (see press release here).  

Evidence Based Policy Making – Beliefs and a Book

C-Cat by Becky Zimmerman

A curious thing is happening.  I'm questioning the sanctity of evidence-based policy making (EBPM). Or, perhaps more accurately, I'm questioning a utopian vision of evidence and instead coming round to a view where evidence is more subjective, and the policy making process more complex.  My doubts (noted here, here, here, here and here -- oh, perhaps this isn't such a new thing) are expressed eloquently in Paul Cairney’s new book “The Politics of Evidence-Based Policy Making.”

Cairney delves into EBPM with the general approach that, “if you want to inject more science into policymaking, you need to know the science of policymaking.” It contrasts the idealistic linear view of researchers, with the chaotic reality of policy making.  Policymaking isn’t a Modrian, it’s a Monet.

The fundamental approach of EBPM is that policy can, and should, be evidence based.  However, Cairney notes this is a problematic start and instead describes EBPM as an aspirational term.  To complicate things, there is no single definition of policy, policymakers or evidence. Cairney suggests the following:

• Policy – “the sum total of government action, from signals of intent to final outcomes”
• Policymakers – “the people who make policy” who are either elected or unelected, and either people or organisations
• Evidence – “an argument or assertion backed by information” broadly

IPKat readers have expressed diverse views of EBPM in IP.  Fortunately for economists (who are the main producers of evidence), and perhaps unfortunately for others, IP policy is a classic example of "punctuated equilibrium theory." Cairney describes this as long periods of stability that are punctuated by profound bursts of instability and change. The development of the global economy and rapid technological change have given us TRIPS and trolls, spurring two decades of IP policy change. Cue the rise of economists in consulting, IP offices and academia (and soon, if not already, in law firms).

For a pure form of EBPM to exist, which he argues it does not, Cairney suggests it would have to meet the following assumptions (I've added in brackets how the assumptions don't fit IP):

1. The values of society are reflected in the values of policymakers (what are our social values for IP? are they consistent?)
2. A small number of policymakers control the policy process from its centre (in the UK alone, IP is subject to the UK IPO, EU IPO, EPO, WIPO, border force, police force, the courts...)
3. We can separate the values, required by policymakers to identify their aims, from the facts produced by organisations to assess the best way to achieve them (research, by lobbyists and academics alike, begins from a certain point of view, separating 'facts' from values is difficult)
4. An organisation acts optimally by ranking its aims according to its leader's preferences and undertaking a comprehensive search for information (what is the most important IP issue at the moment? how long is it likely to be considered the 'most important'?)
5. Policy is made in a 'linear' way: policymakers identify their aims, the bureaucracy produces a list of all ways to deliver those aims, and the policymakers selects the best solution (try to describe, for example, the policymaking process of the Unitary Patent as 'linear.')

Cairney carefully and deliberately dispels many EBPM myths. He notes a series of problems which challenge a 'pure' form of EBPM.  A key one is "the lack of reliable or uncontested evidence on the nature of a policy problem," which, in IP, is an on-going challenge. Another issue is, "the tendency of policymakers to decide what they want to do, then seek through evidence, or distort that evidence, to support their decision." A word to the wise on this last point - make sure you know who's making the decision before you point fingers. He also argues that:

• Even if 'the evidence' exists, it doesn't tell you what to do
• The demand for evidence does not match the supply
• Policymakers make choices in a complex policymaking system in which the role of evidence is unclear

As Cairney puts it, "in the real world, the evidence is contested, the policy process contains a large number of influential actors, and scientific evidence is one of many sources of information." I'd described policy making in general as akin to an extended family choosing which film to watch. Uncle Alex campaigns for Barbarella, cousin Vic, holding the remote, decides you’re all watching Hulk until your sister Pat throws a tantrum unless you watch Frozen. You might consult the Rotten Tomatoes rating, but you're convinced that critic from the New York Post is on the payroll of a major studios and the popular rating seems to have been spammed by bots... In the end you watch a Jude Law rom-com. And that’s the simplified version.

Catarella

Barbarella as a cat

All is not lost, Cairney supports a realistic view of policy making and makes suggestions as to how to pragmatically work within it. This book is handy for those trying to influence EBPM as it lays out strategies and analytical frameworks to understand the policy making process. There are discussions on the hierarchy of evidence, examples from health and the environment, and detailed analysis of theories of the policy process. It is clearly directed at researchers, which I found a bit one-sided at times.  While the book focuses on the bounded rationality of policy makers, it skims over the equally bounded rationality and biases of researchers.

