Queen Mary Journal of Intellectual Property

Published by Edward Elgar Publishing
Online ISSN: 2045-9815
Print ISSN: 2045-9807
Publications
The paper argues that China is building its capacity to grant, use and enforce patents. The same is true of Brazil and India. China has the greatest potential of scale of any developing country to use the patent system as a wealth-maximizing tool. The paper considers three questions. Can China make the patent system work for it? If so, how will the US respond? What should the weaker members of the G-77 do in light of the fact that the leaders of the G-77 are no longer interested in dealing with the structural disadvantages that the patent system perpetuates?
 
The signing of the Leahy-Smith America Invents Act (AIA) by President Obama on 16 September 2011 is a landmark event in the history of American patent law. It has already been the subject of numerous articles on the web and in the law reviews as well as in the popular press. I have no intention here of going into all the details of the AIA, I just want to leave the reader with a sense for its eventual impact on American patent law. All the details are to be found in its 37 sections whose titles give the reader a good sense of the scope of the AIA. In one sense Section 1 says it all.
 
A general 'news' tag around which to hang the publication of celebrity ‘out-and-about’ pictures can trump ECHR Article 8 privacy rights with the Article 10 right to impart information. The fact that such pictures were not taken surreptitiously can also be an important factor in the proportionality balancing act between the two rights.
 
The relationship between standardization processes, intellectual property rights and competition rules has increasingly become of interest in the recent years. Recent investigations of the European Commission confirm that standardization processes and in particular ownership of IPRs that cover standardized technology might in certain circumstances infringe competition rules.The article first explores the meaning and different forms of standardization. It then analyses selected parts of the Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, in particular those parts that cover standardisation agreements. The Guidelines have been adopted by the Commission in December 2010 with a view to addressing the anti-competitive concerns stemming from inter alia standardisation agreements (eg, they encourage IPRs holders to disclose their exclusive rights before the adoption of the standard, as well as to give an irrevocable commitment to offer to license the IPR to all parties interested on a fair, reasonable and non-discriminatory terms: so-called FRAND commitment).The author will then present and comment on different points of view on whether the ownership of IPRs which cover standardized technologies really create market dominance capable of triggering anti-competitive behaviours. Finally, a set of additional solutions proposed by various legal scholars will be highlighted and commented.
 
This study analyzes the context, outcome and implications of the recent U.S. Federal Circuit decision in AMP v. USPTO, which was announced on July 29, 2011. The decision, which is also referred to as the ACLU/Myriad "gene patenting" case, partially overturned a much debated judgment by a New York District Court, which had held unpatentable claims to isolated DNA per se, as well as claims directed to diagnostic methods relying on the claimed DNA, and processes for cell-based drug screening. Part I first recapitulates the rather complex procedural history of this specific case and explains in more detail how it relates to the recently invigorated U.S. debate on patent eligibility and the U.S. Supreme Court decision in Bilski. Next, the basic outcome of the case will be summarized. The synopsis includes an account of the majority opinion authored by Judge Lourie, as well as a short description of the separate opinions by Judge Moore and Judge Bryson. Part II, which is deemed to be published in Volume 2, Issue 1, will provide a comprehensive analysis discussing the decision's actual potential implications from a broader innovation perspective, as well as the chances for an ultimate Supreme Court review. Based on the analysis, this article finally presents some general conclusions.
 
The development of the concept of privacy in English law has been heavily influenced by the existence of two mature and specialist areas of law. Libel law has traditionally focused on reputational privacy. Equitable remedies, such as breach of confidence, have broadened to protect seclusional privacy. These two areas of law – now developing through case law reflecting Articles 8 and 10 of the European Convention on Human Rights – are coalescing. This may lead to greater use of ‘responsible journalism’ techniques that address issues arising where prior notification of breaches of reputational or seclusional privacy becomes the norm.
 
