#IPBday – The setbacks of the mobile phone between the first patent and the placing on the market.

The pioneer patent on mobile phone technologies is that of Mr. Martin COOPER (MOTOROLA) filed on October 17, 1973 in the USA and issued September 16, 1975.

The patent had been extended interaallia to Germany and the United Kingdom, but surprisingly does not seem to have been extended to France. Would France have been a less interesting market than Denmark or Spain at that time?

The inventor Martin COOPER was the first to make a mobile phone call on April 3, 1973 in New York at 6th Avenue, which today seems like a trivial thing. (The experts would immediately ask the question of disclosure before filing that is legally problematic, but this is not the subject). For the anecdote, he called his competitor Joel Engel of BELL LABS, to show him who was the most advanced.

MOTOROLA (COOPER’s employer and patentee) is known for having a multitude of pioneering patents that have been at the basis of the evolution of mobile communications technologies. Many subsequent patents were dependent on Motorolla patents.

Hoowever, the technology took a long time to be available on the market, and more time to be in mass production.
In the US, the Federal Communications Commission (FCC) regulated frequency usage in 1983. On September 21, 1983, the FCC approved the first commercially available Motorola DynaTAC 8000X. It weighed 800 g and measured 33 cm long. His price was about $ 4,000 and his memory was limited to 30 phone numbers. Its communication autonomy was less than an hour and its loading time was 10 hours.
Ten more years were needed to arrive at a mass production of the phone.

The size, weight and performance of the phone have of course evolved considerably since then.

In the same way, you may have a breakthrough innovation that will change the paradigms so much that we will wonder later how could we do without this invention. It is crutial not to make a destructive disclosure of novelty and to protect your innovation in order to reap the fruits thereof.

SOPERYAH IP

#ITLaw – The Right to software Interoperability

The wealth of questions relating to industrial property is greater than we imagine.

Despite the importance of legal protection of program creators, it is critical that right holders of computer programs do not create excessive partitioning that generates abuse of rights.

As in all aspects of IP, the cursor is to be placed in the right place between protection of intellectual property, and defense of the interests of the public.

It is on this basis that the legislators have progressively implemented what was subsequently called the right to interoperability, or the possibility for a file or program not to be exploitable exclusively by the means provided solely by the program provider. In legal terms enshrined in the applicable European law, the aim is to enable a computer program to communicate and function with other elements of a computer system and with users, namely to enable both a hardware and software interconnection to be able to implement information exchanges.

The problem is not common with conventional word processor computer programs. In general, “creator” files can be read and/or modified using third-party software.

But what happens when programs and files are siled by the creators, and software licenses are above the budget of a company?

European law provides in substance for allowing third parties to perform reverse engineering operations within certain limits, in order to implement interoperability. National legislations must not impede the application of these provisions.

Under French law, the legislator goes further because an Authority has been established to ensure compliance with the provisions on interoperability. Operators are able to request information to achieve interoperability as provided by law.

The case arose for the Association VideoLan (VLC), which refered to the Authority to be able to play a Blue-Ray (with specific encryption) on VLC software. The case is not a satisfactory source of instruction on binding measures to enforce the interoperability provisions as such, as the Authority concludes that the VideoLan association should have contacted the Blue-Ray Consortium to have the necessary technical information, before referring to the Authority.

The Authority specifies that the decompilation and reverse-engineering provisions must not be used to offer a software that may be substitute the creator’s software. As a result, only data allowing interoperability can be requested, in order to balance interoperability with the protection of intellectual property rights.

Our team is at your disposal for more details on the sources and applicability of these provisions.

SOPERYAH IP

#TMLaw – The setbacks of the application for registration of the figurative mark “MESSI” at the EUIPO

The multi-balloon d’or Lionel Messi has filed several European trademarks with varying degrees of success.

One of them encountered an obstacle that proved to be major, whereas, from our point of view, ways to overcome these obstacles could have been used.
The trademark application in question is the European application 010181154 filed on 08.08.2011, not yet registered. It is a sign with a stylized “M” with a MESSI notation in a specific caligraphy where the E is in another color and another calygraphy.

This filing was made without knowing of an earlier word mark, “MASSI”, which its holder Mr. Jaime Masferrer Coma raised in the context of an opposition to the registration of the “MESSI” mark, in November 2011 in essence on the basis of an argument of risk of confusion between the two signs for sporting goods.

In 2013, the European Intellectual Property Office (EUIPO) decided to reject the registration of the mark  “MESSI” mark.

Lionel MESSI then filed an appeal.

