ELZABURU Blog - Industrial and Intellectual Property

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“Good morning, Myanmar”

Myanmar "Soft Opening Period"

After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Myanmar "Soft Opening Period"  

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

  • Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
  • Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.

 

Author: Cristina Arroyo

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How open intellectual property contributes to driving the “green transition”

This year, World Intellectual Property Day was celebrated with the slogan “Innovate for a Green Future”.

It is not the first time that WIPO has used this occasion to highlight the role played by intellectual property in the “green transition”. In 2009, under the slogan “Promoting Green Innovation as the key to a Secure Future”, WIPO dedicated part of its magazine’s special issue to analysing which intellectual property mechanisms and strategies could help foster sustainable technological innovation.

World IP Day 2020

At that time, the Eco-Patent Commons initiative, with the backing of major companies such as IBM or Nokia, was starting to gain importance. The aim was to permit any user in the world free access to a group of patents in which the participating companies undertook not to assert rights, provided that said patents were used with the purpose of innovating and implementing industrial processes in the field of sustainability. Despite the ambitious aims of the initiative, the most recent studies on the matter suggest that its practical effects on the diffusion of environmentally friendly technologies were modest due to, among other factors, issues concerning the structure of the organisation, a lack of follow-up on the use of the patents provided, and the absence of mechanisms for effective technology transfer, a particularly important factor in the case of complex patents.

However, the discontinuation of Eco-Patent Commons in 2016 should not be regarded as a failure. On the one hand, it is a learning point for similar projects in the future. Moreover, Eco-Patent Commons made an important contribution to fostering debate on the applicability of open intellectual property strategies in the field of sustainable technological innovations, questioning in particular whether open source-based strategies can replicate the success achieved in the world of software.

One of the most high-profile examples of open intellectual property strategy for patents with “green” applications is that of Tesla. In 2014, the company caused surprise when its CEO, Elon Musk, announced that in future Tesla would not take legal action against parties who use their technology in good faith. Aside from Tesla asserting as its main reason for this decision the desire to continue the spirit of the open source movement to encourage the development of electric cars in an effort to slow down climate change, it is clear that it is a decision with significant strategic implications. Allowing other manufacturers to use Tesla’s innovations reduces the barriers to new companies entering the electric car market, which will lead to a strengthening of the sector in which Tesla operates (improving the supplier network, charging stations, etc.). This, in turn, will increase the demand for electric cars, from which Tesla could potentially benefit.

The case of Tesla is just one example of how closed or protectionist intellectual property strategies are not always the answer. Moreover, in the field of sustainable innovations, the decision between protectionist and open or collaborative strategies can be affected in particular by RSC issues and reputational or regulatory considerations.

From the regulatory standpoint, various proposals have been put forward, some of which seek to encourage investment in green technology (through tax regimes favourable to licensing or to the implementation of swift procedures in patent filings) and others aimed at increasing accessibility of patented technology (for example, by limiting the possibility to grant exclusive licences or by creating funds that acquire patents to make them available to the public at a lower cost).

In the meantime, in 2013, WIPO launched WIPO Green, an online platform that seeks to promote the diffusion of green technologies by facilitating contact between providers of this type of technology and organisations interested in using the same. In this case, the platform serves as a connecting point, but does not impose conditions on the type of collaboration to be established between the parties.

Beyond the discussion concerning intellectual property strategies, advances in digitalisation bring forth other kinds of opportunities and challenges from the standpoint of sustainability. Specifically, one growing area that should take the environmental aspect into account in its development over the coming years, is the data economy. Recently, the European Commission, in its Communication on a European strategy for data, emphasized that European data strategy should focus not only on increasing productivity and the competitiveness of markets but also on benefiting society from the standpoint of health, transparency, public services and the environment. In this regard, a correct use of data can contribute to aspects such as promoting the circular economy, increasing sustainability in transport or improving environmental performance in the agricultural sector.

Closely related to data, Artificial Intelligence has considerable potential to contribute to achieving the objectives of the European Green Deal. In the White Paper on Artificial Intelligence – a European approach to excellence and trust, published in February of this year, the Commission once again mentions the environmental implications of this kind of technology, pointing to its capacity for critical analysis of resource usage and energy consumption and for making choices that are more positive for the environment.

