2011

The Raising the Bar Bill

3 Comments / Copyright, Designs, Enforcement, IP generally, Patents, Trade marks / / / , , , , , , , , , , ,

Senator Carr introduced the Intellectual Property Laws (Raising the Bar) Bill 2011 into Parliament today.

Press release

Download the text of the Bill and EM from here (choose your own format).

You will remember that (according to the Press Release) the main objects of the Bill include:

  • raising patent standards to ensure Australian innovators are well placed to take their inventions to the world;
  • increasing penalties for trade mark counterfeiters;
  • improvements to border security measures for goods that infringe copyright and trade marks;
  • providing free access to patented inventions for researchers; and
  • cutting red tape and delays when seeking an IP right.

While there have no doubt been modifications to the text of the Exposure Draft (and Patentology flags a big change to the transitional provisions for the new patentability standards), you can get a very good feel for what the various parts of the Bill are trying to achieve:

in relation to patents from Dr Summerfield’s 8 part series over at Patentology:

  1. Part 1: inventive standard
  2. Part 2: usefulness
  3. Part 3: provisional specifications
  4. Part 4: enablement
  5. Part 5: claims supported by description
  6. Part 6: experimental use
  7. Part 7: miscellanea including standard of proof
  8. Part 8: transitional

Kim Weatherall also commented on a number of aspects, exploring in particular the (proposed) trade mark criminal offences.

You do need to bear in mind that these commentaries were on the text of the Exposure Draft and it was intended that anomalies identified through the Exposure Draft would be corrected in the Bill so, as I have already noted, there will be changes. Nonetheless, these comments should give you a good fell for what was being intended and issues that might be thrown up.

As you will see from the commentaries on the exposure draft, there are a host of issues to be considered. Time doesn’t permit anything but a cursory attempt on a couple of points here:

Item 113 of Sch 6 will replace the current s 41 of the Trade Marks Act (requiring a trade mark to be capable of distinguishing) with a new provision intended to reverse Blount and ensure that there is a presumption that a trade mark is registrable. It does this by requiring the Registrar to be satisfied that the trade mark is not capable of distinguishing before the Registrar can reject the application on this ground.

So clause 41(2) says “A trade mark is taken not to be capable of distinguishing … only if ….”

(Now I look at it, I wonder how long before it will be before someone tries to argue that “taken not to be capable of distinguishing” means something different to (and less than) “is not capable of distinguishing”. Oh well. Surely that one would be dispatched over the fence for six?)

While the Bill does seek to change the standard of proof against patent applications and patent oppositions from the existing “practically certain to fail” or “clear” type standard to the usual “balance of probabilities (see e.g. items 14 and 15 of Sch 1), no such amendment is proposed for trade mark oppositions. Therefore, the current state of uncertainty on this issue will continue (contrast e.g. Hills v Bitek at [43] – [55] to Sports Warehouse v Fry at [26] – [40]) , even though the school of thought favouring the “practically certain” or “clear” standard was imported from the Patents Act.

The bill will also introduce a whole new regime of oppositions to the registration of trade marks.

Item 18 of Sch. 3 will replace s 52 so that there is an obligation to file a Notice of Opposition which the Registrar, not the opponent, will serve on the applicant. Item 19 will introduce a new s 52A. This will require an applicant to file a notice of intention to defend or the application will lapse.

According to the EM, the regulations (when they are promulgated) will include power for the Notice of Opposition to specify the particulars of the grounds of opposition. The EM explains:

Opponents are currently required to state the grounds on which they intend opposing an application when they file their notice of opposition. However, they are not required to set out the particulars of those grounds. Frequently, this means that the opponent sets out all possible grounds, whether or not they have any intention of relying on them. As a result, the trade mark applicant may be faced with a number of grounds to deal with and no indication of which are key to the opposition until late in the opposition proceedings and sometimes not until the hearing

makes it difficult for the applicant to prepare their case. It also increases costs as the applicant is obliged to prepare a case in response to all grounds raised in the statement of grounds, including those on which the opponent may no longer rely.

The amendment addresses this problem by allowing for regulations to be made to require the opponent to file a statement of particulars of the grounds on which they intend to oppose. This will help focus oppositions earlier, reducing costs and unnecessary effort for the applicant.