In April 2014, EUIPO rejected MESSI’s appeal, arguing in essence that there would be visual and auditory similarity between the two signs.

Lionel MESSI filed an appeal before the European Union Court (EUT) to seek the annulment of the EUIPO decision.

On April 26, the EUT decided in favor of Lionel MESSI. The EUT considered in essence that Lionel MESSI’s reputation is such that a consumer would necessarily associate the MESSI mark with the footballer, and concluded that there was no likelihood of confusion.

So it was a victory for Lionel MESSI, but the owner of the “MASSI” mark has filed an appeale.

To follow up closely …

This dispute illustrates, on the one hand, the importance of constituting IP rights as soon as possible, especially when international fame is not indisputable, and to avoid years of procedure and high costs. On the other hand, it appears that it is also essential to carry out availability searches including signs similar to the one whose protection is sought, and not to be limited to an identical search.

Expertise in these questions can help avoid litigation …

In fact, an earlier filing would not have had a major impact in the case of MESSI because the “MASSI” mark was filed on 27/11/1996, while Lionel MESSI was still only 9 years old …

SOPERYAH IP

#IPBday – The seat belt is 60 years old …

On August 29, 1958 Mr. Nils BOHLIN (or rather his employer VOLVO) filed a Swedish patent application for a so-called 3 ponits safety belt. Today the safety seatbelt is so commonplace that one has the impression that it has always existed, while despite its simplicity a posteriori, it is undeniably an invention that has given a considerable advance. By 1961, more than three quarters of new cars were equipped with seatbelts. The same belt is found in cars manufactured every day.

It may also be the case for some of the solutions you have imagined, but which would difficult to market without a patent.

Nils BOHLIN was already inventor nominated in more than fifteen patent applications at the time of the patent application on the safety seat belt. He was previously an avionics engineer for the company SAAB (SVENSKA AEROPLAN AKTIEBOLAGET), applicant of the aforementioned patent applications. After working on ejector seats and their belts, Nils BOHLIN would have been hired by VOLVO to work on car seatbelts, which turned out to be a great success. Nils BOHLIN wanted to provide a belt that would “hold the upper and lower body in a physiologically favourable manner and is easy to connect and disconnect”.

The seat belt, however, took a long time to be accepted.

BOHLIN had to demonstrate the effectiveness of his seatbelt in a study of 28,000 accidents in Sweden. He presented a paper at the 11th Stapp Car Crash Convention. The unattached occupants sustained fatal injuries throughout the speed scale, while none of the occupants with a seat belt were fatally injured at a speed below 60 mph. In addition, no occupants fastened to the belt were fatally injured when the cockpit remained intact.

This study resulted in the US Department of Transportation requiring three-point seat belts being mandatory in American cars. And it was not until 1976 that the use of the seatbelt was made mandatory in Germany.

This is how a little idea turns the world around…

SOPERYAH IP

#IPStats – Statistics of international filings, especially of trademarks

In contrast to patent filings and trademark values, European countries, including France and the United Kingdom, maintain commendable place in the rankings of the number of filings of trademarks.

The statisting of filings of international trademark applications from the World Intellectual Property Office (WIPO), ranks France as 4th (with 4,261 international filings, and a raise of 3.3%) and the United Kingdom as 5th (with 3,292 filings , and a raise of 9.3%).

At the top of the ranking are the USA (with 7,884 filings, and a raise of 2%) followed by Germany (with 7,316 filings, and a decrease of 3%), and China (with 5,230 filings, and a raise of 36.3%). %).

Japan and Korea, ranked ahead of France and the United Kingdom in the number of patent filings (PCTs), are ranked behind these countries in trademark filings, which shows that business development is not only about developing patent portfolios, but also marketing campaigns associated with the development of the intellectual property portfolio in a broad sense, including trademarks and designs.

The first applicant is L’OREAL (FR) with 198 filings, followed by the following companies:

– RICHTER GEDEON NYRT (HU – 117 filings),
– ADP GAUSELMANN GMBH (DE – 104 filings),
– NOVARTIS AG (CH – 96 filings),
– ABERCROMBIE & FITCH EUROPE SA (CH – 82 filings),
– APPLE INC. (US – 74 filings),
– BRILLUX GMBH & CO. KG (DE – 73 filings),
– KRKA, TOVARNA ZDRAVIL, D.D., NOVO MESTO (SI – 73 filings),
– BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT (DE – 70 filings),
– AUCMA COMPANY LIMITED (CN – 62 filings).

In conclusion, European multinationals seem to be the ones that best protect their intellectual property in all fields internationally.

SOPERYAH IP

#PatLaw – The non-patentability of subject matters considered contrary to public order or morality.

