Clear Enough? - CJEU Further Clarifies Communication to the Public

The CJEU does not seem to be able to make its mind up on the topic of what amounts to a 'communication to the public', as is perfectly illustrated by the recent decisions in Svensson, C More Entertainment, BestWater and the Advocate General's opinion prior to the decision in GS Media (the very decision so many are waiting for). This difficulty in establishing a firm position on this very important subject has created many headaches for IP practitioners, who, by now, are grasping for any concrete and consistent judgments to this effect. While we have to still wait on the CJEU tackling GS Media, there is potentially some respite in the air via a decision discussing, yet again, what a 'communication to the public' might entail.

The case of Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v GEMA dealt with the a rehabilitation center, Reha Training, which provides post-operative treatment to better rehabilitate those who needed it after their medical procedures. The center itself included two waiting rooms and a training room (similar to a gym), where, between June 2012 and June 2013, they showed television programs for the patients who used the facilities in their recovery in installed TVs in the rooms. No permission was requested from GEMA (a German collection society) to display the content for the patients. GEMA then took Reha Training to court, asserting that the display of the TV content amounted to a 'communication to the public' under the InfoSoc Directive.

The referring court essentially asked whether the broadcasting of TV programmes in a rehabilitation center constitutes a communication to the public under several provisions (including the above Directive).

The CJEU first observed that, as the question referred to dealt with two Directives that mention a 'communication to the public', the provision in the InfoSoc Directive applies without prejudice to the application of the Rental Right and Lending Right Directive (which, similarly, offers the exclusive right to the author to communicate to the public a work, though through a more monetary provision). Although the wordings in each of the above Directives differs somewhat from each other, the Court concluded that their interpretation should be the same in order to keep a unified and coherent legal standard. They further clarified this, establishing that "...the different nature of the rights protected under those directives cannot hide the fact that, according to the wording of those directives, those rights have the same trigger, namely the communication to the public of protected works". Arguably, the interpretation of what amounts to a 'communication to the public' should be clear across the board, and this writer would agree that, unless specifically needed, the interpretation should be the same irrespective of the context of a given directive.

The Court then moved onto discussing the actual interpretation of the phrase. As the Court stated, this involves the assessment of several criteria, and the phrase has to be interpreted broadly. The criteria that are looked at are whether there has been an 'act of communication', and if that has been done to a 'public'.

No, Chuck, you can't communicate what you want,
even with a megaphone

In putting things in simple terms, the Court stated, as established, that an 'act of communication' is "...any transmission of the protected works, irrespective of the technical means or process used", and that every such transmission, to be legal, has to be authorized by the author of that work. Following on, the transmission of the work, to be an infringement of the above rights, has to be communicated to a 'public', which is deemed as "...an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons". The public cannot be a restricted, small subset of people, but 'persons in general'. The CJEU has also established that the communication has to happen to a 'new public', meaning people who the author did not take into account when they authorized the communication of the work (i.e. if the content is paywalled, any people who do not have access through said paywall would be, prima facie, a 'new public'). This also involves a clear and calculated part by the person communicating the work to the new public, where their intervention is essential for the user to receive that broadcast. Without the intervention and the clear 'targeting' by the communicator, there would be no communication to a public.

In the earlier decision in SCF v Marco Del Corso the Court discussed this type of communication in a similar context, holding that the broadcast of TV programming in a dentist's office is not a communication to the public, as the patients do not visit the office to primarily watch TV, which in turn does not increase the users of that particular practice (or its attractiveness to a new public).

The Court concluded that Reha Training had indeed communicated the works to a public, as, drawing an analogy to previous case law involving restaurants, spas and hotels "...the operators of... [the] establishment carry out an act of communication where they intentionally broadcast protected works to their clientele by intentionally distributing a signal by means of television or radio sets which they have installed in their establishment". The clientele would not be an insignificant number, and the intervention of the operator of the center is key for their enjoyment of those works, and were not in the contemplation of the original broadcaster as an audience for the works, making them a 'new' public. The communication of the works also makes the center more attractive to prospective clients, giving it a competitive advantage (and thus benefiting from the communication).

