ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Patents

Did you get the transfer?

Spanish courts spend a lot of their time “transferring” things from A to B. So, when the defendant in a patent case files a validity counterclaim, the court must “transfer” it to the claimant. This transfer is of crucial importance because it sets off the two-month deadline for answering the counterclaim. So, what actually happens? Historically the officers of the court took the copy of the counterclaim which the defendant’s scribes had provided and physically gave it to the claimant’s procurator, that most Spanish of legal professionals. However, this was somewhat cumbersome, so at some point it occurred to somebody that maybe the defendant’s procurator could just give it to the claimant’s procurator. All very practical, but an immediate affront to the principle that it is the court which must drive and control the process. The solution is simple. In due course the court issues a piece of paper making an albeit symbolic “transfer”, thereby kicking off the deadline.

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So far so good. However, things grew complicated when the revised Patent Act, which came into force in 2017, allowed the patent owner to file an application to limit the patent in response to the counterclaim. Although this had always been possible under Article 138.3 EPC, Spanish courts had grappled with the unforeseen procedural consequences. Article 120 of the new Act changed all that by firstly specifying that the limitation application had to be filed with the answer to the counterclaim, and secondly establishing a two-month time limit to respond. As usual the court was required to “transfer” the application to the counterclaimant, whose time limit to respond was however to start upon “receipt” of the application. This led to a flurry of academic articles which argued that the starting point for this new time limit would not be the court “transfer” itself but, long before that, when the electronic exchange had actually taken place between the procurators.

In a recent decision, Barcelona Commercial Court No. 5 has ruled for the first time on this conundrum. The tried and trusted transfer option wins the day: “Any of the other proposed interpretations would mean leaving the kick-off for the computation of the procedural deadline up to one of the parties, who would be driving the process, thereby depriving the first paragraph of the provision of any meaning. Taken to the absurd, if the beginning of computation of the time limit were to be from the moment of receipt of the application – one assumes, between procurators, between the parties themselves – why is a transfer by the court provided for?”. For Article 120.5 “in no way authorizes relegating that both the process and time control be driven by the court“.

Author: Colm Ahern

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Changes to the system for protection of industrial designs in China

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Designs in China (where they are called “design patents”) are protected under the Patent Law of the People’s Republic of China. This legal text entered into force in 1985 and was reformed in 1992, 2000 and 2008.

On 1 June 2021 a fourth reform will enter into force, with important amendments regarding designs. Indeed, it was necessary to update some aspects of industrial design protection in China in order to, among other purposes, bring them into line with the industrial design protection systems of the world’s main IP Offices. It will thus facilitate protection for foreign designs in China, as well as enhancing protection for the designs of Chinese applicants in other countries and at other IP Offices.

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This reform should also be regarded as part of China’s preparations to join the Hague System for protection of international designs, given that following the accession of the EUIPO, South Korea, USA and Japan, China is the only one of the countries of the IP5 (which includes the world’s five largest IP Offices) that is not yet a member.

It is also important not to overlook the global importance of China in terms of the number of design applications filed. Over the past few years, the CNIPA has been the Patent Office that has received by far the largest number of design applications. For example, in both 2018 and 2019 there were more than 700,000 design applications in China, which accounted for more than 50% of all design applications worldwide.

The main changes that will affect designs in China can be summarised as follows:

1. Extension of the legal lifetime of designs to 15 years

Article 42(1) of the Patent Law extends the legal lifetime from 10 to 15 years, always calculated from the filing date of the design application in China.

This extension of the term of protection of designs in China is due to the Hague Agreement, which requires that the period of protection granted by contracting States for national designs must be a minimum of 15 years.

2. Possibility of design protection for parts of a product

Article 2(4) of the Patent Law has been amended to include in the definition of “design” the possibility that it refers to “the whole or part” of a product.

This amendment allows the scope of protection of designs to be expanded to include partial designs or designs of a part of a product.

This new provision will, for example, enable more secure protection for the design of a part of a product, without the need to protect the design of the whole product. Currently it is necessary to depict the whole product with solid lines. However, after the reform it will be possible to show with solid lines only the part that is to be protected and with broken lines those parts of the product for which protection is not sought.

Moreover, this new possibility of protection for partial designs or for designs of a part of a product is expected to encourage the filing of new design applications, thereby enhancing protection against possible infringers. Indeed, following the reform it will only be necessary that the protected part (for example, the sole of a shoe or the handle of a tool) has been copied, and not the whole product, in order to be able to take action against possible infringements.

