- Japanese Group's Journal "A.I.P.P.I." Latest issue (Vol 46, No.5) is now available to AIPPI members.
- Read all 8 issues of the 2021 AIPPI World Congress News
- News from the German Association for the Protection of Intellectual Property (GRUR): 2nd GRUR Expert Round Table Webinar on 8 December 2021.
Articles & Case Notes:
- UK Court of Appeal rules on registrability of patents with an AI system named as the inventor: Thaler v Comptroller-General
- Update of Japanese Patent Law in 2021
- Serbian Court Issues Important Decision on Fake Car Parts
- France adopts a repair clause for the automotive sector
AIPPI National and Regional News:
- The United Arab Emirates confirms membership of the Madrid Protocol
- AIPPI at the 4th CIIE
- A new Francophone IP blog!
- The European Patent Court is coming….I promise
- AIPPI Paraguay
- AIPPIMAF newsletter
The AIPPI Japanese Group's journal "A.I.P.P.I." latest issue (Vol 46, No.5) is available to all AIPPI members.
The Japanese Group is pleased to inform you that the latest issue (Vol 46, No.5) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members. You can view the contents page for this issue below.
Please sign in to the “Membership Portal” on the AIPPI website and visit “Member Offers” to read the current edition of the journal.
Since 1965, the Japanese Group has been publishing its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to foreign countries.
AIPPI members can read the entire issue online (not available for download or print). We hope that many AIPPI members around the world will find it interesting.
Back issues are also available to read in the Members Area of the AIPPI website.
Masatoshi ABE, AIPPI JAPAN
- Read all 8 issues of the 2021 AIPPI World Congress News
By Toby Bond of Bird & Bird, London, UK.
The UK’s Court of Appeal handed down its decision in Thaler v Comptroller-General  EWCA Civ 1374 on 21 September 2021 (link). The dispute relates to the registrability of a patent applied for by Dr Thaler, who has pursued similar registrations around the world, in respect of inventions said to be devised by DABUS, an AI owned by Dr Thaler that he describes as a “creativity machine”. The three Court of Appeal judges agreed that only humans can be inventors under the UK’s Patents Act. However, the three judges disagreed as to the consequences for Dr Thaler’s patent applications.
In essence, Lord Justice Birss considered that the requirement to name an inventor was an administrative exercise, and that the IPO should not reject an application for failure to name a proper inventor. Lord Justice Arnold and Lady Justice Laing disagreed with Birss LJ. They concluded that the applications ought to be refused if the application failed to name an inventor, and also where no mechanism was apparent by which the right in the invention had been transferred from the named inventor to the applicant.
The decision to refuse the registration of the patents had first been made in the UK Intellectual Property Office, or ‘UKIPO’. That decision had been appealed to the English High Court, where it was heard by Marcus Smith J. The hearing officer’s decision was upheld in the High Court. By a majority 2-1 decision (Arnold and Laing LJJ in the majority and Birss LJ dissenting) the UK Court of Appeal rejected Dr Thaler’s appeal from the High Court and upheld the decisions of the UKIPO and Marcus Smith J that a UK patent cannot be granted where an AI system is named as the inventor.
Dr Thaler had applied for two GB patents, stating that the inventor was “DABUS” and that he had the right to be granted the patents “by ownership of the creativity machine ‘DABUS’”. When challenged by the UKIPO, Dr Thaler had stated “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”. The applications were deemed withdrawn by the UKIPO on the basis that DABUS could not be considered an inventor and Dr Thaler was not entitled to apply for the patents. Dr Thaler had therefore failed to comply with the requirement under section 13(2) of the Patents Act 1977 to file a statement “(a) identifying the person or persons whom he believes to be the inventor or inventors; and (b) … indicating the derivation of his or their right to be granted the patent”.
The three issues to be decided on appeal were summarised by Birss LJ as:
- Does the Patents Act 1977 require that an inventor be a person?
- What is section 13 of the 1977 Act for, and how does it work?
- What is the right response to the information Dr Thaler has provided under section 13(2)?
1) Is an inventor required to be a person?
