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 !

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Far East countries have taken advantage of this!

Europe did not respond!

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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

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“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

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Role of Port State Control:

Charging for use of technology, for use of rights?

Techno-tax?

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Patents drafted in style of certificate

Rotterdam February 4, 2010

Modern Laws can take Modern Technology

into account!

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Cork money for “not made in Europe” ?!

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So far, the best monitorable and

best defined IP Right.

Back to know-how

What is going on?

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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