Developing case law in relation to Norwich Pharmacal discovery litigation – coupled with the Supreme Court’s Phillips v Mulcaire decision about compelled interviews - shows a clear and distinctive trend towards protecting a broad range of intellectual property rights that may be damaged or infringed by unauthorised downloading or hacking. Statutory provisions in the Digital Economy Act 2010 reinforce the protection being given to copyright owners.However issues in relation to an individual’s personal data, clearly protected as an expressed stand-alone right the Article 8 of the EU’s Charter of Fundamental Rights, are only rarely being identified, articulated, weighed and given a separate identity in the proportionality balance conducted in the overt judicial reasoning that emerges from such litigation.When the Charter Article 8 personal data protection issues are actually identified in these intellectual property discovery situations then they are being analysed only by reference to EHCR Article 8 privacy principles which, it will be argued, ignores and detracts from a proper analysis and development of the essence of personal data enshrined in the EU’s Charter.
 
Climate change is imposing significant stresses upon agriculture at a time when more food is required for an increasing world population. Genetic engineering is mooted as a technological response to these difficulties. The modification of the DNA of major crop groups produces plants which are more resistant to drought, salinity and to pests. The patenting of climate-useful DNA provides an opportunity to protect the investment in the exploitation of this DNA. The international IPR regime based upon the WTO TRIPS Agreement enables the patenting of this DNA across the globe. As a matter of practice, this patenting is confined to a relatively small group of life-sciences companies. This market concentration has important agricultural policy implications, particularly for developing countries. This article analyses these issues, concluding that the impact of patenting upon food security is becoming as significant as the impact of patenting upon access to medicines.
 
The judgment of the European Court of Justice in the so-called Premier League cases (Joined Cases C-403/08 and C-429/08), which continues to generate intense debate, has serious implications for copyright, conditional access protection, the fundamental freedom to provide services and the application of competition law. While the judgment has often been looked at from the angle of fundamental freedoms and competition law, this contribution focuses on the copyright aspects of the case. It reviews the Court's assessment of the IPR subject-matter at stake as well as the scope of the reproduction right, the concept of communication to the public under Article 3 Directive 2001/29/EC and the potential meaning of 'appropriate remuneration'. As the Court of Justice continues to produce copyright decisions at an unrelenting pace, it is important to understand the approach that is emerging. The goal of this article is to make a modest contribution to that understanding.
 
Paris fashion houses retain control over pictures taken at their fashion shows by press photographers, whilst the latter want to make the pictures (commercially) available via a website. To justify the latter act and the copyright infringement apparently involved they invoke the right to freedom of expression. The European Court of Human Rights dealt in this case for the first time with the interaction between copyright, as a property right, and the right to freedom of expression.
 
The European Court of Justice ruling in Case C-263/09 Edwin Co. Ltd v Elio Fiorucci and OHIM has clarified the scope of commercial exploitation of one's name with respect to European Trademark Law, specifically with reference to situations where registration of a Community trademark conflicts with the right to a name. The Court concluded essentially that the right to a name entitles the proprietor to prevent the use of his name as a trademark where he has not given his consent to registration, as long as he is famous; in other words in cases where his name has become a sort of brand in itself
 
On 8 March 2011, the Court of Justice of the European Union (CJEU) rendered its opinion on the compatibility of the Draft Agreement on the Creation of the European and Community Patent Court with the European Union Founding Treaties. This Opinion was an important milestone in the creation of a Unified European Patent Litigation System and Unified European Patent (recently termed the European Patent Package). Europe is now closer than ever to completing this process. This paper will first set the stage by outlining the current legal context (section 1). Second, it will review the findings set out in the 1/09 Opinion (section 2). Third, it will examine questions addressed by the Advocate General (section 3). Fourth, it will introduce the response of the Commission and the amendments made to the Draft Agreement (section 4). Fifth, it will examine the contention linked to the Unitary Patent Regulation (section 5). In closing, we will comment upon the relationship between the EU legal order and the European Patent Package (section 6). Some issues remain unresolved, in particular the incorporation of articles 6-8 of the Unified European Patent and the treatment of the prosecution phase, thus for now the future of the European Patent Package remains uncertain.
 
The US court ruled in favour of Google in Rosetta Stone v Google Inc finding that Google was not liable although it gained profit by offering space for advertisements which were leading to websites offering Rosetta Stone counterfeits. Since Google has control over the selection of such advertisements that use words protected as trade marks, this raises some doubts as to whether the court has erred regarding trade mark infringement in this case. It could result as a non-standard for trade mark keyword decisions and also contribute to mounting fears of trade mark owners in future disputes.
 