On this ground the Court of Appeal was agreed; the Patents Act defines an inventor as the “actual deviser” of an invention and the Act had been drafted on the footing that only a person could be the actual deviser. Birss LJ reached this conclusion through a review of the origins of the term ‘actual deviser’ in UK patent law along with an analysis of the way the language of the Patents Act 1977 is drafted, which he concluded showed a clear intention that only a person could be considered an inventor and since DABUS was a machine, it could not be the inventor, even if it created the invention. Arnold and Laing LJJ agreed that the language of section 7 and other provisions of the Act could not be interpreted as permitting something other than a person to be considered an inventor.
2) The operation of section 13 of the Patents Act 1977
While the Court of Appeal agreed that DABUS was not an inventor within the meaning of the Patents Act, they disagreed regarding the application of section 13 and whether the UKIPO had been right to conclude that Dr Thaler had failed to provide the information required under section 13(2) with the result that his applications were deemed withdrawn. The main area of disagreement was whether an honest subjective belief in the identification of the inventor and the applicant’s derivation of title from the inventor was enough to satisfy the requirements of section 13(2).
As a starting point to their analysis, the Lord Justices were agreed that section 13(2) was intended to ensure that genuine errors in identifying the inventor(s) or the derivation of the applicant’s title should not prevent the applicant from obtaining a patent or render the patent liable to revocation. Furthermore, they agreed that it was not the purpose of section 13(2) to enable the Comptroller to investigate, let alone ratify, the factual correctness of the answers given by the applicant in its application forms.
However, Arnold and Laing LJJ concluded that section 13(2) went beyond requiring the applicant to state their subjective beliefs and also required the Comptroller to examine whether those statements identified a person (or persons) who was (were) the inventor(s) and a means of deriving title from them which fell within the statutory grounds set out in the Patents Act. In Dr Thaler’s case, while it was accepted that he had stated his honest subjective belief, his identification of DABUS as the inventor was not the identification of an inventor within the meaning of the Patents Act and the hearing officer had been right to reject the application under section 13(2).
Arnold and Laing LJJ also concluded that Dr Thaler had failed to identify how he derived his right to be granted the patent. Arnold LJ addressed this issue in detail, examining Dr Thaler’s submissions that the common law of accession (under which the owner of a tree also owns the fruits of the tree) provided a rule of law under which he, Dr Thaler, had acquired the property in the invention. Arnold LJ rejected this submission, holding that this rule only applied to the production of tangible property and there was no principle of law that an intangible right (such as intellectual property) created by a person’s property is owned by that person. Laing LJ considered it to follow from the conclusion that DABUS was not an inventor within the meaning of the Patents Act; if DABUS could not own the property in the invention then this property could not have been transferred to Dr Thaler.
Birss LJ disagreed with the conclusion that section 13(2) imposed any obligation on the Comptroller to examine an applicant’s claim to title. He considered the purpose of section 13(2) to be the creation of a public record of who is said to be the inventor and how the applicant (if they are not the inventor) is said to derive title from them. The Patents Act provides specific mechanisms to challenge the statements made by the applicant under section 13(2) in the form of pre- or post-grant challenges to entitlement, but these grounds are only available to a person who claims to be entitled to the grant, and a lack of entitlement is not a ground on which the Comptroller can refuse the grant of a patent. Birss LJ did not shy away from the fact that this meant that Dr Thaler’s claim to the patent might well never be tested; however, that consequence was deliberately built into the scheme of the Act. Since Dr Thaler had complied with section 13(2) in stating his honest belief in the identity of the inventor (DABUS) and the derivation of his right to apply for the patent, Birss LJ concluded that the applications should not have been deemed withdrawn by the UKIPO. The fact that the creator of the inventions in this case was a machine was no impediment to the patents being granted to Dr Thaler.
The majority decision of Arnold and Laing LJJ is that section 13(2) requires the Comptroller to assess whether the applicant has identified (a) an inventor within the meaning of the Patents Act and (b) a known legal basis on which the applicant for the patent has derived the right to apply for the invention from the named inventor. This resulted in Dr Thaler’s appeal being refused.
