Jurisdiction to deal with foreign patents: Solvay goes all the way

Sticky issues go to the ECJ

Here comes another set of riddles for the Court of Justice of the European Union to resolve: it comes in the form of Case C-616/10 Solvay S.A v Honeywell Fluorine Products Europe B.V., Honeywell Belgium N.V. and Honeywell Europe N.V.  This was a reference for a preliminary ruling from the Rechtbank's-Gravenhage, The Netherlands, regarding the application of Articles 2, 5(3), 6(1) and Article 22(4) of Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the Brussels Regulation). Background to this reference can be found on PatLit, here.

The questions are as follows:

Regarding Article 6(1) of the Regulation:

In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, does the possibility arise of ‘irreconcilable judgments’ resulting from separate proceedings as referred to in Article 6(1) of the Regulation?

Regarding Article 22(4) of the Regulation:

1. Is Article 22(4) of the Regulation applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

2. In order for Article 22(4) of the Regulation to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the Regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of the Regulation are already pending or are to be commenced - within a period to be laid down by the court - or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

3. If question 1 is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of the Regulation has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

4. If question 1 is answered in the affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of the Regulation does not affect the jurisdiction of the Rechtbank to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

5. If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the Van Uden v Deco-Line judgment [Case C-391/95], between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?

This particular member of the IPKat team freely admits that, if Kats have Achilles' heels, the Brussels Regulation is definitely one of his, so he is keeping quiet about this one till he is faced with a neatly packaged, carefully reasoned judgment to criticise.  However, if any reader would like to comment on this case to the UK's Intellectual Property Office you can email the IPO at policy@ipo.gsi.gov.uk before 28 February 2011.

More Monday Miscellany

They thought it was a bicycle -- but it was
just a great ruse for importing Bauhaus chairs
across the Italy-Germany border

Earlier today the IPKat called for some gallant soul to give him some background on Case C-5/11 Titus Alexander Jochen Donner, which has been referred to the Court of Justice of the European Union for a preliminary ruling. What, he wondered, was it all about? The noble Tobias Irmscher has emailed this weblog with the crucial background knowledge (for which the Kats in unison sing his praise):

"The case concerns an arrangement for ordering unlicensed copies of Bauhaus furniture etc from Italy to Germany, for which no (enforceable) protection existed in Italy at the material time (between 2005 and 2008). Under this arrangement, a person ordering the items agreed that the transfer of ownership would take place in Italy at the Italian producer's storage facility; the purchaser would agreed to pick the items up in person or to arrange for its picking up by his agent. However, the order form contained an advertisement and an easy order possibility for the shipping services offered by the company of the accused Mr Donner, the services of whom were recommended. He was charged under sections 106 and 108a German Copyright Act with aiding and abetting the prohibited distribution of copyright-protected works in Germany.

While the court of first instance (Landgericht Munich II) recognised that the transfer of ownership took place in Italy -- where the production and distribution of the items concerned was not illegal at the relevant time -- they considered that, de facto, the transfer of the power of disposal took place in Germany where, because of the copyright protection, the distribution would constitute a criminal offence at the time. The decisive question for the Bundesgerichtshof was where - for the purposes of interpreting section 17 German Copyright Act (right to distribute) - the "distribution to the public" in terms of Art. 4(1) Directive 2001/29 [yes, that's right, says the IPKat, it's the Information Society Directive, specially designed to deal with hi-tech copyright in the information age and the movement of furniture across the Alps] took place. The court confirmed the first instance judgment that, in the present case and for the purposes of applying German criminal law, such distribution to the public took place in Germany, as this was where the items left the sphere of the vendor (whom the shipping company was only assisting).

However, the question was raised whether this application of national criminal law would result in an unjustified restriction of the free movement of goods under Articles 34 et seq. TFEU. The Bundesgerichtshof tends to agree to an application of the principles of the ECJ in EMI/Patricia (judgment of 24 January 1989, C-341/87) as proposed by the first instance court. This decision concerned only the different durations of protection, but it should be applied a maiore ad minus where there are only differences in the enforceability of similar rights.

The court order of 8 December 2010 (1 StR 213/10) containing the request for a preliminary ruling may be found here (German only), and a not-quite-up-to-date translation of the German Copyright Act can be found here".

