UK Prime Minister David Cameron has announced (Circular PN013) that UK National Phase Patent Applications having a positive International Preliminary Examination Report (IPER) will be fast tracked and within two months of entering national phase in the UK, the applicant will receive a Notice or Allowance or an Official Action detailing what needs to be done to put the patent application into a position for allowance.

We note that in this regard, the Israel Commissioner of Patents has been there, done that.

Nevertheless, we are pleased to see that the new  Prime Minister has an awaremenss of IP and hope that other regimes will follow suit.  Ideally, the PCT mechanism should be a fast track not a delaying tactic.

Source: IPO press release, 10 March 2010.

Additionally, the US and UK have now agreed to co-operate on patent processing, with the  two governments having announced that their respective patent offices, the US Patent and Trademark Office (USPTO) and the UK Intellectual Property Office (IPO), will co-operate to develop a plan to optimise reuse of work on patent applications that are filed jointly at the USPTO and the UK IPO. 

The offices will try to identify all potential areas of information utilisation by the end of 2010, and will work on building mutual confidence in the work done by each office.

Source: IPO press release, 10 March 2010.

Under Section 17c of the Law, the Israel Patent Office will grant an Israel patent having the same specification and claims to one allowed by a range of jurisdictions, including the JPO, USPTO and UKPTO, unless the invention relates to subject matter considered non-patentable under Israel Law, such as methods of therapeutic treatment, business methods and software per se. (all currently patentable in the US).  

None of the jurisdictions listed currently take much note of what the Israel Patent Office allows or not, albeit the IDS in the United States does have to relate to the citations from Israel as elsewhere. Now that Israel is becoming an International Search Authority for the PCT, it is possible that other countries will be prepared to rely more on the Israel Examination. 

Australia has a modified Examination procedure like Israel, and will grant a patent based on allowance elsewhere. At present Israel accepts Australian examination.

In the UK trademark office, the ‘appointed Person’ has overturned a ‘hearing officer’s decision concerning a trace mark application filed by Coca Cola for “NO HALF MEASURES” applied for in relation to various services in class 41, including education, training, entertainment and sporting activities. (It is not recorded if the overturning resulted in spillage).

Unlike the hearing officer who considered the mark devoid of distinctive character, and therefore not registerable under section 3(1)(b) of the Trade Marks Act 1994, the appointed person considers the mark not devoid of distinctive character. The hearing officer, Mr. J Pike, had considered that the mark was nothing more than a slogan which sent a message – that the applicant provided services which would meet consumers’ requirements, even if their expectation levels were high – which could apply to any undertaking.

This is in line with an Israel Trademark decision regarding a Coca Cola advertising slogan – of the World.  The Appointed Person, cited the recent ECJ decision in Audi AG v OHIM, Case C-398/08, see http://blog.ipfactor.co.il/2010/01/25/european-court-of-justice-recognizes-vorsprung-durch-technik-as-distinctive-trademark/ and held that the mere fact that a mark was perceived as being a promotional statement and, because of its laudatory nature, could be used by others, was insufficient per se to support a finding of non-distinctiveness under section 3(1)(b). He went on to rule that a mark could convey an objective message and still indicate origin, and the mark in issue had distinctive character for the services applied for.

Case: In the matter of application no. 2472042 in class 41 by The Coca-Cola Company, and an appeal to the Appointed Person against the decision of Mr A J Pike dated 30 April 2009, 28 February 2010.

A South African entrepreneur Dimitri Philippou, has registered the following phrase as a trademark: “You can’t be a virgin all your life it’s time®”, this despite heavy opposition from Richard Branson’s Virgin Enterprises. Leaving aside the clear lack of accuracy in the phrase – think of nuns, the Madonna (both the Virgin Mary and the rock singer), the victims in episodes of CSI, Law and Order, Quincy, books by PD James where the surgeon conducting the post-mortem notes that the female victim in virgo intacta, Philippou’s company Bodtrade 54 intends using the slogan for one of his core businesses “Bodtrade Hotels” or “Bodtrade Telecoms”.

With a name like Bodtrade, I suspect that the services provided are the sort of thing that should best be used with discretion and without leaving itemised phone statements for family members to find. That as may be, it contrasts nicely with the Virgin candles ruling in Israel see http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/, where Virgin enterprises succeeded in crushing a small business making candles out of olive oil, presumably for sacramental purposes. Unlike the classification for candles, Virgin Enterprises does have telecommunication and hotel businesses, so the case for Branson’s conglomerate arguing dilution, and if my suspicions are correct, tarnishing, are far stronger than they were in Israel. Generally, slogans of the type above are not considered  in Israel at all, with the notable exception of “a diamond in your pocket” http://blog.ipfactor.co.il/2009/03/17/israel-patent-office-allows-descriptive-slogan-to-be-registered-as-a-trademark/.