The EM talks of the regulations conferring a power to require particulars. Whether this will be a discretionary power to be exercised on a case by case basis or an obligation on all opponents will need to await the terms of the regulations themselves. For example, the EM on items 24 and 25 states that opponents will be required to file both statements of grounds and particulars and  the last paragraph of the EM on item 17 states that the particulars will be required to be filed within 1 month of the filing of the Notice of Opposition.

The regulations will also apparently include a power to amend the statement(s) of grounds and particulars. However, the EM on items 24 and 25 states:

The regulations will only permit the opponent to amend the statement of grounds and particulars under tightly controlled circumstances.

The Federal Magistrates Court will get original jurisdiction in matters under the Designs Act and the Trade Marks Act alongside its existing original jurisdiction in copyright and (what used to be called) trade practices matters.

 

 

The Raising the Bar Bill Read More »

A problem of expert evidence

1 Comment / Patents / / / , , , , , , ,

VIP Plastics has successfully sued BMW Plastics for infringing its patent for a “Variable-length Dip Tube for a Fluid Transfer Container”. The most interesting point to emerge is why the expert evidence on one side prevailed and, on the other, failed – even so far as being rejected as inadmissible.

How the battle was won

As is typically the case, much of the battle turned on whether applicant’s expert evidence or the respondent’s was accepted. Kenny J denied that the respondent’s expert’s evidence was not admissible and, even if it were, would have preferred the applicant’s witnesses. The applicant’s witnesses were the named inventor and his assistant.

In construing a patent (whether for deciding its validity or if it has been infringed), it has to be read through the eyes of the (non-inventive) person skilled in the art.

Who is the person skilled in the art

Kenny J found at [20] that the relevant field or art in this case was:

the manufacture and use of dip tubes, particularly in chemical transfer drums or like containers used in the agricultural and veterinary fields.

The named inventor gave evidence about the attributes of the person skilled in this art at [21]:

these attributes included a good working understanding of the processing of plastics and the manufacture of plastic products (involving, amongst other things, an understanding of varying grades and types of plastics and manufacturing processes such as extrusion and blow, injection and vacuum moulding, as well as the economies of such processes). According to Mr Mandile, it was also necessary to have some experience and understanding of the manufacture of large plastic fluid containers (of a size more than 20 litres in volume) incorporating some sort of extraction system. Further, it was necessary to have an understanding (of the kind that a chemical engineer would have) of the environmental stress effects on plastics and the performance characteristics of varying grades of polymers under stress and when interacting with the types of chemicals solutions used in agriculture and likely to be stored in the drums. Finally, it was necessary to have some familiarity with the various products and solutions that had been tried in the industry. In Mr Mandile’s opinion, knowledge of this kind was generally confined to people working in the plastics industry, who had experience in the design and processing of plastic containers of larger sizes and the manufacture of plastic packaging and transfer of chemical fluid to and from such packaging. In cross-examination, Mr Mandile stated that he regarded himself as a person skilled in working in the field of dip tubes for agricultural and horticultural purposes.

Kenny J noted that Aickin J had accepted that evidence about the experiments undertaken by an inventor leading up to the invention could be relevant even if “not always likely to be helpful”. As a result, Kenny J considered at [22] that the inventor could also give evidence about the characteristics of a the person skilled in the relevant art, albeit such evidence needed to be assessed carefully. On the other hand, the respondent contended that “just about any engineer with a basic knowledge of manufacturing techniques and a basic knowledge of mechanics of devices could be classified as a skilled addressee”. Kenny J rejected this on the evidence.

Accordingly, her Honour accepted at [23] that:

the skilled addressee is a person with practical knowledge of and experience in the manufacture of plastic products, particularly large fluid containers incorporating some kind of extraction system. That is, such a person would have practical knowledge and experience in the manufacture of plastic packaging for the storage of fluid and the transfer of such fluid from the packaging. Such a person would also have an understanding of the environmental stress effects on plastics.