Via Hut'ko's IT & IP Legal Blog comes news of an interesting reference which the German Bundesgerichtshof is making to the Court of Justice for a preliminary ruling.  The case is Oracle v UsedSoft, in which Europe's top court is being invited to rule on whether downloaded software may be traded as "used".    More details are available from UsedSoft's press release here and from the Bundesgerichshof's press release here.

It is with sadness that the IPKat records the death of Ron Hickman, an extraordinary inventor and enjoyably robust character, at the respectable age of 78.  Ron is best known for the invention sold successfully around the world as the Black & Decker WORKMATE work bench (right).  Ron's patents were heavily litigated because many people found it difficult to believe that a contraption made entirely out of ordinary items which performed their normal functions could ever be inventive -- but the invention lay in their ingenious configuration.  Ron was not a one-trick donkey, either.  He also designed the original Lotus Elan, a beautiful vehicle which this blogger could never contort himself sufficiently to get inside it.

Lotus Elan (actual size)

This member of the IPKat team met Ron when he spoke at the Institute of Patentees and Inventors meeting back in the 1980s and he was struck by Ron's direct, no-nonsense approach to problem-solving and his refusal to pontificate about the state of the patent system.  His invention was also one of the first to enjoy the benefits of a layered licensing structure with separate royalties expressed in respect of use of the patent, know-how, design drawings etc so that, if the patent was invalidated, the other bits of the licence could still generate income.

The IPKat thanks his good friend Tufty for breaking the news to him so gently.

"Win the game, lose the plot".  The IPKat is pleased to say that the seminar on plots, games and other copyright-protected (or unprotected) content, hosted at Hardwicke, Lincoln's Inn, on 9 March, is a complete sell-out.  There may still be some cancellations, so it's worth giving your name and details to Lisa Pick just in case.  More details of this seminar, in which three members of the IPKat team are participating, can be found here.

Kazakhstan comes in from the cold, takes trip to Nairobi

Borat gives the thumbs-up
to this exciting news

The IPKat is greatly excited by today's breaking news that the Republic of Kazakhstan is preparing to host the Olympic Games. Well, perhaps not just yet, but it appears from Nairobi Notification No. 55 (Nairobi Treaty on the Protection of the Olympic Symbol) that, on 9 February Kazakhstan deposited its instrument of accession to the Nairobi Treaty on the Protection of the Olympic Symbol which will enter into force there on 9 March -- just a couple of short weeks away.

Kazakhstan's Olympic Medal Record here
Kazakhstan's national sports here
Kazakhstan's revenge on Borat here

Monday miscellany

Another Titus has a tough time in Europe ...

Can Titus be lawfully convicted? Case C-5/11 Titus Alexander Jochen Donner is another reference for a preliminary ruling from the Court of Justice of the European Union. The IPKat didn't spot it coming till he saw Hugo's post on the 1709 Blog here. According to the UK's Intellectual Property Office, this case raises the following question which has been sent to the Court of Justice for a preliminary ruling:

"Are Articles 34 and 36 TFEU [that's the Treaty on the Functioning of the European Union] governing the free movement of goods to be interpreted as precluding the criminal offence of aiding and abetting the prohibited distribution of copyright-protected works resulting from the application of national criminal law where, on a cross-border sale of a work that is copyright protected in Germany

* that work is taken to Germany from a Member State of the European Union and de facto power of disposal thereof is transferred in Germany, 

* but the transfer of ownership took place in the other Member State in which copyright protection for the work did not exist or was unenforceable?

If you would like to comment on this case, says the IPO, please e-mail policy@ipo.gsi.gov.uk before 24 February 2011 [so you have three days in which to get your thoughts together ...].  The IPKat has no idea what the background to this reference is: can any kind soul from Germany who happens to read this weblog give him a hint?  Merpel agrees: how can we know whether to have sympathy for the poor, abused copyright owner or the poor, accused defendant unless we know what they're up to?

The Golden Gate: San Francisco's answer to London's
elegant docklands, home of the Rouse INTA reception ...