Although the UK decision that virgin is being used a noun is, in my opinion correct, it is apparently the first time in the history of Virgin Enterprises Limited, started by Branson in 1970, during the free love years, that a company outside his group has managed to secure a trademark registration including the word ‘virgin’ apart from marks registered for olive oil in which the word is descriptive (at least according to most – with the Israel Patent Office presumably dissenting).

The decision is in line with the EPO approach regarding patentability.
Case: BL O/170/08, 19 June 2008.

The Israel Patent Office decision in Melnicke vs. Giraffa is in the same vein.  The requirements for patentability of software inventions are still cloudy, but software per se. seems to be out, as is business methods implemented by software.

 The appeal is important since the ruling lacks clarity, claiming that examiners should apply the “Aerotel/Macrossan” test – a 2006 case which led to a new, four step test to determine the patentability of software applications.

The European Patent Office (EPO) had allowed the Symbian patent, and there is a certainly a need for a unified approach across Europe.

Traditionally, software, at least software per se., has not been considered patentable in the UK or Europe, as it has been classified as a glorious form of patenting a thought process. In the US, since State Street, anything new under the sun made by man is patentable, and thus Merryl Lynch’ application for business software was patented in the US and rejected in the UK.

Last year, Justice Jacobs, a leading British IP Judge explained why he did not think that including software in the range of patentable material would serve the industry. In re Bielski, an appeal pending before the Federaal Circuit Appeals Court (FCAC) in the States, the issue is up for reexamination.

The effectiveness of patents as a spearhead for technological advance in the software industry is an open question, and there is a large, vocal open-source lobby.   Some of the reasoning, such as considering software ‘non-technical’ is somewhat rediculous, and secondary issues such as the difficulties of searching for software inventions – are not really issues that should dictate policy, but rather secondary considerations to be addressed by funding and training.

Discussion early this week with one of the partners at leading US Patent Attorneys, Needle & Rosenberg revealed that they think that it is now easier to get software patents in Europe than in the US.

Since copyright for software is good for preventing bootleg disks and downloads, but no clearer than patents at deciding whether there is an infringement when relating to retro-engineering and reprogramming, the issue is a critical one and it is a shame that there is so much uncertainly and confusion. 

In Israel, the official position of the Israel Patent Office is that Sotftware per se. is not patentable, but software as part of a system having technological effect is.  In practice, patents have been allowed for software in Israel as well.

The Court of Appeal also rejected the High Court’s finding that there was an arguable case for trade mark infringement because the defendant had allegedly attempted to create the impression that the goods were English in origin.

See http://www.ft.com/cms/s/0/4732f070-cbb2-11dc-97ff-000077b07658.html for more details.

One advantage of this, is that the British Patent Office is generally much faster at examining that the EPO. 

I believe that there is no real justification to regard computer inventions as different from inventions in other fields. If there is novelty, inventiveness and utility (technical effect ;-), the software patent should be allowed.

Copyright in its current form where it lasts for decades, is not an appropropriate tool to protect software. Also, it is the basic idea that requires protection, not the implementation thereof.

For the full story, see the (London) Times article: 

http://business.timesonline.co.uk/tol/business/law/reports/article2767162.ece

Kitchin J held that the Deputy Director of the UKPTO had correctly rejected the applicant’s submissions that a numbered list in the description, or alternatively the section headed “Abstract”, should have been regarded as claims for this purpose.

The claim-set, though important, is the one thing that can be ammended at least before the end of the examination process, provided that there is support in the description. Even if the priority document has claims, it may not be enough for a PCT application to be considered a PCT application. It is essential to fulfill all the formalities when filing a PCT, and so it is essential to use competent professional representation.

One of the problems of course, is that PCT applications are invariably filed in a rush on the last day, as clients rarely provide authorization in advance. From discussion with associates abroad this appears to be a general problem and not just restricted to Israel. Clearly, rushed filing can only increase the likelihood that something will go wrong.

If a numbered list in the description is not to be considered as claims, then perhaps merely omitting the title “claims” to the claims section, or some preamble such as “I claim”, may be enough to void the application.

It also follows that for a US provisional application to be considered as a priority application in other countries, it is advisable if not essential to include at least one or two omnibus claims so that it fulfills the formal requirements to be considered as being an application.

Case: The Queen on the application of Brian George Knight v Her Majesty’s Comptroller-General of Patents, Trade Marks and Designs, 9 October 2007.