Why the professor was not a psa

There were a number of problems why Kenny J considered that the evidence of the professor advanced by the respondent was not relevant (and so not admissible). The chief reason was that he had no relevant or special expertise and was unable to give evidence about what those in the art would know or do.

Section 76 of the Evidence Act generally rules opinion evidence inadmissible. One important exception is provided by s 79 for “expert” opinion (about a relevant issue). The opinion is “expert” for this exception where it is evidence from a person if the person “has specialised knowledge based on the person’s training, study or experience” and the opinion “is wholly or substantially based on that knowledge” (emphasis supplied).

In this case (and will not necessarily be true in every case), the professor had worked in the wool industry “for 10 years in the 1980s” and, since then, he had “mainly been an academic, teaching in the area and consulting in minor ways for engineering” when the priority date for the patent was in 2000. Then at [60]:

Of course, in a case such as this, a court may receive expert evidence from persons other than skilled addressees if it is otherwise relevant. There was, however, a serious difficulty with [the professor’s] evidence in another respect: it was not just that he was not a skilled addressee but that he had no history of working in the fields of dip tubes or plastics, or some related field. Without this specialised knowledge, based on training, study or experience, [the professor] was not in a position to give relevant evidence to the court bearing on the meaning of the VIP Patent or a prior publication, the issue of novelty and the issue of obviousness:

Then, so far as the professor gave evidence about the innovation process based on his specialised knowledge, it was not knowledge relevant to the art in question.

There were other problems too: opinions were expressed about questions of mixed fact and law – e.g. it was obvious – based on misunderstanding of key legal concepts; there was also a problem of hindsight.

The use of relative terms

The infringer’s attack on the patent as lacking clarity because it used relative terms such as “inhibits bending” and “just below the end” were dismissed. Kenny J accepted that they were not precise, but found they applied Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95 to find they provided a workable standard.

VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2011] FCA 660

An earlier round in the dispute where Kenny J refused to refer the matter to the Commissioner by a direction under s 97(3) of the Patents Act.

A problem of expert evidence Read More »

ICANN approves ‘historic’ new gTLD regime

1 Comment / Domain names, Internet, Trade marks / / / , ,

ICANN’s board meeting in Singapore today voted to launch new top level generic names: apparently 13 voted for, 1 opposed and 2 abstained.

Currently, gTLDs there is a closed system, confined to 22 different types such as .com, .info, .biz etc.

Under the new plan, there won’t be any limits on what can be the top level domain. Thus, if Sony wanted to launch its own top level domain such as .sony or maybe .psp, it could apply to do so.

According to ICANN’s Chairman of the Board:

Today’s decision will usher in a new Internet age,” said Peter Dengate Thrush, Chairman of ICANN’s Board of Directors. “We have provided a platform for the next generation of creativity and inspiration.

and

ICANN has opened the Internet’s naming system to unleash the global human imagination. Today’s decision respects the rights of groups to create new Top Level Domains in any language or script. We hope this allows the domain name system to better serve all of mankind,” said Rod Beckstrom, President and Chief Executive Officer of ICANN.

Some reports also indicate that so-called internationalised domain names have been approved; i.e., those using characters other than Latin letters – Chinese, cyrllic etc.

Applications for new gTLDs are planned to be open from January 2012 to April 2012.

It is expected that it will cost US$185,000 to apply.

There looks like lots of “fun” will be in order.

Some names will be “reserved”. (See page 2-8 of the Application Guidebook (really p. 60)). Then there will be questions of applicant suitability and DNS / technical stability.

There will be an objection process to deal with 4 types of disputes:

  • String Confusion Objection – The applied-for gTLD string isconfusingly similar to an existing TLD or to another appliedforgTLD string in the same round of applications.
  • Legal Rights Objection – The applied-for gTLD stringinfringes the existing legal rights of the objector.
  • Limited Public Interest Objection – The applied-for gTLDstring is contrary to generally accepted legal norms ofmorality and public order that are recognized underprinciples of international law.
  • Community Objection – There is substantial opposition tothe gTLD application from a significant portion of thecommunity to which the gTLD string may be explicitly orimplicitly targeted.

See page 3-4 (really p. 150) of Module 3.