The question of the non-patentability of inventions said to be contrary to public order or morality, differs according to local legislation and “good” morals.

A decision by the Indian Office rejected a patent application for a vibratory sex stimulator (WE VIBE brand of STANDARD INNOVATION Corp. (CA)). The decision is dated April 17, 2017, and can be reviewed at the link below.
http://ipindiaservices.gov.in/decision/4668-DELNP-2007-35516/4668-delnp-2007%20refusal.pdf
The first objection comes directly into the heart of the matter and has a wording that surprises:
The examiner considered in essence that the exploitation of the claimed object is contrary to public order and morality, and falls under the provisions of Section 3 (b) of the Indian Patent Law, and is not acceptable.
The examiner further argues that importing and selling sex toys is considered “obscene” and therefore illegal in India.
Most surprisingly, these arguments are supported by Indian law. The examiner cites section 292 of the Indian Penal Code, and refers in addition to section 377. If the first concerns obscene objects whose definition interpreted by the examiner as including sex toys, seems debatable, the second refers to a prohibition of sexual intercourse that is unnatural biologically.

These objections seem insurmountable. The Applicant has obviously not made any counter-arguments.

Objections of this kind would surely have occurred also in countries where legislation is based on religious texts.

For the protection of this type of invention in “sensitive” countries, particular attention must be paid to provide, in the application, ways to overcome this type of objection where possible.

Unlike these countries, the protection of this type of invention at the European Patent Office does not raise this type of problem. Provisions of contravention of public order and morality exist (Article 53a EPC, GII4.1) but the corresponding objections are not conventionally raised for sextoys-type inventions. These objections are almost never raised in other cases.

The Guidelines for the EPO Examination provide in essence that if the invention in question would appear to the public [in all the EPO Contracting States] so repugnant that it would be inconceivable to patent it. The rejected applicant in India (STANDARD INNOVATION Corp.) has several European patents granted.

The EPO Directives mention, for example, a printer-type case with a good resolution enabling to make counterfeit banknotes. In this case, an objection may be raised, and will be surmountable by removing references to making counterfeit banknotes.

SOPERYAH IP

#IPstats – Stats of the WIPO PCT review 2018

The World Intellectual Property Office (WIPO) has published its annual PCT review in August 2018.

For the record, the PCT (Patent Cooperation Treaty) is the international convention that regulates the filing of international patent applications (so-called PCT filings).

You can find the review on the following link:
http://www.wipo.int/edocs/pubdocs/en/wipo_pub_901_2018.pdf

The PCT statistics do not go in the same direction as the rankings of brand values. The ranking tops are Asian then US.

The overall figures for 2018 have not recorded a big improvement.

The number of national phases fell to 615,400 (-1.4%).

The number of new PCT filings reached 243,500 (+ 4.5%).

As for the number of applicants, it reached 52,355 (+ 3%).

The top 10 places are occupied by well known companies:
– 3 Chinese companies (HUAWEI-1ère, ZTE-2e, BOE-7e):
– 2 US companies (INTEL-3e, QUALCOMM -5e);
– 2 Japanese companies (MITSUBISHI-4e, SONY-9e);
– 2 Korean companies (LG-6e, SAMSUNG -9e); and
– 1 Swedish company (ERICSSON-10e).

Classification (number of applications in 2017):
1 HUAWEI TECHNOLOGIES CO., LTD. CN – 4,024;
2 ZTE CORPORATION CN – 2,965;
3 INTEL CORPORATION USA – 2,637;
4 MITSUBISHI ELECTRIC CORPORATION JP – 2,521;
5 QUALCOMM INCORPORATED USA – 2,163;
6 LG ELECTRONICS INC. KR – 1,945;
7 BOE TECHNOLOGY GROUP CO., LTD. CN – 1,818;
8 SAMSUNG ELECTRONICS CO., LTD. KR – 1,757;
9 SONY CORPORATION JP – 1,735;
10 TELEFONAKTIEBOLAGET LM ERICSSON (PUBL) SE – 1 564.

Remarkably, among the GAFAs, there is no record of APPLE and FACEBOOK, which shows that the patent strategy, while important, is not enough in itself to the development of the company. A brand strategy, a communication and marketing strategy are other important tools to implement to increase turnover and market share.

The ranking nevertheless shows an indicator of the most innovative companies.

The first European company is BOSCH (14th), the first French (the only one of the top 50) is MICHELIN (44th). No UK company is in the top 50.