The case is a curious development, and further cements the CJEU's position on the concept of a 'new public', which has been somewhat rejected in the Advocate General's opinion in GS Media. As the decision in the case looms in the horizon, it will be interesting to see whether this decision has a big impact on it, and whether the mere provision of hyperlinks would be an intervention that is indispensable for the enjoyment of the works, especially considering the material is freely accessible online to begin with (rather than locked behind a paywall). This writer believes the CJEU will not deem the sharing of hyperlinks to be a communication to the public, but the Court's track record does show that there are no guarantees to this effect.

Source: IPKat

Links A-OK - Hyperlinking to Infringing Material Online is OK, Says AG Wathelet

Since the CJEU's decision in Svensson the fate of hyperlinking in a European context has been up in the air, especially when it comes to copyright infringing materials and directly linking to that content. This is an incredibly important issue, and one that might have ramifications beyond our wildest imaginations, leading to great issues to how the Internet operates in today's world. While the CJEU deliberates its decision in the matter, Advocate General Wathelet provided us with a preview on the potential swing of the CJEU's vote in an opinion that was awaited by many.

The case of GS Media BV v Sanoma Media Netherlands BV dealt with the sharing of images online, specifically linking to images that have been deemed to infringe copyright. Sanoma Media, the publisher of the famous magazine Playboy, had commissioned a photographer to take photos for the magazine of Britt Dekker, a Dutch TV personality. Prior to their publication in Playboy the photos were leaked, and found their way onto an Australian file data storing website Filefactory. These images were then published on the website of a Dutch tabloid magazine, GeenStijl, who linked directly to the photos' location on Filefactory (where they could be downloaded as a zip file). Despite Sanoma's demands to do so, GeenStijl refused to remove the link to the website, although they were eventually removed from Filefactory. After pursuing GS Media through the courts, GeenStijl repeatedly posted new links to the photos in subsequent articles about the litigation, and the matter eventually ended up for the CJEU to decide.

The questions referred to the CJEU essentially dealt with whether the sharing of a hyperlink on another website containing infringing materials would be a 'communication to the public' under the InfoSec Directive.

In his opinion, AG Wathelet summarized the first question asked from the court as "...whether Article 3(1) of [the] Directive... must be interpreted as meaning that the provision on a website of a hyperlink to another website operated by a third party, which is accessible to the general internet public and on which works protected by copyright are made available to the public, without the authorisation of the copyright holder constitutes an act of communication to the public". Additionally, the Advocate General had to give an opinion on whether this question would be impacted by knowledge on part of the sharing party as to the lack of consent to share the content, and whether the previous publication of the work (or lack thereof) is of any relevance.

What remained a point of contention in the case is the findings in both the Svensson and BestWater cases, which the Advocate General first addressed. What both of the cases ultimately boiled down to was that the provision of hyperlinks to works that are freely available would not amount to a 'communication to the public', and therefore escapes infringement. Authorization of the initial publication was never an issue (although not approved in BestWater), or seemed to affect both decisions according to his opinion.

Ultimately, the Advocate General looked at the two criteria set out to establish a communication to a public, meaning looking at whether there has been 'an act of communication', and that it has been done to a 'public' (or a new public, considering Svensson).

Some links can lead to unsavory results

In answering the first criterion, the Advocate General took the position that the provision of a hyperlink to another website containing infringing works would not be an act communication, explaining that: "Although it is true that hyperlinks posted on a website make it much easier to find other websites and protected works available on those websites and therefore afford users of the first site quicker, direct access to those works, I consider that hyperlinks which lead, even directly, to protected works do not ‘make available’ those works to a public where the works are already freely accessible on another website, but merely facilitate the finding of those works". The Advocate General therefore distinguishes between the provision of the materials, and the finding or accessing of those materials, even if they infringe or not. What seems important in his opinion is the initial provision of the works, and not their subsequent sharing even via hyperlinks. He further iterated this position through the decision in Football Association Premier League and Others, where the intervention of the materials (and their subsequent provision for the first time as infringing copies) was key, which a hyperlink would not do, as it does merely facilitate an already available work. He concluded that "...in order to establish an act of communication, the intervention of the ‘hyperlinker’ must be vital or indispensable in order to benefit from or enjoy works". In his opinion GS Media therefore did not communicate the works, as their intervention was not indispensable in order to access the infringing works. He also considered that, as the question was answered in the negative, the question of a lack of authorization (and knowledge thereof) was irrelevant, even through 'nefarious' intentions.