For IP owners, there will be a trademark clearinghouse process and, after designation of new gTLDS, a post-delegation dispute resolution procedure.

So, if you own a trademark, you may want to start planning now about how you are going to protect your interests even if you don’t plan to set up your own cyberspace.

ICANN approves ‘historic’ new gTLD regime Read More »

What happens on the Internet in 60 secs

Leave a Comment / Internet / / / ,

70+ domain names registered

13,000+ iPhone apps downloaded

600+ new videos uploaded to YouTube …

See the Infographic

via Peter Black

What happens on the Internet in 60 secs Read More »

iTunes Match and making Prof. Lessig’s case

1 Comment / Copyright / / / , , , , , , , ,

Recap: Prof. Lessig’s argument.

You will remember that Michael Speck from Music Industry Piracy Investigations was outraged by Apple’s pending iTunes Match service and, in particular, the part where the service would in your iCloud account copies of music on your hard drive which had not been bought through iTunes.

At the time, it wasn’t clear (at least to me) whether Apple was going all gung-ho and just offering this unilaterally or had the agreement of the record companies to this.

Of course, if the record companies had agreed to this, it would be rather hard for them, or their representative, to complain about the pirate’s charter.

Jonathon Bailey, at Plagiarism Today, reports here that Apple is in fact offering the service in the USA with the agreement of the record companies. He also goes on to discuss indications that this is all part of a clever new strategy by the record companies to combat piracy – one of the indications he identifies includes recent reports that the music industry in Australia is not pursuing a 3 strikes policy (at least as strongly) as the movie industry.

Swerving to another aspect: the iTunes Match service Steve Jobs announced was for the USA only. Media reports suggest it will take up to 12 months for the service to be extended to the UK and speculate other countries will have similar delays.

Copyright is, of course, a territorial right and there are often different owners and licensees for different territories (i.e., countries). Thus, just because you have consent from the (or a) copyright owner in one country does not give you rights to do the same thing with the corresponding copyright in another country. No doubt, therefore, a large part of any delay will be attributable to the need to negotiate separate arrangements with the owners of copyright in different territories.

So the delay reported in the media should come as no surprise. That shouldn’t come as too much of a surprise to those in Australia who monitored, for example, how long it took for the iBookstore to get any “in copyright” content. Perhaps, if Mr Speck’s view is representative of the views of the copyright owners in Australia, the wait would be even longer – what an economist might describe as “infinitely long”.

All of which goes to highlight, as representatives around the world assemble in Geneva to debate extending copyright and introducing limitations for visually impaired readers, why are we still dealing in the 21st century with territorial rights for electronic rights which can be accessed virtually instantaneously from virtually anywhere in the world?

Oh, perhaps it’s not just an electronic “problem”. This product is advertised for sale in the USA for US$399. You can buy it here for AUD$699 or (depending on exchange rate fluctuations) approximately US$736. (By the way, I am certainly not recommending that you do buy the product from either source, I have no experience with it.) Almost makes you wonder where’s Prof. Fels?

iTunes Match and making Prof. Lessig’s case Read More »

Microsoft v i4i – US Supreme Court decides

1 Comment / Patents / / / , , , , , ,

Microsoft has lost its appeal to the US Supreme Court.

Microsoft had argued it should have to prove its claim that i4i’s patent was invalid by “a preponderance of the evidence”.

Under the US Patent Act, however, a patent having been granted after examination by the Commissioner is “presumed valid”. The US Supreme Court has ruled that “presumed valid” in this context had a settled common law meaning which Congress was presumed to have adopted. As a result, Microsoft had to make its invalidity case “by clear and convincing evidence”. That is, there is a strong presumption of validity in the USA.

Microsoft Corp v i4i Limited Partnership

Initial commentary by Patently-O.

The case initially attracted international attention as Microsoft was ordered to stop selling versions of Word which had the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML. This presumably means that Microsoft will have to pay the US$290 million damages awarded against it for infringement.

Under Australian law, a person alleging a granted patent is invalid has the onus of proof on the usual balance of probabilities standard.

