Frank van Bouwelen Dutch and European Patent Attorney European Trademark Attorney Overview of...
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Transcript of Frank van Bouwelen Dutch and European Patent Attorney European Trademark Attorney Overview of...
Frank van BouwelenDutch and European Patent Attorney
European Trademark Attorney
Overview of Maritime
IPR Issues
Rotterdam February 4, 2010
Disclaimer
Paraphrased the law to make the points in
non-legal style (still correct though) Points are made on the basis of the way
patent laws operate and the effects thereof
Acknowledgements:
Various clients and
AMEM - particularly John Kühmayer
Rotterdam February 4, 2010
IPR
Registered rights Unregistered rights
Patents Copyright
Design (registered)
Unregistered design rights
Trademarks Know-how?
Rotterdam February 4, 2010
Protection of Intellectual Property:
- Patents - Trademarks
- Designs
- Copyright → ?
→ enhances technology, safety
→ not only marketing, also liability!
→ not only marketing, also liability!
Rotterdam February 4, 2010
What right does a patent give?
A patent gives the proprietor a right to stop
others, from
- making, offering, putting on the market,
using, importing, stocking a product, or
- using a process subject to the patent
Rotterdam February 4, 2010
Key to the market?
By being able to stop others → the market for the product or process claimed in the patent can be yours!
Note: You could be stopped by proprietors of other patents which have claimed features which you used, to end up with the product or process claimed by you.
Rotterdam February 4, 2010
Patent laws aimed at motivating technological innovations
Research exception (vs. “Bolar provision”)Selection inventionDependencies of broader and
narrow/advantageous claimsCompulsory licenceMost importantly: Publication of applicationSufficiency of disclosure of invention Stimulates competition on technological level
Rotterdam February 4, 2010
Patent has competitive natureo You have to apply for it
First-to-file First-to-invent
o Claimed technology must be novel and inventive relative to prior technology
o Procedure can be monitored by publico Public can file observationso Public can file opposition
Public is in practice the competition
Rotterdam February 4, 2010
Lifetime of a patent?
20 years from filing
Can be “attacked” by anyone during its lifetime
Can be revoked on the basis of serious grounds
(a) not novel/inventive
(b) not sufficiently disclosed
(c) matter added during prosecution
Rotterdam February 4, 2010
Spotting infringement
Up to the proprietor of patent
Normally, for example:
Using → putting on the market → making
Offering → importing or stocking → making
Rotterdam February 4, 2010
Example of spotting infringement
1. Product is seen to be used
2. You buy the product, reverse-engineer it, analyze it, establish it infringes your patent claim
3. You move up in the chain: → supplier → importer → manufacturer, and sue!
Rotterdam February 4, 2010
Problems with spotting infringement of marine equipment
1. You do not see it being used
2. You do not buy a ship, not inspect a ship, not enter a ship/yard
3. You cannot analyze, reverse-engineer it
4. Usually no shop, offers not made to competitors
5. Exhibition only display
Rotterdam February 4, 2010
Further complications with enforcement of the patent
Patent has territorial character
Vessels move from one territory to another
Rotterdam February 4, 2010
Article 5ter Paris Convention
Rights conferred by a patent shall not extend to:
- the use of the patented invention on board of
vessels
- when such vessels temporarily or accidentally
enter the waters
Provided that the invention is used exclusively
for the needs of the vessel
Rotterdam February 4, 2010
Background of Article 5ter Paris Convention
1851 in London:
“Burgermeester Huidekoper”
“Stadt Dordrecht”
“Fyenoord”
- infringing a UK patent
Rotterdam February 4, 2010
1852 British Patent Act:
Subject to reciprocity, no infringement!
1857 Supreme Court of the USA:
No infringement, provided that in its domestic port the vessel is also not seen to be infringing
Rotterdam February 4, 2010
1877 German Patent Act:
“Auf Einrichtungen an Fahrzeugen, welche nur vorübergehend in das Inland gelangen, erstreckt sich die Wirkung des Patentes nicht”
No reciprocity!
Legal situation in Domestic Port irrelevant!
Rotterdam February 4, 2010
1925 The Hague Conference:
Freedom of international transport prevails:
═> Article 5ter PC
Rotterdam February 4, 2010
Case Law then focussed on the meaning of
“temporarily”
Rotterdam February 4, 2010
Stena versus Irish Ferries Court of Appeal UK:
Irish Ferries entered UK territorial waters 3-4 times
a day for around 3 hours each time
Court of Appeal held:
Entering UK waters is „temporarily“ within the
meaning of the patent law
Rotterdam February 4, 2010
Result:
If no protection on-shore before and during shipbuilding + no protection throughout lifetime of vessel
═> No protection at all !
Rotterdam February 4, 2010
Far East countries have taken advantage of this!
Europe did not respond!
Rotterdam February 4, 2010
Flaws in rationale of Article 5ter PC
“Reciprocity” – only OK if “all” participate
Rotterdam February 4, 2010
Is it necessary to switch off protective power
of a patent to ensure freedom of
international transport?
Rotterdam February 4, 2010
Compare with “green tax” or “environmental tax”
for airplanes
Compare with pharmaceuticals and compulsory
licences
Rotterdam February 4, 2010
“Temporarily”
Is it not the nature of a ship to only be temporarily
in territorial waters?
Judicial review?
Rotterdam February 4, 2010
Key system
If you ask a key to be cut for a lock, prove that
you are entitled to open the door!
Safety and Fair Competition in the Marine World
Rotterdam February 4, 2010
What is the current single key to market in marine world?
Certificate
“You should sell us the cheapest option, good or not, as long as it comes with a certificate”
Certificate determines commercial success of your product!
Rotterdam February 4, 2010
Certification → meeting minimum standards
Transparent procedure?
Public (competitor) can monitor procedure?
First come - first served?
Certificate challengeable by public (competitor)?
Judicial review? Appeal?
No.
No.
No.
No.
No.
Rotterdam February 4, 2010
Good news about certificate
Allows proprietor of a patent to spot infringement!
Certification process itself actionable? (“Bolar provision”)
→ Possibly, under very specific conditions!
Rotterdam February 4, 2010
Role of Classification Societies:
Documenting technology!
For safety it needs to be accurate.
This facilitates monitoring of equipment entering a port
Rotterdam February 4, 2010
Role of Port State Control:
Charging for use of technology, for use of rights?
Techno-tax?
Rotterdam February 4, 2010
Patents drafted in style of certificate
Rotterdam February 4, 2010
Modern Laws can take Modern Technology
into account!
Rotterdam February 4, 2010
Cork money for “not made in Europe” ?!
Rotterdam February 4, 2010
So far, the best monitorable and
best defined IP Right.
Back to know-how
What is going on?
Rotterdam February 4, 2010
Example:
Act of State of Republic of Korea:
In 2010, ships built in Korea will for more
than 90% comprise of Korean produced products.
Rotterdam February 4, 2010
Can you please produce in Korea so we
can buy from you?
Rotterdam February 4, 2010
Customs:
Disclosure of composition or no entry into country!
Rotterdam February 4, 2010
Response is required!
Rotterdam February 4, 2010
Thank You for Your Attention