The German Federal Constitutional Court has delivered an important decision with regards to the permissibility of sampling which is widely used in hip hop and electronic music. With this decision, the Court ended a dispute that has been ongoing for almost twenty years. Furthermore, the Court has applied a fundamental rights discourse between the countervailing rights of the original authors and those of the new works using samples from the original works. The preceding courts found that sampling would constitute an infringement of the phonogram producer rights (Section 85 of the German Author’s Rights Act) where the samples could have been created independently. The German Constitutional Court, however, disagreed: by holding that sampling was a form of art protected by the fundamental right of artistic freedom and may outweigh the exploitation interest of the phonogram producer, which would only be impaired to a minimal extent by sampling.
 
In March 2011 the Supreme Court issued its Prometheus opinion and granted certiorari, and reversed and remanded Myriad I for consideration in light of Prometheus. In August 2012 the Myriad II decision was issued. The panel in Myriad II repeated most of their separate Myriad I opinions. Myriad déjà vu looked much like Myriad I with panel members agreeing that Prometheus did not control the composition of matter claims. The opinions differed on whether composition claims were to be analysed from a chemical, structural or carrier of information standpoint with respect to laws of nature. The rationales used such rhetorical metaphors as cleaving, baseball bats, magic microscopes, extracted kidneys, slabs of marble or marble statues, the Sistine Chapel, and whether cells were 'transformed' molecules or 'carriers of information'. The differing evaluations of patent-eligibility and the cursory manner in which they addressed the Supreme Court's GVR mandate may well guarantee a return appearance before the Supreme Court or, at a minimum, en banc review by the Circuit.
 
In a case concerning the enforcement of trade mark rights in the name of a deceased celebrity, the Bundesgerichtshof ruled that neither use of the domain name 'zappa.com', nor use of the sign 'Zappa Records' was sufficient to prove genuine use of the trade mark ZAPPA under Articles 15 (1), (2a) EC Regulation 40/94 and confirmed that the heirs of the famous musician Frank Zappa cannot prevent a German music festival from calling itself 'Zappanale'.
 
In a prominent case, the German Federal Supreme Court ruled that Google is liable for messages, which the auto complete function of its search engine forms by combining various user requests. The Court even assessed that these messages constitute proper information by Google because the ISP has control over the technical device and its functioning. However, the ISP is not seen as a pure intellectual disseminator. It is liable for false statements and other infringements of personality interests from the moment it receives notice about them. The Court decision raises a whole set of further questions and leaves some of them completely unanswered.
 
On 15 March 2014, the Centre for Intellectual Property and Information Law held its Spring Conference devoted to 'Exhaustion without Exasperation: Intellectual Property, Parallel Imports and Border Measures'. The event was chaired by Mr Justice Arnold and considered the current state of affairs on four main topics: to what objects does exhaustion apply; location and consent; the limits to exhaustion; and the hinterland between legal and illegal goods.
 
The evidence heard before the House of Lords Select Committee which considered the Letter Patent for Invention Act 1835 was never published in the Sessional Papers. This corrects that oversight and provides valuable primary evidence on patent reform in the 1830s.
 
The extension of intellectual property, and the pressure exerted on developing countries through trade agreements, is not as recent as is often thought. This article examines such a historical case, when Switzerland revised its patent law in 1907, to extend patent protection to chemicals. This was largely due to the pressure exerted by the German government and to the lobbying of the country’s chemical industry. Examining closely the elaboration of the new patent law, the article reveals how unstable the category of patents on chemical inventions was. It did not simply cross a border, being exported from Germany to Switzerland. As Swiss politicians and industrialists discussed the new patent law, they referred to other countries, but they did not only copy, they also rejected some of their features. The reasons for this instability were not to be found only in the pressure and criticism exerted by Germany, or the willingness to protect the interests of the Swiss chemical industry. The Swiss law also differed because of real and legitimate concerns regarding the effects of patents on society and economy.
 
Criminal sanctions have long been accepted as an important component of domestic copyright systems. However, the beginnings of the application of criminal law to copyright infringements which are essentially private wrongs in national copyright regimes have been generally inadequately explored. This article seeks to shed light on the origins and reasons for introducing criminal sanctions in Malaysia by examining the early copyright acts, in particular, the Copyright Act 1930 (FMS) and the Copyright Act 1969 (Malaysia). In so doing, it: (1) examines the British Empire's role in introducing copyright laws (and subsequently, criminal sanctions) in the states that make up modern Malaysia; and (2) analyses the legal transplantation process in Malaysia pre- and post-federation of Malaysia.
 