The Advocate General then considered the question of whether the act of communication was done to a 'public'. He outright rejected the applicability of the 'new public' consideration borne in Svensson, deeming it not applicable in this instance (and potentially in other instances as well as a result). This would only be applicable when the work has been authorized, and thus accessed illegally for the benefit of a new public (i.e. from behind a pay-wall). Even if it applied in the event of a lack of authorization, the above intervention considerations would still apply, negating the assessment as the hyperlink would not add to the potential public that already could access the materials. He concluded that question 2 would therefore be answered in the negative.

The Advocate General made general observations as to this issue and the Internet: "...aside from the fact that, in principle, the posting of the hyperlinks in the main proceedings does not, in my view, constitute a ‘communication to the public’... I consider that any other interpretation of that provision would significantly impair the functioning of the Internet and undermine one of the main objectives of [the] Directive... namely the development of the information society in Europe. Such an interpretation could also distort the ‘fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter’". He further emphasized the necessity of hyperlinking for the functionality of the Internet, and the lack of ability of Internet users to check sources of materials and whether they were authorized or not. If the posting of hyperlinks were to infringe copyright, users would not post them as readily, which would impede the development of the worldwide web.

The opinion leaves the matter quite open, and departed from the CJEU's previous considerations in Svensson and BestWater. Whether the CJEU follow the Advocate General's opinion remains to be seen, but as he wisely raised in his opinion, hyperlinking is essential to how the Internet works, and a balance has to be struck between the provision of links, but the protection of intellectual property from those seeking to blatantly benefit or even undermine this privilege. This writer will await the CJEU's decision with great intrigue, and hopes they will follow along the lines of the Advocate General.

Source: IPKat 

Words Reinterpreted - Copyright and Translations

As has been well-established for years, copyright protects the expression of ideas rather than the ideas themselves (more on which can be found here), no matter what your expression for that idea may be. Words especially are a very nuanced, often unique way of conveying similar ideas or stories, making them the most malleable out of all forms of more direct expression (when images can be much more subjective, at least in this writer's opinion). Although similar stories have been told for centuries, basing themselves on old folk lore or mythologies, their specific expression has always varied drastically, tacking onto the societal make-up of their time and their respective overarching themes. Translations take those works and make them available to people who otherwise would not be able to access them. With this in mind, can you translate a story and not infringe its copyright, and can a translation be a new form of expression of the same story, potentially being protected by copyright itself?

Under the Copyright, Designs and Patents Act 1988 in the United Kingdom, copyright holders have a specific set of rights in their protected works, which includes literary works. Under section 16 of the Act only the copyright holder is able to make an 'adaptation' of the work, which specifically includes translations. Should you choose to make a translation of a work, without seeking a proper license to do so from the copyright holder, you would be infringing their copyright (specifically section 21 of the CDPA). This follows Article 8 of the Berne Convention for the Protection of Literary and Artistic Works that gives authors "...the exclusive right of making and of authorizing the translation of their works throughout the term of protection of their rights in the original works".

Is there any way for an individual to translate a work without infringing copyright then? Under the CDPA there are certain exceptions for the use of copyright protected materials that translations could potentially fall under, specifically criticism, review and news reporting and research and private study. Both exceptions provide avenues for a legitimate use of materials so far as the use is for that specific purpose and not merely done under the façade of the exception in order to create an infringing copy. Arguably, translating a copy for criticism, review or news reporting provides a sufficient reason to do so, as the understanding of the underlying material and using it in that task can be said to be fair and a proper use of copyright protected material for that purpose. The same goes for research and private study, especially when no officially translated source material is not available to be used and thus the materials could not be used to advance your own personal education or research. Arguably none of these do allow for the distribution and/or sale of a translated work, but do offer an avenue for legitimate uses of translated works should you require to do so.