Outstanding highlights: the number of PCT filings broke records in 2017 with said 4.5% increase. As a reminder, apart from a 4.8% drop in 2009, the number of PCT filings is growing every year by around 2 to 5% since 2003, with peaks exceeding 11% in 2005 and 2011.

The number of States Parties to the PCT has increased to 152, with after Djibouti, Cambodia and Kuwait in 2016, the ratification of Jordan in 2017. PCT applications have been filed in 126 countries.

Asia takes the largest share of PCT filings (49.1% in 2017 compared to 27.6% in 2007) with China as a locomotive (50,674 filings).

CEA (FR) stands out as the leading applicant in the government / PRO sector.

Congratulations to Freddy GUEMENI and IMPERIAL INNOVATIONS (UK), who are among the top 50 university applicants with 53 filings (3rd European after OXFORD UNIV INNOVATIONS (75 filings), DANMARKS TEKNISKE UNIVERSITET (54 filings).

As far as the technical fields are concerned, the largest numbers of filings concerns:
1 °) computer technology (19,122 filings, 8.6% of the filings);
2 °) digital communication (18,122 filings, 8.2% of the filings);
3 °) appliances, energy and electrical machinery (15,223 filings, 6.8% of the filings);
4 °) medical technologies (15,024 filings, 6.7% of the filings);
5 °) instrumentation measures (10,082 filings, 4.5% of the filings);
6 °) transport (9,753 filings, 4.4% of the filings);
7 °) pharmacy (8,750 filings, 3.9% of the filings);
8 °) audiovisual technologies (7,520 filings, 3.9% of the filings);
9 °) optics (10,082 filings, 3.2% of the filings); and
10 °) biotechnologies (6,545 filings, 2.9% of the filings).

The report shows that progress continues to move forward, even though Europe is lagging behind the US and Asia.

SOPERYAH IP

#IPLaw #TMlaw – UE Decision against the 3D Mark of KitKat Bars

Since 2007, a litigation occurs between NESTLE (CH) and MONDELEZ (US) (formerly CADBURRY), in particular in Europe. This litigation and the underlying legal reasoning illustrate some elements to be taken into account when a three-dimensional (3D) trademark filing is envisaged.

The subject-matter of the litigation concerns the 3D mark recorded by NESTLE on a chocolate product with 4 glued bars, with an ingot shape. The graphic representation of the mark includes a view in the black and white space of the 4 associated bars without logo.

The European Union Intellectual Property Office (EUIPO) has accepted the registration of the mark with effect from August 7, 2006, with number 002632529, in class 30, designating: “Sweets; bakery products, pastries, cookies; cakes, waffles”.

On 23 March 2007, CADBURRY (later MONDELEZ) initiated a procedure at EUIPO to cancel the 3D mark in question. Looking in the details of this case, we can see that MONDELEZ sells a similar chocolate bar claimed as being a Norwegian chocolate bar “Kvikk Lunsj” (for “Quick Lunch”) marketed since 1933 by the Norwegian company FREIA, bought in 1993 by KRAFT FOODS, which became MONDELEZ Intl. This gives a clear picture of the interest of MONDELEZ in this case.

As for Kit Kat products, they would also have been marketed since 1933.

On 11 January 2011, the EUIPO annulled the mark in first instance, which NESTLE appealed to later obtain a cancellation of the first instance decision and a rejection of the demand of MONDELEZ. In second instance, EUIPO essentially held that even if there is no “inherent distinctiveness”, NESTLE had shown that that mark had acquired such a character in relation to those goods by the use which has been done.

The Court of the European Union seised by MONDELEZ considered in substance that:

1 °) the distinctive character by the use should have been considered not only in the category (30) but in each subcategory (including in particular bakery products) and concludes that the proof is not established for the products other than sweets and biscuits.

2) EUIPO should have taken into account the distinctiveness achieved by use in EU countries. The investigations showed that the distinctive character was acquired in 10 out of 28 countries (Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland,
Sweden and United Kingdom), but EUIPO did not analyze the evidence for the other Member States, namely Belgium, Ireland, Greece and Portugal.

The EU Court refers the case to EUIPO to re-examine the EU-wide distinctiveness for sweets and biscuits.

This shows a disadvantage of unitary IP titles, because individual marks would have been more likely to succeed in each relevant country.

An English decision of January 2016, also went against NESTLE, judging that the shape of chocolate bars can not be filed as a trademark.

As a conclusion, the acquired distinctiveness
– in the relevant category(ies) and subcategories, and
– in the relevant territory
are  thus important features to review when intending to claim a protection of a 3D shape as a trademark.