Notwithstanding these benefits, on the other side of the coin we have the considerable environmental footprint associated with data centres and cloud-based services. With this in mind, the Commission highlights that the European Digital Strategy proposes green transformation measures for the ICT sector.

There are certainly many questions regarding which mechanisms are the most appropriate, both from the standpoint of business strategy and from the regulatory standpoint, to foster innovation and diffusion of environmentally friendly technologies. There are also a number of issues with regard to finding a balance between the benefits and the environmental impact of digitalisation. What does seem clear is that WIPO has sought to remind us, a decade on, that intellectual property, far from being an unrelated factor, will play a decisive role in successfully navigating the “green transition” process.

Authors: Cristina Espín and Marina Manzanares

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Not possible to obtain a SPC for a new therapeutic application of an old active ingredient

CJEU judgment of 9 July 2020 (C-673/18 Santen)

One of the requirements to obtain a Supplementary Protection Certificate (“SPC”) for a medicinal product is that the marketing authorisation (“MA”) for the product for which the SPC is sought must be the first authorisation to place the product on the market as a medicinal product (Article 3(d) of Regulation EC No. 469/2009). The interpretation of this requirement has for some time generated considerable debate in legal doctrine and case-law, particularly following the CJEU’s judgment of 19 July 2012 in case C-130/11 Neurim. In said judgment, the CJEU found that the existence of an earlier MA for a veterinary medicinal product did not preclude the grant of a SPC for a different application of the same product

Not possible to obtain a SPC for a new therapeutic application of an old active ingredient  

However, after that judgment the following doubts arose:

  • Did this interpretation only apply to cases where the first MA referred to a veterinary medicinal product and the second to a human medicinal product? or would it also extend to cases of new indications or new uses of active ingredients whose first MA referred to medicinal products of the same kind (human or veterinary)?
  • Would it also extend to cases of new formulations of active ingredients whose first MA referred to medicinal products of the same kind (human or veterinary)?

The CJEU provided an answer (in the negative) to this second question in its judgment of 21 March 2019 in case C-443/17 Abraxis: SPCs cannot be granted for new formulations of old active ingredients.

The issue of the first question has now been resolved by the CJEU in its judgment of 9 July 2020 in the above-mentioned Santen case. Again, the court answers in the negative: it is not possible to grant a SPC for a new therapeutic application of an old active ingredient. Below is a summary of the national proceedings that led to this judgment and of the reasoning followed by the CJEU in its decision:

The main proceedings involved the pharmaceutical company Santen and France’s National Industrial Property Institute (“INPI”). Santen, a pharmaceutical laboratory specializing in ophthalmology, was the holder of, on the one hand, a patent protecting an ophthalmic emulsion in which the active ingredient was ciclosporin and, on the other, a MA for a medicinal product marketed under the name “Ikervis”, the active ingredient of which was ciclosporin, used to treat severe keratitis in adult patients with dry eye disease. On the basis of that patent and MA, Santen filed an application with the INPI for a SPC for the aforementioned medicinal product. However, the INPI rejected the application, finding that the MA in question was not, for the purpose of Article 3(d) of Regulation EC No. 469/2009, the first MA for ciclosporin: a MA had been issued in 1983 for a medicinal product marketed under the name “Sandimmun”, which also had ciclosporin as its active ingredient. “Sandimmun” was indicated for preventing the rejection of solid organ and bone marrow grafts and for other therapeutic uses such as the treatment of endogenous uveitis, an inflammation of all or part of the uvea, the middle part of the eyeball.

Santen appealed the rejection and it was brought before the Court of Appeal in Paris, the court that referred the matter on which the CJEU has now issued a preliminary ruling.

The CJEU’s judgment is based on the following reasoning:

  • The key to determining whether a SPC can be granted for a new therapeutic application of an active ingredient for which authorisation was issued in the past in respect of another therapeutic application, is whether the products that are the subject of the past MA and the new MA can be understood to be different due to the fact that they are intended for different therapeutic uses.
  • The text of Regulation EC No. 469/2009 defines the concept of “product” in relation to an active ingredient, not in relation to a specific therapeutic application of an active ingredient. It follows that the fact that an active ingredient is used for a new therapeutic application does not make it a “different” product when it has been used for an already known therapeutic application.
  • Therefore, Article 3(d) of Regulation EC No. 469/2009 must be interpreted as meaning that it is not possible to consider a MA to be the first MA of a product when it refers to a new therapeutic application of an active ingredient that has already been the subject of another MA for another therapeutic application.