Albert was a master linguist (Source: Farmers Weekly)

Other common law countries have very similar provisions dealing with the translation of copyrighted works. In the United States copyright similarly does not allow for the creation of translations of works, as under 17 USC section 106 the copyright holder has the sole right to create 'derivative works', which does include translations. Canada, much like its cousin in the South and across the pond, gives the right to translate works only to the copyright holder under the Canadian Copyright Act. Finally, Australia, much like the previous three, protects translations as a right only bestowed to the copyright holder under the Copyright Act 1968, as they are considered an adaptation of the original. Clearly the ability to translate a work is seen as an important right of the original author, and rightfully so, as the spreading of a work to new territories, often through linguistic barriers that require the translation of your work, and an opportunistic infringer could easily pounce on the popularity of a title only released in a select few countries.

This still poses the question that can a translation be a new work unto its own, and possibly be protected under copyright outside of the original work? In the US the protection in any derivative works (and in turn, translations) only extends to the newly created parts of the work that did not exist in the original. This may seem very vague, which it is, but arguably this would be any changes in expression or artistic flourishes the translator adds to his or her take on the story, either through necessity, linguistic differences or just through their own initiative. This does not create a work in itself, but does show that the translation can incur protection, even if partially so. Canadian legislation takes this a step further as it has been seen in Pasickniak v Dojacek by the Canadian Court of Appeal that a translated work is a copyright protected work in itself, wholly separate from the original work it derives from. This still does not mean the translator attains any copyright title in his/her translation as the copyright automatically vests in the copyright holder, albeit still separately.

Even so, translations can have even vast differences to the original works, and as seen above, potentially should carry more weight as separate literary works themselves without skirting the copyright of the source than you'd think. Great examples of where translations deviate onto a path of their own, at least in some terms, are works by Umberto Eco. His works often contain specific references to regional artists, works and anecdotes; material that has been noted to be changed or even omitted in his works when translated. Mr. Eco is by no means the only writer who has 'suffered' from the changes through translation, and arguably that is a part of the nature of the beast (there are instances where works have been altered for censorship as well). One could argue that when a translations steps beyond the bounds of the original drastically it could be said to be a work in itself; a reinterpretation of a story created prior. Regardless, copyright will probably not allow for the free translation and 'reimagination' of said works any time soon, as its main function is to reward the original author, not subsequent users of said material, arguably using very little imagination of their own (this writer does not, however, want to diminish their work by any means). Any aspiring translators will therefore have to keep their wits about themselves, and apply for relevant licences or approval before starting on their reinterpretation of their favorite foreign book.

One Taste to Rule Them All - Can You Trademark a Flavor?

Tastes and preferences are as varied and as complex as there are people, yet some distinct combinations truly are above everything else (should you take this writer's word as gospel - which you shouldn't): basil and tomato; chocolate and chili; milk and tea - the list goes on and on. With that in mind, a distinct and successful flavor combination can be the ticket to prosperity for a lot of restaurants or food-related businesses, and locking that combination down quite valuable as well. Although recipes were discussed on this blog in more depth not too long ago, a recent case has emerged dealing with the question that's on everyone's lips: can you trademark a flavor?

The case involving the flavor-fight was New York Pizzeria Inc. v Syal, in which the subject matter near-and-dear to many New Yorkers' hearts (i.e. arteries), pizza, was disputed. New York Pizzeria, a franchising company for pizzerias, brought this lawsuit against their former employee, Adrian Hembree (although against his alleged co-conspirator, Ravinder Syal), who had acted as the company's Vice-President and as a franchisee in its restaurant business. Mr. Hembree's term of employment was ended, and he subsequently went on to found a competing chain of restaurants; Gina's Italian Kitchen. Mr. Hembree had brought a lawsuit against NYPI for an alleged breach of his termination agreement, after which NYPI took on Mr. Hembree for alleged acquisition and transference of internal documents and recipes to Gina's in order to create a knock-off restaurant. Further, NYPI asserted that Mr. Hembree had gained access to NYPI's internal network through another franchisee's account, passing the details onto Mr. Syal, who then downloaded internal documents from said network. The case discussed the matter quite broadly, as many different counts were alleged by NYPI, of which only a few relate to the question posed above.