The only remaining hope for Dr Thaler to obtain a UK patent naming DABUS as the inventor is therefore obtaining permission for a further appeal to the Supreme Court. Permission for such an appeal will only be granted in relation to arguable points of law with general public importance.
The dissenting judgment of Birss LJ will certainly put some wind in the sails of a potential Supreme Court appeal, demonstrating that there is clearly an arguable point of law regarding the interpretation of section 13(2). The main obstacle to overcome will therefore be whether Dr Thaler can establish that the issue is of general public importance.
On the one hand, the rapid advances in AI technology and the increasing use of AI systems in research and development would point towards the issue of AI inventors being something which requires a definitive answer from the Supreme Court. On the other, following its “Call for Views” on AI and IP in Autumn 2020, the UKIPO has already stated that it intends to consult on changes to the Patents Act 1977 with regard to inventions generated using AI systems. A Supreme Court decision on the current law may therefore have limited utility if the issue is to be addressed by Parliament in the near future.
Whatever the outcome, clearly the Court of Appeal’s decision will not be the final word on UK law and AI inventions.
High Court Decision: https://www.bailii.org/ew/cases/EWHC/Patents/2020/2412.html
By Hirohito Katsunuma of Katsunuma International Patent Office, Tokyo, Japan.
In 2020, there were 288,472 domestic patent applications (-6.33% on the previous year) filed in Japan and 50,559 PCT applications (-4.07% on the previous year) filed from Japan. The number of domestic patent applications decreased for 8 consecutive years. The number of PCT applications from Japan had increased from 2014 onward but dropped in 2020.
However, the total number of direct foreign patent applications from Japan and PCT national phase applications entering foreign countries from Japan had increased for 3 consecutive years, reaching 208,444 in 2019.
These data suggest that Japanese patent applications have shifted their emphasis from domestic patent applications to overseas patent applications, although they have been affected by the coronavirus COVID-19.
Triggered by the COVID-19 pandemic, the use of electronic means and economic activities have dramatically changed. To address the changes, the “Law for Partial Revision of the Patent Act and other Acts, etc.” was proclaimed on May 21, 2021, in Japan.
Some notable revisions to the Patent Act are introduced below.
(1) Oral Proceedings in Invalidation Trials
It has been made possible for the parties and participants to conduct the proceedings in invalidation trials by means of a web conference system, etc. (effective on October 1, 2021). The web conferencing system had already been introduced in the examination and the trial against the examiner’s decision of refusal. After the revision of the Patent Act, the oral proceeding using the web conference system may be adopted in the invalidation trials for patent rights, utility models, trademarks and copyrights.
(2) Requirements for Restoring Rights
If a patent right or other rights expire due to the lapse of the procedure period, the requirements for restoring the rights are relaxed. The criteria for restoring rights has been revised from “Due Care” to “Unintentional”.
The applicable procedures for restoring rights include filing a request for examination of a patent application, filing a priority claim application, submitting translations for foreign language applications and PCT national phase applications, paying registration fees, etc.
(3) Strengthening Control on the Inflow of Counterfeit Goods from Abroad
The act of bringing counterfeit goods into Japan by mail or other means, even for personal use, constitutes an infringement of design rights and trademark rights.
In particular, "import" includes "the act of a person in a foreign country causing another person to bring into Japan from a foreign country".
Individuals privately importing goods and business operators which provide personal import agency services may be infringers if they import counterfeit goods.
(4) Introduction of a Japanese Version of the Amicus Brief system for Patent Infringement Lawsuits
A system that allows courts to widely solicit opinions from third parties in complicated patent infringement lawsuits is introduced (effective on April 1, 2022). It enables courts to make decisions based on a wide range of opinions complementing the parties' evidence in cases that have a large social impact.
The cases in which the court can solicit opinions from third parties in this way are limited to "patent (utility model) infringement lawsuits". Lawsuits for the revocation of trial decisions and lawsuits related to design rights, trademark rights, and unfair competition prevention laws are excluded.
(5) Revision of Patent Fees and Other Fees
The fee system for patent fees, etc., is going to be reviewed in order to ensure a balance between revenue and expenditure of JPO in response to the increased burden of examination and the digitization of procedures (effective on April 1, 2022).