The Report of the Parker Committee, formed in 1916 to consider potential reforms to patent law, was not published. It was concerned, in part, with the abuse of the British patent system by foreigners, proposing significant reforms to address the perceived issues. Ultimately, its proposals were the basis of the failed Patents and Designs Bill 1917. Significantly, the Committee considered issues around compulsory licences, licences of right and the patenting of medicinal products (that is, pharmaceuticals). The public records do not include a copy of the final report or all the key memoranda from which the Committee started its work. These are brought together here for the first time.
 
The Patents Act 1977 created a new law of patents based on the European Patent Convention (1973). However, the wording of the Act did not 'copy out' the text of the Convention, but was drafted in traditional statutory language to give it effect. Nevertheless, to facilitate harmonization, the Act included a unique provision in British law: section 130(7). Both the drafter's approach and this 'preposterous' provision have been lamented by the patent judiciary for nearly four decades. But is this criticism fair?
 
The introduction of statutory awards for inventors in the Patents Act 1977 was highly controversial. Using original archival sources and parliamentary debates, the political battles that raged both in public and behind the scenes are explored. Central to the policy development was a report by a government-appointed Working Party; yet, until now, this report and its recommendations have not been published. The report represents a compromise agreement between representatives of both employers and employees. It was used by the government as the main defence of its policy. Using this report, and the contemporary political discussions, the small number of decisions of the comptroller and the courts will be examined to see if they reflect the balance struck by the Working Party, thereby providing a history of statutory employee awards in the United Kingdom as they have evolved over the last fifty years.
 
This article examines an early (1980s) phase in a two-decade effort towards 'royalty reform' in the US recording industry, whereby ageing African American rhythm & blues performers sought to redress systematic underpayment of record royalties. The record companies to which these performers had signed in the 1940s and 1950s had contractually obligated themselves to provide biannual statements of royalty accounts, and to pay artists record royalties, once initial costs had been recouped. Yet this is rarely how things turned out, and many performers found themselves broke and vulnerable as they reached retirement age, even though many of their records had remained in print and selling for decades. Drawing conceptually on critical race theory and social science scholarship, and empirically on primary source and archival documents, the article outlines the 1950s recording industry's `racialized political economy' and offers an account of singer Ruth Brown and attorney Howell Begle's innovative and successful effort to narrate a counter-history of fraudulent accounting practices and casual racism that helped pressure companies like Warner Communications, MCA and Capitol/EMI into forgiving old production debts, renegotiating 40-year-old contracts, and paying millions of dollars in restitution through the formation and funding of the Rhythm & Blues Foundation.
 
When Justice Manmohan Singh pronounced his decision in F Hoffman-La Roche & Anr v Cipla Ltd before a packed courtroom in the Delhi High Court on a balmy morning this past September, the sense of anticipation in the air was palpable. Not only would this verdict lay down the yardsticks against which all future patent infringement trials in India would be evaluated but it would provide priceless insight into the judicial stance towards generic drug manufacturers in the world's largest generic drug manufacturing market - a nation, not surprisingly, waited with bated breath. In this article, we provide a blow-by-blow account of India's first post-TRIPs patent infringement trial, charting a course through Justice Singh's ground-breaking observations on patent infringement, patent validity, prior art disclosure and therapeutic efficacy, as well as the what if's and the twists of fate that shaped arguably India's highest-profile patent law judgement of 2012.
 
This review analyses the recent Spanish Supreme Court decision Megakini v Google. The long-awaited ruling tries to balance the interests of copyright owners and Internet operators in the digital era. However, in doing so both the Supreme Court and the Barcelona Provincial Court follow the fair use doctrine, and complement it with some good faith considerations - the so-called ius usus inoqui principle. Thus, although the result tries to stress the importance of analysing the flexibility of fair use in light of new circumstances, the Spanish courts have created a new exception and have done so by applying foreign law (§107 of the US Copyright Act). The Spanish legislator is currently discussing the Copyright Act reform. It remains to be seen whether the Spanish legislator will take the Supreme Court's ruling into consideration.
 
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