The beef of the intellectual property argument by NYPI is brought under 15 USC section 1125, as NYPI claim that the defendant infringed its trademark in the flavor of its food, and the trade dress of its goods as to the food's plating. Should a flavor be considered a possible trademark, under section 1125 Mr. Syal could face a civil action for the infringement of that trademark or its possible dilution.

Great flavors can lead to unpleasant results, no matter how delicious

As was seen in Qualitex v Jacobson Products, discussed by Justice Costa in the case at hand, a trademark can potentially be "...almost anything at all that is capable of carrying meaning" - even a flavor, at least prima facie, as long as it indicates a source for the goods: "[T]he essence of a protected mark is its capacity to distinguish a product and identify its source". If a flavor can be so distinct and so unique that it indicates an origin which is undoubtedly a single restaurant or creator, you could argue it is within the remit of trademark protection in the US. Realistically this would be very unlikely, but entertains an interesting thought. Arguably flavors would never reach the requisite secondary meaning, i.e. an impression in the minds of the public as to the origin of a specific good, due to the very vague and hard to pin-point nature of flavors as a whole. Several pizza sauces, for example, even if very different in their composition, will all still taste very similar, albeit with small (or large) differences to them, thus not carrying much of an indication as to the sauce's origin restaurant.

The final nail in the coffin of flavor trademarks is the inability to trademark something which is purely functional. Functionality was seen in Qualitex, to encompass "...[which] is essential to the use or purpose of the article or if it affects the cost or quality of the article,' that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage". Limiting the usability of flavor combinations, especially iconic ones such as pizza sauce, would clearly hinder competition, or even extinguish it entirely within the field of pizza making. As said, this was put to rest in Re N.V. Organon, where the US Trademark Trial and Appeal Board saw that "[flavoring] performs a utilitarian function that cannot be monopolized without hindering competition". In the end Justice Costa dismissed the argument of flavor trademarks.

Justice Costa didn't discuss the plating issue in much depth, as arguing a specific plating as trade dress is very unorthodox, but entertained the thought nonetheless. NYPI claimed that its plating of its baked ziti, eggplant Parmesan and chicken Parmesan carried a distinctive look, warranting protection. NYPI failed to express what they were protecting in the plating of the dishes, and how they were infringed, failing their argument quite early on: "[i]n the trade dress context, a plaintiff must articulate the elements that comprise its protected trade dress in order for the court to evaluate the plausibility of its claim". In the end, as said above, the claim failed due to a lack of demonstration on NYPI's part, but Justice Costa thought the argument could have warranted more discussion: "...NYPI knows how it plates its food, and it could have easily identified what is distinctive about the plating that might warrant trade dress protection".

Similar views have been expressed here in the UK, with an application for a "Taste of Artificial Strawberries" failing to pass the threshold of trademarkability due to its lack of distinctiveness. This echoes US precedent, and arguably would be the right decision in light of the law and public interest in the non-restriction of flavors in the marketplace. In this writer's opinion the future of flavor trademarks seems very grim, but as a connoisseur of all things culinary, I am quite glad that the world of food isn't shackled by commercial interests; at least not unduly.

Source: JDSupra

Google v Viacom Legal Marathon Ends

Seven years is a long time, both for canines and in litigation, and one such marathon has just come to a close as Google and Viacom have agreed to settle their prolonged clash. Having started in 2007 the legal struggle has shown just how valuable copyrighted content and its use for other purposes is for both parties involved.

The initial proceedings were brought on by Viacom over the use of its content, which was uploaded onto the video sharing website YouTube; one which has been owned by Google since 2006. Viacom sought over 1 billion dollars worth of damages, pertaining to over 100,000 different clips on the website. Google argued that per the safe harbor provisions (more in-depth discussion on this particular area can be found here) in the Digital Millennium Copyright Act the search engine giant could not be liable for the infringement of its users who upload said content onto their website.