It is most ungentlemanly to nudge anyone while they're having a drink, but there's no harm in giving them a nudge when reminding them that drinks are on offer. Anyway, the IPKat has been asked to give a nudge to any of his readers who qualify to attend the pre-International Trademark Association (INTA) drinks reception which is hosted by London-based law firm Rouse on Thursday 10 March from 6pm to 8pm in its lofty Docklands perch. Says Rouse: "Everyone is welcome, whether they are attending this year's INTA Meeting or just looking to learn more about the event and what it has to offer".  This event is hosted by Karen Fong, in her official capacity as Vice-Chair of INTA's Law Firms Committee. Sir Robin Jacob will grace the event with, no doubt, a paean of praise for some recent trade rulings of Europe's favourite court. If you're planning to come, just email Hayley Hill here.

Websites that may easily give the impression of being official when they're not are not the exclusive domain of patent and trade mark law.  The IPKat's friend Charles Oppenheim has kindly drawn his attention to the official-looking UK Copyright Service (here).  Like the UK's Copyright Tribunal, which sports a yellow copyright symbol (right) on its webpage, the UK Copyright Service embeds a similar device in its own logo -- and the page gives a very official impression indeed.  The IPKat is curious to know whether any readers have had experiences of using the copyright registration service offered by the UKCSS, and what they think of it.


Further to Friday's post concerning the telephone survey conducted by TNS-BMRB into designs -- this apparently being a genuine survey, paid for by the government -- the IPKat is getting an uncomfortable feeling that this survey is being aimed solely at respondents who registered UK designs in 2009. He very much hopes that this is not the case, since only 2,111 registered designs were granted in that year, while there are estimated to be well over 200,000 designers in the country of whom the overwhelming majority do not rely on the UK registered design right for their continued survival in the tough world of design (non)protection. If this suspicion turns out to be correct, this curious Kat is dying to know what function the survey responses might perform.

IP Renaissance and IP Baroque: A Coda on IP Milestones

Several weeks ago I proposed a list of 25 IP milestones since the 1970s here. I was properly upbraided for omitting the creation of the EPO and I deservedly have egg on my face for listing 1998 as the year for the WIPO Copyright Diplomatic Conference (it was indeed 1996), especially since I was a member of my national delegation in Geneva during those unforgetable weeks of December of that year!

Those and other peccadillos aside in connection with my list, one overarching thought ran throughout my presentation of the master class based on this proposed chronology. In short, we have witnessed a 35-year period during which IP has gone from being more central, to being less central, in the context of innovation, entrepeneurship and technological advance, analagous to the declining centrality of rock and roll in music from its heyday in the 1960s to the present. Let me set out a bit more what I mean.

During the 1980s, we encountered a perfect storm whereby IP burst upon the scene, capturing popular consciousness and alligning itself with both the technological and political trends of the time, where high (or at least not low) IP protection was the dominant norm. The Reagan presidency, with a special ear to the needs of Silicon Valley and Hollywood, turned copyright into an instrument of public policy in the service of the entertainment and the software industries, while Microsoft (and Intel) leveraged network effects with business models based on the carrot and stick of IP licensing.

Patents were increasingly decoupled from competition law, as patents on both sides of the Atlantic as well as in Japan were now viewed as a central element in technology and innovation. Trade marks and brands were the object of multi-billion dollar transactions, becoming transactional assets and not merely the legal lynchpin for identifying the source of particular goods and services.

All during that time, politicians and international bureaucrats engaged in strenghtening and expanding the international framework for IP rights, first in response to the concerns of the pharmaceutical industry and later to IP rights more generally. Those were heady times, when we tended to believe that IP would be the once and future primary vehicle for facilitating the relentless spread of the knowledge industries.

Fast forward to 2011 and what do we find? The internet is, as has been famously said, "one great copying machine." If network effects in the 1980s enabled Microsoft and its ilk to enjoy substantial profits in the exercise of copyright and other IP rights, network effects today enable file-sharing and other downloading to take place outside any business model based on IP licensing and enforcement.

Further, to the extent that the internet is an efficient means for the creation and distribution of information, the copyright cognoscenti have narrowed the extent to which copyright law applies to such information. And open source licensing and distribution has replaced the direct licensing business model with a model that rewards Red Hat and Google rather than the owner of IP rights in the operating system. Copyright must now increasingly share space with the public domain and others.

Patents, reconceived in the 1980s as a potential handmaiden of competition, are now increasingly viewed as a potential exclusionary tool for unjustified legal exploitation. The patent troll is a term of opprobium in many circles and the explosion of registered patents is now accompanied with claims of "declining" patent quality. Even Pharma, for whom patent protection is a central part of its business model, struggles to develop a new generation of patented products to replace the various blockbuster drugs that are increasingly entering the public domain (and hence the domain of generic drug producers).

