Botti & Ferrari

Securing software patents through the EPO

The article “Securing software patents through the EPO” considers patentability of computer implemented inventions before the European Patent Office. Though generally software cannot be patented in Europe, there are various drafting strategies which can increase the probability of favorable examination and grant of applications under the current European practice. This article also considers the “technical character” of computer inventions, and while focusing on criteria set out in the official EPO Guidelines for Examination, it is also aimed at readers who have some knowledge of patent matters but are not necessarily European Patent Attorneys. Enjoy your reading!

UNITARY EUROPEAN PATENT – Establishment postponed to 2018

The postponement is due to the lacking ratification of the UPC (Unified Patent Court) agreement by Germany, which is essential (alongside with Great Britain’s approval, still missing, but in the development phase) for the Unitary Patent to become effective.
Following a complaint to the Constitutional Court of Germany claiming that the UPC agreement breaks German law, in fact, Germany’s Federal President, Frank Walter Steinmeier, has decided to postpone the approval procedure of the UPC agreement until after the Court has reached a final verdict.
In light of this recent evolution of facts, on the 27th of June 2017, an announcement from Alexander Ramsay, the President of UPC preparatory committee, made the Unitary European Patent postponement to 2018 official, yet at the same time speculating on a provisional application period, perhaps starting in autumn 2017.

NEW ZEALAND – SUPREME COURT REVOKED THE REGISTRATION OF LACOSTE TRADEMARK

Caution: use trademarks as they have been filed!

The Supreme Court of New Zealand has revoked the national trademark n. 70068, which is a variant of the popular crocodile-logo and includes the world “CROCODILE”, on grounds of the owner not having made genuine use of it. Following a series of conflicts between Lacoste and Crocodile Garments Ltd, over the use of the crocodile-trademark, the French enterprise acquired the mentioned trademark n. 70068 from Crocodile Garments Ltd in 2003. Next, Crocodile International PTE Ltd – a company of the Crocodile Garments group – applied for the revocation of the trademark registration, stating that this particular graphic version had not ever been used in the exact form of the filing.

               

In its defense, Lacoste argued that it had used trademarks – composed of crocodile figures – that differed in appearance from trademark n. 70068, but that, nonetheless, this use did not alter the “distinctive character” and the “central idea and message” of the original one. The Supreme Court rejected this argument, declaring the revocation of trademark n. 70068, concluding that there are significant visual differences between the trademarks in use and the trademark n. 70068.

Patent Litigation Distribution in the U.S.A. Expected to Change Profoundly after Supreme Court Decision

On May 22, 2017, in the case of TC Heartland v. Kraft Foods Group Brands, the Supreme Court of the United States reversed the Federal Circuit and district courts’ interpretation of the general federal venue section (28 U.S.C. §1391) and the patent-specific venue section (28 U.S.C. § 1400(b)), dated 1990 (case of VE HOLDING v. Johnson  Gas Appliance), by ruling that defendants can no longer be sued with patent infringement in districts they do not have strong connections to (e.g. by having a “regular and established business” in them).

The ruling is expected to have a draining effect on  lawsuit filings in the ‘infamous’ jurisdiction of Eastern Texas (which typically handles patent cases of defendants with lose affiliations to it), to the extent of a 29% drop of U.S. patent suits, which will most likely be transferred to other more suited jurisdictions (such as Northern California and Delaware).

For defendants involved in current suits in Eastern Texas, this will mean opportunities to exit the district through motions of dismissal or transfer and for future plaintiffs looking to file suits in Eastern Texas, it will entail devising ways to work around the Supreme Court’s  decision.

Adidas Wins The Legal Battle Of Parallel Strips On Sports Shoes

In a recent judgment, the European Court of Justice ruled that Adidas may bar the registration as a Community trade mark, of parallel strips on the sides of sports shoes. The facts: in 2009 the Belgian Company Shoe Branding Europe has filed an application for a Community trade mark for footwear consisting of two parallel bands. Adidas has then filed opposition on the grounds that one of its earlier marks consists of three parallel bands. OHIM, in the first instance, has rejected the opposition. However, following an appeal, the EU General Court has ruled in favor of Adidas. The Belgian Company has filed an appeal to the European Court of Justice, which, however, has confirmed the previous judgment.

Reform On Community Trade Mark Law

On 12/24/2015 it has been published in the Official Journal of the European Union the EU Regulation No. 2015/2424 dated 16.12.2015 laying down the amendment of Regulation EC No. 207/2009 concerning the Community trademark. The new rules will come into force on March 23 2016. Among the main changes: the Office will be renamed EUIPO (European Union Intellectual Property Office) and the CTM will be renamed “European Union trade mark”. Moreover, there are also important changes with reference to the taxation system and the requirements for registration of the new European Union trade mark.

Marchi + 2 E Disegni + 3, two new measures to develop SMEs IP rights

The Ministry of Economic Development, in collaboration with Unioncamere, has organized two new measures, called Marchi + 2 and Disegni + 3 (whose official communication have both been published in the Official Gazette December 3, 2015) to develop SMEs IP rights. In particular, as per Marchi + 2, 2.800.00 Euro have been allocated, and the measure has two distinct lines of action to facilitate the registration of Community Trademarks (OHIM) and International Tademarks (WIPO). The benefit covers up to 80% of eligible expenses (90% in case of international trademark designating China and / or the US). As per Disegni + 3 the funds allocated amount to 4,700,000 euro and it is intended for the purchase of specialized outsourced services to develop, on the one hand, the start of production of new products related to a registered design, and, on the other hand, its commercialization. The benefits shall be up to 80% of eligible expenditure. For Marchi + 2, applications may be submitted starting from 9:00 am on February 1, 2016, while for Disegni +3 applications may be submitted starting from from 9 am on 2 March 2016, in both cases until funds are exhausted.

Refinancing Of The Funding Programme “DISEGNI + 2”

Due to the large number of applications submitted by Companies to gain access to the economic benefits provided by the the funding programme “Disegni +2” (a funding program aimed to micro, small and medium-sized Italian Companies for the economic exploitation of designs, which has been set up by the Italian Ministry of Economic Development and activated on Nov. 6, 2014), it has been noticed a rapid depletion of the resources allocated by the Ministry, which consequently, on 13 January 2015, has declared the suspension of the Funding Programme at issue. However, on November 11, 2015, it has been published in the Official Journal a notice relating to the decision of the Ministry to refinance the Funding Porgramme “Disegni +2″. In this regard, an additional 20 million euro will be allocated, which will be destined solely to the applications which were pending on January 13, 2015, date of the suspension of the Funding Porgramme.

Italian Patent Filings In China Increase

Last month the European Patent Office (EPO) and the China’s State Intellectual Property Office (Sipo) have celebrated their 30th anniversary of bilateral collaboration. Such a cooperation is supported not only by the technical and informational interchange between the two organizations, but also in terms of patent and patent application registration. Where total filings of Chinese enterprises at EPO have been increased in the period 2010-2014 with an annual rate of growth estimated at about 20% (taking into consideration that the total filings of all countries at EPO have been increased in the same period of about 3.7%), the number of filing per year on behalf of Italian enterprises at Sipo has been increased in the same period of about 4.8%. These considerations demonstrate a constantly-rising economical collaboration between the two countries.