A person opposing the grant of a patent, however, has to establish their case on the clear and convincing or practically certain standard. The exposure draft of the “Raising the Bar” amendment legislation proposes changing that standard, and the standard for acceptance, to the balance of probabilities standard too. (See items 14 and 15 of Sch. 1 (pdf) and pp 26 – 30 of the (draft) EM (pdf).

Patently-O speculates from the voting alignment of the current Court that the US Supreme Court is now shifting “to the right” or “pro-patentee”.

Microsoft v i4i – US Supreme Court decides Read More »

Helping make Prof. Lessig’s case for him

Leave a Comment / Copyright, Internet / / / , , , , , , ,

So, Steve Jobs introduced iCloud to the world yesterday.

Michael Speck from Music Industry Piracy Investigations (the people who bring down pirates like Kazaa for the record industry) declared:

Apple was “no better than the old p2p pirates”.

Now, at one level, Apple is not doing that much that hasn’t already been done before: Apple own webpage compares its service to those already on offer from Amazon and Google. Here’s another 17 Apps Mr Jobs made redundant.

Presumably, what you “buy” from Apple through the iTunes store is covered by a licence. The thing that Mr Speck is concerned about is the iTunes Match service: if you let Apple scan your hard drive it will store on the iCloud server for you copies of – according to Mr Speck – all the music you have there; you paid music and music you, er, ripped yourself including pirated music files.  Tidbits’ summary of iTunes Match:

iTunes Match — What about the music you purchased elsewhere or ripped from CD yourself? For a $24.99 yearly fee, iTunes Match makes those songs available, too. iTunes uploads a list of songs in your library (much as it does now for the iTunes Genius results) and matches them (probably using music fingerprinting) against Apple’s collection of 18 million tracks. If you choose to download a track to a device where it doesn’t appear, Apple provides a version at iTunes Plus quality (256 Kbps and free of DRM), even if your original copy was ripped at a lower quality.

Hmm, so if an Australian user chooses the music files to be “matched”, that puts Apple in the territory of iiNet (unless of course Apple’s servers are “in” Australia too).

But wait you say, isn’t there a fair dealing defence? See if you can fit what is being proposed into this.

From what some of the other commentators say, however, it looks like Apple may have cut a deal with the record companies so that some percentage of the annual iTunes Match fee goes to the record companies – see the comments of Kim Weatherall and Colin Jacobs here.

If that were part of the deal with the record companies, then problem solved, but Mr Speck’s interpretation is that it just a unilateral position taken by Apple without the consent of the copyright owners.

Then, for those of us in Australia, there is another problem: when it launches, iTunes Match will be available only in the USA. It will become available in other parts of the world only when licences are negotiated with the copyright owners. Wonder how long it will take before (a) Apple gets around to negotiating with copyright owners for Australia and (b) the chances the copyright owners for Australia will agree to any of this? Remember how long it took for any copyright material to show up in the iBookstore?

On the topic of territorial copyright:

When Zengobi announced Curio Core it was priced (to US customers) at US$39.99. It’s currently available in the Apple Australia Mac App store for AU$47.99, even though the Australian $ currently buys (approx) US$1.06 (which translates into just under AU$38. You can have similar fun with lots of other items in the App stores. Choice magazine provides even more egregious examples for a host of brands.

What Prof Lessig’s case is.

Helping make Prof. Lessig’s case for him Read More »

Government responses to ACIP enforcement reviews

Leave a Comment / Enforcement, Patents, PBR / / / , , , , , ,

The Government has announced its responses to ACIP’s reviews of:

On a quick skim, the main recommendation to introduce a Patents Tribunal to determine “IP” disputes has been found non-viable due to the limitations on the Commonwealth’s repository of judicial powers. With WIPO’s arbitration and mediation service in mind, however, IP Australia is to work with alternative dispute resolution providers to provide a new ADR resource. In the PBR context, the Government states that it does not consider it appropriate for IP Australia, as a regulatory agency, to provide post-grant mediation services itself.

The review on PBR has received rather mixed results.

The Government has not accepted the proposal to introduce a “purchase” right.

The PBR Act will be amended to clarify that harvested material which can also be used as propagating material qualifies as propagating material for the purposes of the Act’s prohibitions.

The Government accepts that no changes to the operation of ss 14 and 15 are required.