Never as now has IP enforcement been viewed with skepticism, not merely because of the digital world but also the challenge posed by China and other manufacturing powerhouses (perhaps somewhat analagous to the challenge posed in the 19th century to literary works originating in England but often copied without compensation by persons across the Pond in the U.S.)

Most significantly, IP plays less of a role for social media as it leverages network effects in its own way. Wikipedia's primary issue is the quality of its entries (often jointly composed); availability, and not the potential IP exclusionary aspect of Wikipedia contents, is predominant. For Facebook, privacy, and not copyright, is its major concern. At most, claims of IP infringement are viewed as a hindrance rather than as a central driver of the Facebook platform. Even for Google, perhaps the quintessential technological company, revenues ultimately rest in large part on its ability to have the marks of others used in such a way that there is no trade mark infringement of third party rights.

As for Apple, the principal buzz word is "ecosystem" and not "IP." True, the Apple brand is a key asset of the company, and true Apple still largely takes a closed rather than an open approach regarding which apps will be available on the various consumer platforms, all with access to the overall Apple ecosystem. But IP, as a component of its overall business strategy, is not to Apple as copyright was to Microsoft.


All in all, the role of IP in current innovation and development must be viewed as different from the role played by IP in the 1980s. To paraphrase a well-known aphorism, "I don't make predictions, especially about the future." How IP will unfold within the context of developments a decade or two hence is anyone's guess, and it will depend on the sum total of circumstances in place in those future times. What is important is to keep our eye on the contextual ball and to adjust the facilitative role of IP accordingly. Not every generation can be an IP Renaissance; but even IP Baroque is not all that bad.

Rogue websites, scams -- and the competition result

There's a wonderful book by T.S. Eliot called Old Possum's Book of Practical Cats (here). While the IPKat can't pretend that all the cats depicted in this volume are entirely practical, he likes to feel that -- despite his years in the fragrant groves of academe -- he can do something practical from time to time.  One of the practical things he does best is asking other people who are more practical than he to do the practical things he'd like to do if only he were a bit more practical.

It is with this in mind that the above preamble leads to some very practical information for which the Kat thanks a regrettably anonymous informant, who has done a bit of a test-drive of some of the intellectual property scammers which are listed on the website of the World Intellectual Property Organization (WIPO) under the heading WARNING: Requests for Payment of Fees [hold on, don't most of us aspire to that too ...?]. The review runs like this:

"I am sure that all patent and trade mark attorneys have experience of clients receiving invitations to pay fees for entering details of their application into a private register. Clearly this serves little purpose other than to line the pockets of the company making the invitation. A particular problem appears to be associated with International patent applications. Indeed, Jeremy has recently been highlighting his discussions with WIPO concerning one of these companies, WIPD (see here and back-links).

Having recently had clients who have (mercifully) contacted me to check whether invitations they have received are bogus, I have put together some information about the main and most recent offenders.

First, note that WIPO produce a list of the relevant companies, which they appear to update when they become aware of new ones. This is available here.

The companies fool prospective applicants by including similar information to that contained in official WIPO publications. The small print - which gets them off the hook - is well down their 'invitation' and unlikely to be read. Clearly the companies sending out the invitations are reviewing published applications. Recent experience suggests that WIPD and ODM are particularly quick off the mark on this front. Clients used to receiving valid invitations for payment of fees from third party renewal companies are perhaps more likely to be fooled.

Some of the companies actually have websites. Of the few reviewed, the WIPD site is perhaps the most professional looking. Thankfully search engines seem to list the WIPO warning towards the top. A number of Patent Offices and blogs also discuss the subject.

Here are some of the current offenders appearing at the top of the WIPO list:

WIPD (World Intellectual Property Database). International patent invitation is relatively professional, including information which mirrors cover sheet of PCT pamphlet published by WIPO. Website at http://www.wipd.biz/ (with new logo!) is also relatively professional, to the untrained eye, including some background information on patents and trade marks.

ODM (Patent Trademark Register). Appearance less like that of PCT pamphlet but containing similar information. No website located in brief search.

RIPT (Registration of International Patent). Appearance again less like that of PCT pamphlet but again contains similar information. Appears to have a website.

ITPD (International Trademarks & Patents Database). Appearance again less like that of PCT pamphlet but again contains similar information. No website could be found from brief search."