Rover was puzzled by the process entirely

Three years later the District Court of New York ruled in its summary judgment that Google was protected by the safe harbor provisions, much to the chagrin of Viacom. The decision was subsequently appealed, and took another two years for the matter to face its second decision by the Court of Appeal's revival of Viacom's appeal. The matter was yet again brought to the District Court the following year, where Justice Stanton upheld his previous decision three years earlier.

This is where the situation has stood, and as said the parties have agreed to finally put the matter to rest and settle. The terms of the agreement were not released, however it has been noted by ReCode that no money has been exchanged. Arguably this is a sensible approach by both parties, and brings one of the more gargantuan claims in copyright's modern history to an end. As has been speculated the settlement could also relate to newer sharing models by Google and content owners, where part of the revenue made through their videos, uploaded legally or not, and thus gives Viacom the monetary incentive they want for their content.

The parties released a joint statement declaring that "[t]his settlement reflects the growing collaborative dialogue between our two companies on important opportunities, and we look forward to working more closely together", clearly showing a more amicable ending to the saga. This further strengthens the relevance of the DMCA safe harbor provisions in relation to video streaming websites, and clears the potential hazard that a ruling against Google would have caused for the Internet.

Source: BBC

New Zealand Bans Software Patents - Or Did They?

As we have turned towards an ever-more computerized world, software has arguably become almost as valuable as the hardware it runs on. Without effective protection through patents for innovative software products, the field would be a free-for-all of copying, using others' methods and creating an environment where innovation would not persist. Some have argued, and rightfully so to an extent, that the field has lead to a culture of abuse and 'patent trolls' where software patents are merely a conduit for quick cash-in schemes for companies who have no intention of ever using the patented software. Due to this clear misuse there have been calls for reform or the full fledged abolishing of software patents in the common law, and finally those calls have been answered by the far-away land of New Zealand.

Software engineers' collective disappointment

In mid-2008 the New Zealand Parliament had the Patents Bill introduced, which sought to "...update the New Zealand patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer". The Bill introduces a cavalcade of changes to the old Patents Act 1953, being one of the biggest modifications of the New Zealand patent legislation in 60 years. The Bill introduces an exception to patentability for computer programs in very express terms. Although the exclusion provision states that computer programs are not patentable, this is not the case entirely. 

Under a Supplementary Order Paper to the Patents Bill computer programs are not patentable "...as such if the actual contribution made by the alleged invention lies solely in it being a computer program" (emphasis added). The first two words highlighted in the quote above prove integral to the interpretation of this new provision; software patents are not allowed as such, but should they be a way to implement a patentable process, they can be patentable. The SOP provides an example of a chip in a washing machine, through which a computer program in the chip improves the washing machine's operation. In such instances the software in the chip could be patentable. What is important is the interconnection between the software and the improved process.

In interpreting this the new provision employs a similar approach to that of the European Union and the United Kingdom. This approach was set out in the case of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application, intepreting section 1(2) of the UK Patents Act 1977 dealing with the subject matter of what is not an invention. The New Zealand provision's wording, albeit slightly different, still encompasses the heart of the Aerotel considerations, while adding specifics pertaining to their own legislation, and arguably using the Aerotel test would prove beneficial for the New Zealand judiciary.

Kiwis are very apt with technology

In assessing a patent and whether it is excluded from patentability under the Aerotel approach, the courts would have to properly construe the claim; identify its actual contribution; ask whether it falls solely within the excluded subject matter; and check whether the actual or alleged contribution is technical in nature. The first factor is purely a standard assessment of the patent claim, deciding what the monopoly would be before considering its possible exclusion. The second factor is deciding whether the inventor has really added anything to the stock of human knowledge, emphasizing the substance of the invention (what it actually contributes) above the form of the claim itself (what is argued it contributes). The third factor is assessing whether the contribution is solely an unpatentable subject matter. Should the invention be a patentable subject matter, the final consideration is if it is of a technical nature. 