It is expected that the amounts to be specified by the government ordinance will be raised from the current fees.
By Mihajlo Zatezalo, of PETOSEVIC Serbia, Belgrade, Serbia.
On July 19, 2021, the Commercial Court in Belgrade issued a first-instance decision stating that the import and sale of car parts visually identical to those protected by industrial design registrations valid in Serbia constituted industrial design infringement. This is the first ruling of its kind in Serbian practice and is therefore significant because it is likely to influence future decisions related to counterfeit car parts.
PETOŠEVIĆ Serbia represented the right holders, French car manufacturer Renault and its Romanian subsidiary Dacia, in court proceedings against a Serbian company that was distributing replacement headlights, side rearview mirrors and grilles for the Dacia Sandero car without the plaintiffs’ consent. The car parts were visually identical to the original ones protected by Renault’s designs and they bore Dacia’s trademarks.
First, an attempt was made to settle the matter out of court. A Cease-and-Desist letter was sent to the Serbian company, who refused to comply with the rights holder’s demands. A request for securing evidence was then filed with the Commercial Court in Belgrade. The court granted the request, but the alleged infringer refused to allow the rights holder’s representatives and Commercial Court officials into their premises. Finally, a lawsuit was filed with the Commercial Court on November 15, 2017.
During the proceedings, which lasted nearly four years, two court-appointed intellectual property expert witnesses prepared expert opinions confirming both design and trademark infringement. A court-appointed financial expert witness determined the damages caused by the infringement based on the number of counterfeit car parts sold by the Serbian company between 2014 and 2020 (200 headlights, 30 side rearview mirrors and 71 grilles). Finally, the Commercial Court ruled in favor of the plaintiffs and, for the first time in Serbian practice, stated that the import and sale of replacement car parts visually identical to those protected by industrial design registrations constituted industrial design infringement. The fact that the court also awarded damages in this case is important because it is very rare in Serbian practice for a court to award damages caused by intellectual property infringement, particularly design infringement. The Commercial Court’s decision may be appealed, but it appears unlikely that the decision will be overturned.
This ruling is significant because it will allow IP right holders to invoke their IP in their struggle against this type of infringement, potentially beginning to put an end to fake auto parts. There had previously been no rulings of this kind in Serbian practice.
This article first appeared on the PETOSEVIC website. Reproduced with permission.
By Tougane Loumeau, Co-reporter of the French Group of AIPPI, Lawyer at Gide, Paris, France.
After a few unsuccessful attempts, France has finally adopted a measure aimed at liberalising the automotive spare parts sector by creating new exceptions to intellectual property law. The new provisions are due to enter into force on 1 January 2023.
Decision of Conseil Constitutionnel of 13 August 2021, No. 2021-825 DC;
Law No. 2021-1104 of 22 August 2021 to combat climate change and strengthen resilience to its effects
The operation of competition in the car repair and maintenance, and the spare parts manufacturing and distribution sectors has proved a controversial issue, as car manufacturers rely on the profits generated from the aftermarket, while independent operators claim they should have broader access to the spare part market. One of the most important issues in this debate is the question whether visible spare parts should or should not be protected by intellectual property rights (namely, under copyright or design law).
When legislation was introduced to harmonize design law across the European Union, this question was left unresolved due to a lack of agreement between the Member States, some of which accepted that visible spare parts may be protected by IP law, while others favoured an exemption known as a ‘repair clause’. The Design Directive of 13 October 1998 therefore provides that ‘Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts’.
France was one of the countries in which visible parts could be protected by design rights or copyright. However, on 8 October 2012, the French Competition Authority issued an opinion whereby it recommended ‘that a repair clause be introduced into French law to allow more efficient operation of the car aftermarket’. It also recommended that a transitional period be organized before fully opening-up the market for vehicle manufacturers and original spare parts manufacturers to adjust their economic models.
Attempts to introduce a repair clause were made notably in late 2018 and 2019. The relevant provisions were censured by the Conseil Constitutionnel (the authority that controls that legislation complies with the French Constitution), albeit for purely procedural reasons.
The relevant provisions were eventually introduced into Law No. 2021-1104 of 22 August 2021 to combat climate change, without being cancelled by the Conseil.
