Monday miscellany

Buried treasure. The IPKat has learned from a World Intellectual Property Organization (WIPO) press release that, following a round of discussions by Patent Cooperation Treaty (PCT) member states within the context of the PCT Working Group, PCT Member States have endorsed a series of recommendations (i) to enhance the Treaty's contribution in improving the quality of granted patents and (ii) to make the international patent system more useful to developing countries. These recommendations include measures to help reduce the unsustainable backlogs of some 4.2 million unprocessed patent applications around the world [The IPKat thought the problem was that the backlog was sustainable ...] and improve the quality of granted patents [Assuming we have a shared understanding as to what improving the quality means]. The patent offices of PCT member states will play a key role in implementing many of these recommendations [Noted. But if patent offices are expected to play a greater part in the fight against counterfeits (see earlier post here), shouldn't police forces play a greater part in improving the quality of granted IP rights?]. There were some practical proposals too. For example, WIPO should deploy a computer system that lets third parties alert patent offices about information which they believe shows that a patent application does not meet the conditions of patentability. Also,

" ...electronic systems to be developed will support technology transfer by promoting the licensing of inventions and helping to identify information about technologies which are in the public domain. Such technologies may be freely used without the need to obtain authorization from any right holder".

The IPKat is happy to see that the public domain is getting at least some repackaging to make it more accessible, appealing and user-friendly to those who might get the greatest benefit from it. The public domain is a sort of buried treasure, which can be marvellously enriching to those who find it.

Balanced copyright. It has come to the notice of the IPKat that there have been some eye-catching proposals from the Canadian government for large-scale copyright reform. You can get some idea of them from the Balanced Copyright website here. The proposed Copyright Modernization Act (and here the Kat quotes)

* provides legal protection for businesses that choose to use technological protection measures (TPMs) or "digital locks", to protect their IP as part of their business models;
* implements the rights and protections of the World Intellectual Property Organization (WIPO) Internet Treaties, which brings Canada in line with international standards [up-to-date to the mid 1990s?];
* gives copyright owners the tools they need to combat piracy [a cynic might suggest that such tools had been invented yet, so well done Canada!];
* clarifies the roles and responsibilities of ISPs and search engines [this is a lengthy and uncertain process, if the European experience is anything to go by];
* promotes creativity and new methods of teaching in the classroom by providing greatly expanded exceptions for education;
* encourages innovation in the private sector through exceptions for technical computer processes and
* gives consumers the ability to, among other things, record their favourite TV shows to watch at a convenient time using the technology of their choice, put music from a CD on their MP3 player, or create a mash-up and post it on a social media website [which is what they're doing anyway -- and most of them presumably sleep soundly at night].

So now we know. The IPKat predicts a good deal of lobbying in both directions in that splendid regime, leading to a state of balance or equilibrium to which we experts give the technical term "compromise". Merpel's not so sure: she thinks that, between the interests of copyright owners and consumers in the internet age, there is precious little middle ground. This is a battleground which is is ripe for winners and losers.

Returning to the subject of patents, a person describing himself as "an ardent follower and anonymous contributor" to this weblog adds that he is "currently stumped" by this question:

"Can any of your readers point to a document addressing the stance on computer implemented inventions at the national patent office level? There is extensive documentation on the stance of the European Patent Office (EPO) and comparisons between the EPO and its Japanese and United States equivalents. However, I cannot source an up-to-date document on differing approaches by national patent offices (e.g. the Portuguese patent office appears to be very permissive and does not follow the EPO's approach - or even its own industrial property code...). Do the Kats or their readers know of any such comparative analysis? I imagine that such knowledge would be within the heads of experienced patent attorney practitioners -- but have any of them had committed their knowledge to paper?"

Thirty years of hobnobbing with the profession has given the IPKat a shrewd idea of what many patent attorneys have within their heads, but he's not saying. However, if anyone can suggest some good reading material, do share the good news!

Another highly esteemed correspondent, Mark Anderson, writes to draw the IPKat's attention to a topic that has caused some twitching of whiskers on more than one occasion: the recent proliferation of qualifications for IP licensing professionals. For example one can now become a

* Certified Licensing Professional. This is an initiative of the Licensing Executives Society (US and Canada) to which many hundreds of souls --including 10 in the UK – have aspired. Click here for CLP details, here to find the CLP of your dreams;

2. Registered Technology Transfer Professional (an initiative of ASTP, AUTM and several other national technology transfer organisations, launched last month): click here for further details.

Says the IPKat, there is no truth in the rumour that, for a small fee and on passing a simple test of sanity, one will soon be able to become a Certified Intellectual Property Weblog Professional.

A recent post on this weblog ("The lady vanishes: the case of the disappearing debutante", here) raised the question whether the waiver of the moral rights of the author might be governed in the United Kingdom by the Unfair Contract Terms Act 1977 (UCTA), given the disparity in bargaining powers between the parties, particularly if the creative person in question did not receive independent legal advice. In this context, Merpel has received the following well-informed missive which she is happy to share with the elite readership to which the author alludes:

"Dear Merpel,

This avid IPKat reader is hoping to clarify to the elite readership of the IPKat that the UCTA's name is being here used in vain. The UCTA is often referred to in the copyright debate, yet sadly is poorly understood. Many copyright stakeholders have called the UCTA to be extended to IP. However, this is based on a misunderstanding of the Act. This confusion is understandable, as its very name does seem to imply a much broader scope than it actually has.

The UCTA deals primarily with limitation of liability. Indeed, the UCTA is an Act imposing limits on the extent to which civil liability for breach of contract, or for negligence or other breach of duty, can be avoided by contract terms. For example, if you are injured, disabled, or killed by a faulty product, the manufacturer cannot set unreasonable limitations of liability (£5, for example).

Its scope is thus very limited and does not cover all issues relating to contracts where terms are deemed unfair to one party (as is often the case according to some artists) such as attribution of rights or remuneration.

This does not mean that parties are without recourse under law. Indeed the courts are capable of reading reasonableness into contracts without the UCTA, using various legal doctrines. Although these doctrines are not straightforward they demonstrate some of the ways in which agreements between creators and commercial rights holders can be regulated under contract law:

1. Undue Influence: In all situations where 'a person in a position of domination has used that position to obtain unfair advantage for himself, and so caused influence to the person relying on his authority or aid' the Court may interfere. It must be shown that (a) there was a relationship where one party has a dominating influence over the other and (b) the influence was used to bring a manifestly disadvantageous transaction;

2. Restraint of Trade: Contracts should not restrict the right of a person to practice their trade. In Schroeder Music Publishing v Macaulay [1974] 3 All ER 616 the Court found that a contract with an extended term with no obligation on the publisher to exploit the works of the creator was in restraint of trade".