The New Zealand approach is assessing the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes; what problem or other issue is to be solved or addressed; how the relevant product or process solves or addresses the problem or other issue; the advantages or benefits of solving or addressing the problem or other issue in that manner; and any other matters the Commissioner or the court thinks relevant. Clearly this echoes the approach given above, and would be served well should the New Zealand judiciary consider the Aerotel test.

So as one can see New Zealand has effectively banned software patents, but only to the extent that they exist independently. Calling this a blanket ban is merely hyperbolic, but the potential abuses that have been experienced with pure software patents have been remedied, and it remains to be seen whether the rest of the world will follow suit. Calls have been made for the US to do the same, but with vast amounts of money being tied into software innovation in the US, it can be argued that a ban over software patents in the US is still well behind the horizon.

Source: ZDNet

Retrospective - Novelty in Patents

Invention is often building on older inventions or techniques, adding, changing or modifying it to suit a new application. As Isaac Newton poignantly pointed out in his thoughts about his progress in many fields: "If I have seen a little further it is by standing on the shoulders of Giants." As said, invention often needs a springboard to be able to jump to new heights, although this should not enable the abuse of older inventions and claiming it as your own. A preventative measure in the world of patents is the requirement of 'novelty' which mandates that the invention one is seeking to patent has to not have existed in any prior art; to put it bluntly it has to be new. Different countries in the common law take different approaches to novelty, which merit some explanation.

An inventor's motto

In Australia novelty is a requirement under the Patents Act 1990, which sets out that any patentable invention has to be novel when compared to prior art that existed before the invention was being patented. It will only be compared to publicly available information, although legislation pertaining to trade secrets might still apply. This is determined through the 'reverse infringement' test, formulated in Meyers Taylor Pty Ltd v Vicarr Industries Ltd. In the judgment Justice Aickin saw that "[t]he basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement". This would have to be assessed based on all of the integers of any one of the patent claims and whether they would infringe any existing patents. If none of the claims infringe any existing patents, it can be deemed to be novel and therefore patentable. Should all, or the essential, features of the invention which the patent is sought for be disclosed in any prior art which is publically accessible, the invention would be deemed to not being novel and would not be patentable.

In Canada the test for novelty is set out in the Canadian Patent Act, where an invention is defined as "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". As stated in the Act, the invention cannot have been disclosed to the public in Canada or anywhere else. This requirement is essentially the same as the one relating to prior art in Australia. As said above, this does not mean the invention has to be wholly new, but can be built on older inventions should it fill the other requirements for patentability. 

Necessity is the mother of all invention

In the United Kingdom the concept of novelty is set out in the Patents Act 1977. Under the 1977 Act an invention is new "...if it does not form part of the state of the art". This, again, would be the case should the invention be made available to the public prior to the lodging date of the patent application. The case of Synthon BV v Smithkline Beecham plc set out the test for novelty, distinguishing between two requirements which have been accepted by the judiciary; prior disclosure and enablement. These two requirements were treated as a single matter, however were separated by Lord Hoffman in Synthon. Prior disclosure echoes the same principle as Australia's approach to novelty, being an assessment of potential infringement due to any possible prior disclosures to the public. In Lord Hoffman's mind however, this could not merely be a matter of possibilities  but infringement would have to be entiled; or in other words, the invention would be an infringement. If other possibilities exist, for example an accident as to the same invention, infringement would not be entiled. Enablement, in Lord Hoffman's assessment, meant that if any ordinary skilled person could create the invention which has been disclosed prior. If the invention does not fall into either, the invention can be seen as novel under the 1977 Act.

In the United States novelty is defined under 35 USC § 102. The American approach is much akin to the Australian and British approach; one which relies on prior art. If your invention has not been patented before, published in a printed publication, in use or sale, or made available otherwise, the invention is eligible for a patent and considered novel. Since the introduction of the America Invents Act, the US has moved from a first-to-invent system to a first-to-file system, This in itself does not change how novelty is assessed in patents in the US, but has changed the dynamic significantly within the system regarding new inventions.