SOPERYAH IP

#ProfitIP – Generate revenues through patents

As already mentioned, the IP strategy is a significant tool for developing businesses and increasing their market share through legal and commercial means.

Given the relatively high cost of acquiring intellectual property rights, compensation systems for these rights should be considered. At SOERYAH IP, we recommend going as far as possible to the widest possible protection. As a result, intellectual property rights cover a wide range of objects.

Though such a strategy can generate greater procedural costs, It can also generate significant revenue. In particular, if the protection covers objects which are not marketed, it may be advisable in this case to propose that a Third party operates these objects by means of a license agreement.

In this configuration, the licensee thus benefits from a legal monopoly on these objects, which allows him to fix the price without being bothered by a competitor, and to maintain its market shares and margins. In addition, the licensee receives license fees, usually as a percentage of the licensee’s turnover, which is additional income. Rates are negotiated and averages are established based on technical areas.

This type of situation may arise when an invention relates to several different objects A, B, C, in the same inventive concept or having been the subject of divisional applications. Even if object A is the only one actually operated, and the easiest to defend from a patentability point of view, it may be wise to maintain protection for objects B and C. Indeed, it is possible that the products proposed by the holder move to object B, and a third party might be interested in having a monopoly on object C which is in its core business. In this case, the holder could benefit for example from 5% of the turnover of the licensee on the relevant products.

The situation is even more interesting in the case of an individual inventor, despite probable financial limitations. Protecting objects A, B and C allows to offer them to 2 or 3 licensed companies and possibly to other companies abroad. However the costs of filing and extension abroad are significant for a qualitative drafting.

Companies and other IP portfolio firm have an interest in financing the research and patent procedures of isolated inventors, with the objecctive of recovering their investments on the international revenues from the patent. Several interesting patent projects fall into the public domain due to lack of financial means, whereas they could have been a source of significant revenue.

We remain at your disposal for any further information adapted to your situation.

SOPERYAH IP

#ProfitIP – The values of French and English brands

The previous publication reports the Forbes 2018 of brand ranking according to the values ofthe marks. The ranking can be viewed on this link.

The ranking shows the backwardness of French and English companies in the technological fields, or consumer products. The first brand of the ranking is Apple with a value of 182 billion dollars. The first European brand is Mercedes at 34.4 billion (13th in the ranking).
The first French brand is Louis Vuitton at 33.6 billion (15th of the ranking), then L’Oreal at 17.2 billion dollars (30th of the ranking).
The first English brand is Accenture at 14.8 billion (38th of the ranking), then HSBC at 11.9 billion dollars (52nd of the ranking).

The gap is considerable, so to French and English companies: ON YOUR MARKS !!!

The question of the method of estimating brand values ​​may arise, in order to get such results.

Several methods for estimating the value of intellectual property rights are proposed and throughoutly discussed. The methods range from the most objective to the as much subjective as possible, taking into account scores on several criteria. The consensus is towards ISO 10668 standard. The same is obtained after national commissions of experts in marketing, tax, IP attorneys and accounting experts, from several countries of the European Union, and of Australia, Japan, Korea and China.

The standard is methodological and based in substance on three valuation approaches:
The income approach
The market approach
The approach by the costs.

In the income approach, the value of the IP right depends on the income it is likely to bring over its remaining life. Six methods are listed in the ISO 10668 standard, including the cash flows, the surplus profits specifically related to the IP right in question.

The market approach aims at estimating the value of a mark on the basis of the market price, usually by referring to comparable brands whose transaction prices have been made public.

The cost approach aims at estimating the value of an IP right on the basis of the costs incurred for its creation.

Other more complex methods, such as that of Interbrand, take into account brand-specific gains and a variety of “brand strength” parameters, namely, its positioning, the environment, competition, past performance and future plans. The parameters are weighted and the set of scores is used to determine the brand value.

the parameters are as follows:
– leadership: (25%) (ie: influence of the brand on the market / market shares);
– stability (15%) (brand sustainability allowing good customer loyalty);
– the trend: (10%) (ability to stay modern and sought after);
– the market: (10%) (business environment, growth rate, customer volatility, barriers to entry …);
– geographical scope: (25%) (frontiers of the protected territory);
– Marketing support: (10%) (generating marketing and communication expenses for the IP right in question);
– protection: (5%) (other IP deeds related to the one in question).

All these parameters are used to determine the value of the IP right in a relatively objective way.

 

This was only a sample of methods for estimating the value of industrial property rights.

 

All that remains is doing more and developping your intellectual property rights portfolio, and increase its value through communication campaigns and marketing actions increasing your reputation, and therefore your market share.

SOPERYAH IP