According to the new legislation that will enter into force on 1 January 2023:
- copyright shall no longer be exercised in respect of acts of reproduction, use and marketing of component parts aimed at restoring the original appearance of a motor vehicle or a trailer;
- design right protection shall no longer be exercised in respect of acts aimed at restoring the original appearance of a motor vehicle or a trailer when such acts concern glazing parts or parts that come from original spare parts manufacturers;
- design right protection may still apply on other types of spare parts aimed at restoring the original appearance of a motor vehicle but will be limited to 10 years (instead of 25 years currently).
Traditional Knowledge and Cultural Expressions: Appreciation or Appropriation? An IP Perspective.
What constitutes Cultural Appreciation, and what is Cultural Appropriation? What are the dividing factors of drawing an inspiration and exploiting age-old cultural heritage? In the advent of numerous cases of Cultural Appropriation flooding newspapers and social media, discerning how to navigate this tricky landscape will be vital in both protecting the interests of indigenous cultures and safeguarding oneself from the court of public opinion.
By invitation of the co-hosts, the China Council for the Promotion of International Trade (CCPIT), and CNIPA, the president of AIPPI, Luiz Henrique do Amaral, delivered a speech on IP protection and business environment optimization by video at the IP sub-forum of the Hongqiao International Economic Forum of the 4th China International Import Expo (CIIE) on November 5, 2021 in Shanghai.
Luiz Henrique credited China for its recent development in IP protection, in particular, the judicial interpretation from the SPC on punitive damages applying to IPR infringement cases, and the 4th amendment to the Patent Law, such as partial design, patent linkage, patent term extension and punitive damages on patent infringement. He also encouraged other jurisdictions to take China as an example to strengthen IP protection by doing the same.
By Laurence Loumes, of Plasseraud IP.
The new French blog BLIP (standing for BLog on IP) has been launched. It is the result of a collaboration between the French AIPPI group and the CEIPI (International study center in IP in Strasbourg). The blog is intended for a large audience, ranging from professionals to passionate or simply curious readers.
At present the blog is structured into three main categories:
(1) Artistic and literary property (covering trademarks, copyright and designs)
(2) Industrial property (covering patents), and
(3) Emerging technologies and data (covering AI or GDPR for example)
Sign up at https://blip.education/ to receive the latest articles (in French!).
By Laurence Loumes, of Plasseraud IP.
On October 11, the French AIPPI Group presented a webinar on the European Patent Court. Mr. Pierre Véron, a historical figure in the French patent litigation landscape, commented on the long awaited (and soon to be implemented!) Unified Patent Court. It is currently not possible to litigate a European patent at a European level (meaning a decision with unitary effect in European countries for which the patent has been validated). Instead, the European patent has to be litigated country by country.
The Unified Patent Court aims to rectify this situation by providing a single patent court covering 24 EU member states. This project has been in the pipeline for decades and it seems that we are finally seeing it coming together. The latest major issues include: an appeal made in Germany which delayed the ratification, and Brexit.
While the European patent can cover non-EU countries, the Unified Patent Court is restricted to EU member states only. As a result, the UK can’t be part of the UPC any longer. Now that Germany is in good standing for ratifying the agreement on a Unified Patent Court, the question remains of the structural implementation, especially after Brexit: where will be the courts located now that London is out of the picture?
On November 15, 2021 the Paraguayan Group of AIPPI, together with Inter-American Association of Intellectual Property (ASIPI) and the Paraguayan Association of Intellectual Property Agents (APAPI) organized a webinar called, “Discussion on the Modification of Trademark and Industrial Models and Design Laws”.
The participants learned about DINAPI’s suggestions for modification of the IP laws mentioned. The speakers were Berta Davalos, Industrial Property Director and Maria Cristina Acosta from DINAPI, Hugo Mersan, Partner of MERSAN Abogados and President of the Paraguayan Group of AIPPI, and Elba Britez de Ortiz, Partner from PSTBN Abogados. The event was moderated by Matias Noetinger, Noetinger & Armando Abogados and Sharin Pablo, JJ Roca & Asociados. Click here to see the flyer.
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