At this stage, the Government considers that the making of “mendacious” declarations of PBR is adequately covered by the prohibitions on misleading or deceptive conduct in trade or commerce.

Lots of recommendations for more education.

No doubt, you will have your own favourite recommendation(s), but (as I am not a Kat, ip or otherwise) that is all there is time for today!

The Minister’s Getting Tougher on Imitators press release.

ACIP’s “patents” review (pdf).

ACIP’s PBR review (pdf).

Government responses to ACIP enforcement reviews Read More »

Lessig at e-G8 or Le civilised Internet vs gales of creative destruction

2 Comments / Copyright, Internet / / / , , , , , , , ,

While we’re having our dark mutterings about what might be in a “Convergence Review“, the Leaders of the Free World (or at least the Western Hemisphere) meeting at Deauville have declared:

5. We discussed new issues such as the Internet which are essential to our societies, economies and growth. For citizens, the Internet is a unique information and education tool, and thus helps to promote freedom, democracy and human rights. The Internet facilitates new forms of business and promotes efficiency, competitiveness, and economic growth. Governments, the private sector, users, and other stakeholders all have a role to play in creating an environment in which the Internet can flourish in a balanced manner. In Deauville in 2011, for the first time at Leaders’ level, we agreed, in the presence of some leaders of the Internet economy, on a number of key principles, including freedom, respect for privacy and intellectual property, multi-stakeholder governance, cyber-security, and protection from crime, that underpin a strong and flourishing Internet. The “e-G8” event held in Paris on 24 and 25 May was a useful contribution to these debates.

[Slight digression: “new” issues? plus ça change?]

The real fun, however, was at the “e-G8”.

President Sarkozy, who was convening the meeting of the Leaders, had brought together all sorts of likely people

[such as Eric Schmidt, Mark Zuckerberg, Jeff Jarvis and Prof. Lessig]

and issued a clarion call for Le Civilised Internet.

It all started very well with M. le president declaiming:

You have changed the world. For me, you have changed the world, just as Columbus and Galileo did. You have changed the world, just as Newton and Edison did. You have changed the world with the imagination of inventors and the boldness of entrepreneurs.

However:

Also the States we represent need to make it known that the world you represent is not a parallel universe, free of legal and moral rules and more generally all the basis principles that govern society in democratic countries. Now that the Internet is an integral part of most people’s lives, it would be contradictory to exclude governments from this huge forum. Nobody could nor should forget that these governments are the only legitimate representatives of the will of the people in our democracies. To forget this is to run the risk of democratic chaos and hence anarchy. To forget this would be to confuse populism with democracy of opinion. Juxtaposed individual wishes have never constituted the will of the people. A social contract cannot be drawn up by simply lumping together individual aspirations.

and

Do not allow the revolution you began to violate people’s fundamental right to privacy and to be fully autonomous. Complete transparency, which never allows a person to rest, will sooner or later come up against the very principle of individual freedom.

Let us not forget that behind an anonymous Internet user, there is a real citizen who is evolving in a society, a culture and an organized nation to which he belongs and with laws he must abide by.

Do not forget that the sincerity of your promise will be assessed in the commitment of your companies to contribute fairly to national ecosystems.

Do not allow the revolution you began to violate the basic right of children to lives that are protected from the moral turpitude of certain adults.

Do not allow the revolution you began to be a vehicle for maliciousness, unobstructed and unrestricted. Do not allow this revolution become an instrument in the hands of those who wish to jeopardize our security and in doing so, our freedom and our integrity.

You have allowed everyone, with the mere magic of the Web, to access all the cultural treasures of the world in a simple click. It would be something of a paradox if the Web contributed to draining them over time.

The immense cultural wealth that provides our civilizations with such beauty is a product of the creative forces of our artists, authors and thinkers. Basically, it is the product of all those who work on enchanting the world.

Yet these creative forces are fragile because when creative minds are deprived of the fruit of their talents, they are not just ruined, what’s worse, they lose their independence, they will be required to pawn their freedom.