Now for the competition.  You can read the details in full here.  In short, the objective was to identify a good and affordable strategy for dealing with a rogue website operated by a World Health Organization lookalike.  Most of the entries didn't come close to acceptability for one reason or another, but here are the two best ones -- by Charlie Winckworth (Hogan Lovells) and Martin Husovec (member of the European Information Society Institute).  The Kat has decreed that both will be treated to the prize:, a pristine copy of Alex Tsoutsanis's excellent Trade Mark Registrations in Bad Faith, just published by Oxford University Press (details here).  Apologies are due to everyone for the delay in getting this posted: this member of the blogging team is insufficiently practical to devise a way of avoiding even a foreseeable and indeed diarised pile-up of work ...

Friday fantasies

"Don't forget to check the IPKat's Forthcoming Events page: you never know what surprises lurk just around the corner ...

Now here's an interesting proposition.  PatentlyBIOTech, citing the Milwaukee Journal Sentinel, states:

"-Many of the missing jobs – hundreds of thousands or possibly millions – are buried under the backlog of 1.2 million unprocessed patent applicatoins that have accumulated over the past 10 years at the U.S. Patent and Trademark Office.
-A single U.S. patent can create three to ten jobs.
-Nothaft estimates more than 2 million new jobs are buried in the backlog
-”Innovation is our competitve advantage… It’s not manufacturing costs. It’s not labor costs. It’s innovation and our ability to protect those innovations and turn those innovations into products.”"

The IPKat agrees that the backlog of unprocessed patent applications results in the loss of jobs that might otherwise be created, but he's curious to know the methodological basis on which the three-to-ten job figure is based.  Merpel expects that most of those jobs which are created will go to patent examiners and attorneys, though there might be some new jobs in industry and commerce too.

Congratulations are due to the International Trademark Association on the hundredth birthday of the Trademark Reporter.  Says the IPKat, that's quite an achievement -- and let's hope that the next hundred years provides us with as much food for thought, and perhaps a few more jokes, than the century that has just elapsed.  Merpel adds, if you think 100 years is a long time, you should see how long it takes me to read it ...

Of all the cheek!  IPKat reader Mary-Ellen Field received the following epistle this week which made her chuckle.  The author, as the context indicates, had been a bit liberal in his use of a third party trade mark. The letter reads thus:

"Thank you for your email.

I am not a stealer. I am a keeper of the trademark. 

First of all, I think you need to change your mind that only you can have the right for the trademark all over the world. 

Alphabet is a heritage of mankind. And a trademark is just enumeration of the alphabets. 

Anyone can enumerate alphabets. So, the international rule for trademark is that the right can be owned by only the person who registers the trademark except some special cases. 

If I am a stealer, the police will arrest me. But, the real is opposite. The police will protect me.

Anyhow, I want to do business you. I want to buy your products. I will do my best to sell your products. And I believe that you will be satisfied with me as your distributer.

I look forward to your samples and Price List".

Survey 1. The World Intellectual Property Organization (WIPO) is currently running a survey relating to the resolution of technology transaction disputes, which PatLit has urged its readers to complete.  You can read about it, and even respond to it, via PatLit here.


Survey 2. A UK reader's husband received a telephone call earlier this week from an organisation calling itself  TNS-BMRB (unsurprisingly, since that is its name).   She reports as follows:

"TNS BMRB was doing the government sponsored (10 Downing St) IPO survey on IP for small businesses (organised by Ian Hargreaves). They gave a contact name of Andrew Smith and number on 020 7034 2861. They then asked my husband two questions – how many people worked at his company, and whether he was aware of a design registration application on some date in 2009 (he thinks). They then said that was it! He phoned Andrew Smith who confirmed the survey as being genuine".

Has any other reader (or his or her spouse, partner or pet) been similarly troubled? And does anyone understand this curious mode of surveying IP awareness?

IP litigation in Turkey is fine, but
the pre-trial procedures can
be gruelling

Survey 3.  There's just one week to go before the close of the IPKat's favourite IP survey, the one which provides the raw data for the third Taylor Wessing Global Intellectual Property Index.  This is your chance to praise the places you think are best to litigate in, and to heap quantities of well-targeted opprobrium on those you don't.  The survey, which takes considerably less than 100 years to complete, can be accessed here.