This provision will help to bring practice in China into line with that of the other IP5 countries, given that in all of those countries it is currently possible to protect parts of a product.

3. Possibility of claiming domestic priority for designs

Article 29(2) of the Patent Law introduces the possibility of claiming the domestic priority of an earlier design application in China, within a term of 6 months, in order to permit the filing of an improved subsequent design application.

Under the current system, if an applicant files a design application in China and the design undergoes improvements or modifications, it is necessary to file a new design application. If the improved design differs in relatively minor aspects, the new application for the design would be vulnerable due to the existence of the first application.

With the introduction of the possibility of claiming the domestic priority of designs in China, such adverse situations are avoided, given that once the design is created, the applicant can file an initial design application to obtain an earlier filing date and then improve the design in the 6 months following the filing of the initial application, claiming the priority of the same.

In summary, the reform of the system for protection of industrial designs in China is an important step forward that will help to encourage innovation and improve legal certainty in the field of design. Other potential changes, such as extending the possibility of multiple design applications, or establishing a substantive examination or searches for earlier designs during prosecution, have not been included. Perhaps we will see these changes in a future reform.

Author: Pedro Saturio

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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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50th anniversary of the Moon landing: Legal aspects of space exploration

The celebration of the 50th anniversary of the Moon landing is a good opportunity to reflect on the impact of space exploration on technology, on legal protection of technology and on other legal aspects of space exploration.

The space race, which took place principally between the 1950s and the 1970s, provided the stimulus for significant technological advances. Since then, we have seen notable progress in numerous areas: civil and military telecommunications, propulsion systems, meteorology, Earth observation, mapping, etc. There have also been important scientific experiments with practical applications for our everyday lives. 

Mobile telephones (and their various features) are an example of how technology initially used in the field of space exploration has entered the domestic sphere. Moreover, the Moon missions and use by astronauts helped to popularise existing products, such as Velcro, and materials, such as Teflon.

Both NASA and the European Space Agency (ESA) have technology transfer programmes which enable them to market their patents and technologies in the private sector and which have given rise to numerous start-up companies. Indeed, many of the objects and technologies that we habitually use originate from space-related technology protected by different patents.

Most of this technology, while it has been used in space, was developed and tested here on Earth, and can therefore be protected under patent legislation. But what if an invention has been created in space, for example, on the International Space Station (ISS)? 

The Outer Space Treaty of 27 January 1967, which represents the basic legal framework of international space law, provides the legal basis for exploration and use of outer space. The treaty establishes that outer space shall be free for scientific research, and that the countries that are parties to the treaty shall provide and foster international cooperation in that research.

The ISS is an example of how it has been possible to carry out joint projects with positive results through international cooperation.

The ISS is governed by an agreement concerning cooperation on the Civil International Space Station (the International Space Station Intergovernmental Agreement of 1998), signed by the USA, Russia, Japan, Canada and the Member States of the ESA. In this agreement, it is stated that the ISS is made up of different modules belonging to different states, that each state has jurisdiction over its own module and, therefore, that its patent laws would be applicable to its module. The ISS system could serve as a model for future scientific space missions; for example, there are various projects on the horizon, such as the Mars missions or the return to the Moon, which have once again placed space exploration in the media spotlight.

Furthermore, the advent of new space activities (such as the first steps in space tourism, which has already made its way to the ISS), has led some countries to consider how to regulate such activities to bring them into line with international law.

Moreover, it is well known that patents are rights with a territorial scope. Therefore, in theory, conflicts could arise when a spacecraft of one country uses launch platforms or other facilities that are normally found in other countries with more favourable conditions. However, many national patent laws, influenced by Article 5ter of the Paris Convention for the Protection of Industrial Property, provide for exceptions stipulating that the holder of a patent may not assert its exclusive rights against third parties in the case of aircraft authorized to enter a territory, with regard to possible claims concerning parts, accessories, procedures, etc. that might infringe patents in force in that territory, thereby resolving the issue.

Space law is currently regulated by the Vienna-based United Nations Office for Outer Space Affairs (UNOOSA), which is responsible for implementing the space-related decisions of the United Nations General Assembly and keeping a record of objects launched into space.

It is impossible to imagine the world as it is today without space exploration. In 2069, the centenary year of the Moon landing, our daily lives will surely have been greatly transformed, largely thanks to technological advances in the space sector.

So, we must continue to make progress in space exploration and in the legal aspects of space exploration, in order to continue contributing to making life easier here on Earth.

Article originally published in Cinco Días
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Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

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