Unfortunately, this didn’t meet with such a good press (at least in those parts of the (western) world that Napoleon didn’t conquer). For some of the adverse press: here, here, here, here. Maybe, the President said something more specific in unscripted comments as the press and Prof. Lessig all react to suggestions that the rest of the world should be introducing the 3-strikes regime of the loi hadopi (France and France again and NZ) and, in another reverberation DownUnder, the rights of governments to censor what their citizens read or do on the internet.

Prof. Lessig was willing to concede that (for intellectual property rights) the question is not whether there should be copyright protection – “No-one serious denies this” – the question is how copyright should be protected in the age of the Internet. On this question, he sharply disagreed with M. le president. The President’s solutions were answers provided by incumbents. And such answers, Prof. Lessig says, should be treated with (too put it mildly) skepticism:

From the Hargreaves Report (UK)

Instead, Prof. Lessig pointed out, the future of the Internet is not:

  • Twitter
  • Facebook
  • Google
  • (he hopes) Rupert Murdoch,

the future of the Internet is not here (yet). We need to be careful lest the rules we put in place today (at the behest of incumbents) foreclose the emergence of new developments or lose sight of reality.

Now, of course, Prof. Lessig is engaging in polemical advocacy (just as Pres. Sarkozy was), but the point he raises is important and it is important that “we” get it right. One must accept that the State can lay down rules for its citizens’ use of the internet, just as it can lay down rules for all other aspects of its citizens’ lives. Apparently, this even applies in the USA, but in the UK may be not or may be. The question is: what rules (if any) should it lay down and whose views should it be listening to?

You can watch Prof. Lessig’s speech (which I recommend you do just long enough to admire the space age Stage that proves we really are living in the future) then switch over to the slideshow for the lesson (do persevere past section 1, the alcoholic(s)).

The link to the official (English translation of) the text of President Sarkozy’s speech.

For Hargreaves and some reaction.

The G8’s 2011 communique.

If you still need more on ‘creative destruction’ after watching Prof. Lessig, start here.

Lid dip: Peter Black at Freedom to Differ.

Lessig at e-G8 or Le civilised Internet vs gales of creative destruction Read More »

Inducing patent infringement in the USA

Leave a Comment / Copyright, Patents / / / , , , , , ,

The US Supreme Court has ruled that liability for inducing infringement of a patent under US law requires knowledge of the patent or something called ‘wilful blindness’ to the patent’s existence.

Patently-O summarises and includes a link to download Global-Tech Appliances, inc. v. SEB S.A.

Now, I do know that their law is different to our law.

For a start, under our law infringement can lie in ‘authorising’ the infringer, not (just) inducing the infringement or that idea of contributory infringement – the patentee’s exclusive rights under s 13 include the right to authorise someone to exploit the patent as well as to exploit the patent.

In Ramset, the Full Court traced the old case law: you couldn’t be liable for ‘merely facilitating’ someone else to infringe by supplying materials to them, even if you knew they were going to use them to infringe. If your involvement was sufficient to amount to a common design, or procuring their infringement, however, which generally seemed to presuppose some knowledge of the patent – you could be liable.

Ramset itself knew of the patent’s existence in 1987, several years before it issued the brochure with instructions on how to assemble its product and use it in a way that infringed.

But, on general principles, liability for authorisation requires two elements: (1) that someone has done something which infringes the patent (or threatens to do so in a quia timet case) and (2) the alleged authoriser has done something, or may be supplied something, to entice (to use yet another synonym), induce, persuade or encourage the first person to do that infringing conduct.

The first person, the primary infringer, can be liable even if they do not know that there is a patent – they might escape liability for damages or an account in view of their innocence: see s 123. Why shouldn’t that also apply to the alleged authoriser. Indeed, s 123 would seem equally applicable to the alleged authoriser. And that indeed is the position that Bennett J has reached in Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd [2010] FCA 108, for example.

The copyright cases on authorisation go so far as to hold that, at least in some circumstances, a person who stands by with knowledge that infringing conduct is occurring, or may be is likely to occur, will be liable as an authoriser where they have power to do something about it. Perhaps, we’ll get a better understanding of what is the quality of that power to do something if the High Court grants special leave to Roadshow in the iiNet case.

Inducing patent infringement in the USA Read More »

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