As one can clearly ascertain, novelty is not a simple concept, and can be a time consuming consideration for any given patent handling body. The novelty of any patent can be contested if it is later found out prior art existed, even if the patent is given after the patent body's assessment. From a common sense perspective it is completely sensible, and does protect the legitimate interests of all inventors in attempting to keep all new inventors from merely rehashing old inventions in the guise of novelty.

Raising the Bar

Legislation not endorsed by the TV show

Tomorrow, on the 15th of April, a new piece of legislation will come into force here in Australia regarding patents, trade marks and designs, although the main emphasis is on the former two. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will make some changes into existing laws, mainly amending the Patents Act 1990, the Trade Marks Act 1995 and the Designs Act 2003. 

As explained by IP Australia, the legislation makes some key changes, including:

- Raising the quality of granted patents by implementing changes to the key tests for patentability and more closely aligning these with international standards.

- Reducing delays in the resolution of opposition proceedings concerning patents and trade marks.

- Implementing changes to the regulation of patent and trade marks attorney professions and the increasing the ways in which they can operate.

- Implementing procedures for dealing with imports suspected of infringing IP rights and making it harder for importers of counterfeit goods to evade an IP right holder.

- Providing access to a simplified and more effective IP system.

The Act seems to amend some practical aspects, as well as attempt to speed up some of the processes, which no doubt are all welcome changes to all patent practitioners. However, as I lack the direct knowledge of patents in practice, whether these changes will actually impact the field will be left for someone to clarify for me.

A more comprehensive guide to the IP Reforms is provided for all to read, and gives more insight into the changes brought in via the Act.

Overview

So now you might be scratching your heading thinking "I have heard of intellectual property, but I'm not entirely sure what it encompasses". Let me enlighten you!

Intellectual property law covers a number of areas, and without getting too technical they are as follows:

Copyright

Internet pirates are real

The first, and far most influential and controversial topic of them all in today's society. Internet piracy and its alleged effects are discussed almost on a weekly basis in the news, and as technology evolves how copyright grows with it is an interesting sight to behold. Remember when cassettes were killing the music industry? No? Well you just made me feel incredibly old. Whether it is 8 tracks or torrents, what's protected is still the same; the artistic output of an individual. It deals with a wide variety of things. That song you wrote and sang on the train? Covered. That "amazing" joke you came up with? Protected. That book you've been writing for years and 'totally will finish and publish soon'? Safe. As long as it's tangible (i.e. in a physical or real form, even electronic), and it's original, it'll be covered under copyright.

Trademarks

A brand in its natural habitat

You've probably seen the ™ or ® signs next to slogans, logos etc? That is what trademarks cover. Essentially what it is is the protection of the reputation of something, established through activity and popularity, also called 'good will'. Are all slogans or logos covered under trademarks? No. It depends heavily on circumstances, and sometimes, intention as well. Brands like Apple and Coca-Cola have invested a lot of money on marketing and selling their brand, and rightfully seek for it to be protected, and that is what trade marks do.

Patents

Now this is a topic which cannot be easily explained, especially in practice. What patents protect is innovation - something that takes an inventive step to either build on prior technology, or to create something completely new. This topic requires in depth knowledge as to the inner workings of medicine, engineering or what ever subject matter any given patent deal with. Patents award a monopoly for that innovation for a certain period, but for a price; you have to provide detailed instructions as to how the thing is made, so once the patent expires, it is free to be used, built upon etc. This is best showcased by generic medicines, which have been under patent but have expired. Other pharmaceutical companies can then use the formula to make their own and freely sell it (Cialis via email anyone?). Patents require more evidence and have stricter requirements to attain, but offer better and stronger protection than other forms of IP.

Designs

Matt Damon loves his Grandma's knit work 

The last topic is one which protects the overall look of something, and possibly its separate components. Largely relevant in the clothing industry, but can protect a variety of things. That sweater grandma knit you last Christmas is probably ok, don't you worry. The topic I'm the least familiar with, but will endeavor to touch upon as much as possible.

That should give you a nice overall view of the areas dealt with in IP law. Albeit a very simplified overview, brevity is beauty isn't it? Specific cases will address specific issues within the topics, and will offer a better view into them when dealt with, but if one or more of them strike a cord with you, please do go ahead and read more about them.