The book's observations will not surprise the good civil servants at national and international IP organisations.  However, it is somewhat jarring to see the process spelled out.  Don't worry EBPM, I'm still a believer.

"The Politics of Evidence-Based Policy Making," by Paul Cairney, Palsgrave Pivot, 2015 is available for £45 hardcover and £30 e-book. Rupture factor: Low, this pretty little book is just under 140 pages.

Federal Circuit Distinguishes Enfish in New Patent Eligible Subject Matter Decision

The patentability of computer-implemented inventions has been in doubt in the United States since the U.S. Supreme Court decision Alice Corp. v. CLS Bank.  However, the recent Enfish v. Microsoft case provided some hope to those who favor patentability of computer-implemented inventions.  The Federal Circuit has issued another patent eligibility decision, TLI Communications v. AV Automotive, et al.  Notably, both Enfish and TLI Communications are authored by Judge Hughes--and reach opposite results, but on different facts.

Same Judge?  Ah, different facts.

On May 12, 2016, the Federal Circuit issued Enfish v. Microsoft, which found a computer-implemented invention patent eligible.  Enfish and DDR Holdings v. Hotels.com are the only Federal Circuit cases which have found computer-implemented inventions patent eligible post-Alice.  Notably, Enfish provides guidance as to how to apply the first step of the Alice test--whether the claims are directed to an abstract idea.  The author of Enfish is Judge Hughes. 

On May 17, 2016, the Federal Circuit issued another patent-eligibility decision, TLI Communications v. AV Automotive, et al, also authored by Judge Hughes.  In TLI, the Federal Circuit decided that a district court properly dismissed a claim based on patent eligible subject matter. 

The invention at issue in TLI Communications "relates generally to an apparatus for recording of a digital image, communicating the digital image from the recording device to a storage device, and to administering the digital image in the storage device."  The problem in the prior art concerned locating and organizing digital images when there are numerous archived images.  The asserted solution provided by the claimed invention is to "[provide] for recording, administration and archiving of digital images simply, fast and in such a way that the information may be easily tracked." 

In distinguishing Enfish, Judge Hughes stated:

"We recently clarified that a relevant inquiry at step one is 'to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.' [See Enfish v. Microsoft Corp (Fed. Cir. May 12, 2016)]. . . . Contrary to TLI's arguments on appeal, the claims here are not directed to a specific improvement in computer functionality.  Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.  According to the [patent at issue], the problem facing the inventor was not how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data.  nor was the problem related to the structure of the server that stores the organized digital images.  Rather, the inventor sought to "provid[e] for recording, administration and archiving of digital images simply, fast and in such a way that the information therefore may be easily tracked." . . . The specification does not describe a new telephone, a new server, or a new physical combination of the two. The specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms." 

Time to count the votes.

Judge Hughes further explains that the structure in the claims concerning a "telephone unit" and server operated as those things ordinarily operate--"the focus of the patentee and of the claims was not on an improved telephone or an improved server."  This also meant that that the claims were "not directed to a solution to a 'technical problem'" or did not "attempt to solve 'a challenge particular to the Internet.'"  Judge Hughes concludes that the claims are "simply directed to the abstract idea of classifying and storing digital images in an organized manner" and thus, satisfy the first step of the Alice test. 

Under step two of the analysis--whether there is an inventive concept, Judge Hughes states: "the components must involve more than performance of 'well understood, routine, conventional activit[ies]' previously known to the industry.  . . . We agree with the district court that the claims' recitation of a 'telephone unit,' a 'server', an 'image analysis unit,' and a 'control unit' fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability."

Even though Judge Hughes wrote both Enfish and TLI, the composition of the panels is quite different.  The Enfish panel included Judges Moore and Taranto.  The TLI panel included Judges Dyk and Schall.  The DDR Holdings v. Hotels.com decision finding a computer-implemented invention patent eligible was authored by Judge Chen and joined by Judge Wallach.  Judge Mayer dissented.  There are now five Federal Circuit judges who appear to lean toward favoring patentability of computer-implemented inventions: Hughes, Moore, Taranto, Chen and Wallach.  If Enfish is heard en banc, it may be a close decision.  Importantly, Enfish provides important guidance for step one analysis under Alice and a general attitude supporting patent eligibility for computer-implemented inventions.

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