With this judgment the CJEU overturns the Neurim doctrine, opting for a strict interpretation of the requirement of Article 3(d) of Regulation EC No. 469/2009. This ruling will not have been well received by the pharmaceutical industry, which has seen a restriction on the opportunities for securing extended protection of patent rights for new medicinal products consisting of a new therapeutic application of an old active ingredient. However, as the CJEU points out, the intention of the EU legislature was “to protect not all pharmaceutical research giving rise to the grant of a patent and the marketing of a new medicinal product, but to protect research leading to the first placing on the market of an active ingredient or a combination of active ingredients as a medicinal product”.

 

Author: María Cadarso

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Annual Review ELZABURU 2019

Annual Review ELZABURU 2019

Following a delay caused by the lockdown situation in Spain as a result of the global pandemic, but with the usual sense of pride, we present to our clients, friends and colleagues the ninth edition of ELZABURU’s Annual Review of European case-law in the field of industrial and intellectual property.

Annual Review ELZABURU 2019  

When the Annual Review was in print, our Firm was grieving the passing of its President, Alberto Elzaburu, who proudly presented the earlier editions. We wish to dedicate this edition to him, with the photograph displayed in this Annual Review.

Our regular readers will note that this edition reflects ELZABURU’s change of corporate image, which symbolises the Firm’s vocation for adapting to the new demands of a marketplace that is subject to constant technological and social change.

On this occasion, the Annual Review includes 31 articles on rulings by the Court of Justice of the European Union, the Spanish Supreme Court, the European Union Trade Mark Court in Alicante, and Spain’s Provincial Courts of Appeal. This is all made possible by the selfless and enthusiastic participation of a large number of the Firm’s professionals, to whom we would like to express our sincere gratitude.

We hope that those interested in legal developments in Europe in the field of industrial and intellectual property will enjoy this simple and impartial analysis.

 

Annual Review in PDF format

Annual Review in e-book format

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Is a folding bicycle an intellectual work protected by copyright?

Bicicleta Brompton plegada

After the Judgement by the CJEU of 11 June 2020 in the Brompton Case (C 833/18) the answer, as the song goes, is blowing in the wind. This is not surprising.

Let us recall the case. Brompton is an English company that markets a folding bicycle, sold in its current form since 1987, which had been protected as a patent due to its particular technical features: the bicycle can have three different positions (a folded position, an unfolded position and a stand-by position) enabling the bicycle to stay balanced on the ground.

 
Bicicleta Brompton abierta Bicicleta Brompton plegada
 

Once the patent rights expired, Brompton brought an action against the company Get2Get, on grounds of copyright infringement, for marketing a bicycle whose appearance is visually very similar to that of the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

The question is, therefore, whether an object that is constrained by its technical characteristics, to the point that it was protected as a patent, can constitute an intellectual work. The CJEU returns the matter to the national court but highlights some important points.

For the Court it is true that the shape of the cited bicycle is necessary to achieve a particular technical effect, namely, the ability of that bicycle to fold into three positions, one of these enabling it to stay balanced on the ground. However, the national court must ascertain whether, notwithstanding this circumstance, the bicycle constitutes an original work resulting from an intellectual creation.

In this respect, the judgment warns that this is not the case where the realisation of a subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom or room so limited that the idea and its expression become indissociable. Where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection.

In order to verify this, the national court must determine whether, through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality.

At this point, the Court adds that the existence of other possible shapes which allow the same technical result to be achieved is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment.

As regards the existence of an earlier, now expired, patent in the case in the main proceedings and the effectiveness of the shape in achieving the same technical result, these factors should be taken into account only in so far as they make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

The Court reaches the conclusion that Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from an intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that the shape reflects his personality, this being for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

In summary, it seems clear that the limits setting the boundaries between intellectual work and other industrial property rights (patents, designs, trademarks) remain unclear to a certain extent and that, in practice, national courts continue to have a wide scope of discretion in spite of, or thanks to, the criteria, so precise yet so ambiguous, laid down by the CJEU.

 

Author: Antonio Castán

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