Claudia Seitz (U of Basle) opened the afternoon session with a presentation on data exclusivity and marketing protection, followed by Alesch Staehelin exploring the legal implications of the “internet of health(care) things”. Claudia pointed out that while regulatory data protection would in theory allow a generic company to conduct its own clinical studies during the data exclusivity period, the Declaration of Helsinki considered replication of clinical trials with human subjects unethical, and animal law prohibited animal studies that did not lead to new insights. So replication of clinical studies was not only impractical for economic reasons, but actually prohibited.

Alesch Staehelin (IBM) explored the data protection implications of the “internet of health(care) things”, using massive amounts of data from connected devices to improve health(care). Partially an advertisement for IBM’s Watson data analytics and insight services (“cognitive engine”), the presentation gave a taste of things to come for pharmaceutical companies and their advisers. As Alesch points out, the “internet of health things” will finally enable the much-hyped personalized medicine. You must also keep in mind that “anonymized” data is often a fig leaf – with enough data points, it is almost always possible to identify the individual. Confronted with the question whether access to data becomes increasingly more important than patent protection, Alesch said that in the IoT world, the value of patents was in controlling the interoperability of devices. Patent owners owning standard essential patents could reap outsized rewards for patents that were not necessarily, from a legal point of view, strong. One participant wanted to know whether when globally collecting data, IBM sought to comply with the rules of the many jurisdictions that may be involved, or whether a kind of “meta law” evolved that was considered the global standard. The, in his own words, disappointing answer by Alesch was that IBM shifted responsibility to comply with data protection laws entirely to its clients.

In a session dedicated to licensing, Simon Hirsbrunner (Steptoe & Johnson) explained the influence of EU law on licensing agreements in a non-EU country, namely Switzerland. Surprising for no one, EU law applies to agreements entered into by parties in third countries if the agreement influences the EU market. Simon notes a “blind spot” of the TT-BER, as they only relate to agreements concluded for production purposes. He also notes that it is worthwhile to read the guideline to the TT-BER as it contains valuable information – infuriatingly for the practitioners though none of it binding. In the discussion, the interesting question was posed whether an agreement that obliges licensee to challenge the validity of the licensed patent in arbitration, at the exclusion of state courts, violates the prohibition of non-challenge clauses by the TT-BER. No clear answer was found (this Kat would argue that the answer turns on whether the arbitration award obliges the patentee to formally revoke the patent, thereby removing barriers to entry for all market participants, or whether the award only holds that the patent is to be considered invalid between the parties. In the former case, I do not see a violation of the TT-BER, in the latter case, probably so, because a potentially invalid patent still is on the register(s) and has anti-competitive effects).

Daryl Lim (John Marshall Law School) undertook a comparative analysis of Genentech (C-567/14) and Kimble v. Marvel Entertainment (576 U.S. ___ (2015)), exploring the limits of the maxim “no patent, no royalties” – and he likes to build bridges, notably between people and ideas. Genentech basically holds that paying royalties for a patent the licensee does not practice or that is invalid is not in violation of EU competition law provided the licensee can terminate the agreement at any time with a reasonably short notice period (two months in the Genentech case, see IPKat post for more info). Genentech is silent, however, on the question of whether paying royalties for an expired patent is permissible.

Kimble, the inventor of a Spiderman web shooting toy, entered into an agreement with Marvel that settled a breach of contract and patent infringement case. According to the agreement, Kimble was entitled to a royalty of 3% on all sales of the toy by Marvel, even beyond the term of the patent. The US Supreme Court felt bound by  Brulotte v. Thys Co which provides that no royalties must be paid after the expiration of the patent. This clear and simple rule which worked quite well for 50 years should not be diluted. However, the licensor may get royalties based on grounds other than patents, such as trade secrets. When drafting a contract, one is therefore well advised to specify the amount of royalties due for each licensed “right” (or protected position, such as know-how or trade secrets). More on Kimble in this IPKat post.

Overall, the conference profited from the interesting mix of participants both on the panels and in the audience and provided valuable insights.

Following the Ownership and control of IP conference lunch-break solicitor-advocate Bratin Roy (Bristows) emphasised, in "Inventions and Innovations Created by Employees: who owns, who controls?", that the three main concerns raised here are exploitation, compensation and termination. Commercial exploitation depends on having the right to exploit commercially; compensation may be payable where the exploitation is sufficiently profitable, and termination of the employment relationship may trigger competing claims to ownership.

Bratin explained that much depends, under the Patents Act 1977, s.39, on the nature of the duties of the employee and the manner in which those duties are expressed. Thus, for example, a physician's duty is to treat his patients, not to create an invention in order to treat a patient. However, a qualified engineer's duties might create the expectation that he would exercise inventive skills even though his role was managerial. The situation was fluid, not least since a consultant might still be subject to implied duties towards his client that corresponded to the duties owed by the employer to the employee.David also offered a list of Top Tips -- basically, assess the position early, be alert, be cautious, "measure twice, cut once", act quickly once you've made up your mind what to do, and basically be perfect ....

Next to speak on the Ownership and control of IP programme was Chris Stothers (Arnold & Porter), on the topic of IP and Abuse of Control. This was a canter through the highways and byways of European competition law, sensitising participants as to the points at which their business arrangements and/or their market dominance might lead to trouble. The key articles of the Treaty that govern IP abuse are Articles 101 (agreements etc which distort or prevent competition) and 102 (abuse of dominant position). Ascertaining that most people in the audience only encountered competition issues on an average of once a year, he observed that, given the potentially pervasive nature of competition rules, they were either very fortunate or in very big trouble. He noted that the European Commission has been trying to encourage private enforcement and damages awards -- these being cheaper for the Commission than having to do the enforcement itself.

Speaking at today's conference on Ownership and Control of IP Rights, Colin Pearson (right, Cleary Gottlieb Steen & Hamilton) gave a broad overview of the key issues relating to the ownership and control of patents, copyrights and other maintstream IP rights. He also raised a number of questions relating to the extent to which the use of trade marks might be controlled without actually destroying the right itself. The elimination of trade marks from use in cigarette marketing -- particularly in Australia -- and possible human rights limitations on the restriction of uses of trade marks consisting of designers' names and pharma products were discussed as cases in point. Other issues touched upon by JIPLP board member Colin included standards-setting arrangements, where FRAND (fair, reasonable and non-discriminatory) licences provide a framework within which the exploitation of IP is limited within industry-settled terms: many of these arrangements are dispute-riven and fraught with competition law problems.

Next up was Nigel Parker (Allen & Overy), speaking on IP joint ventures (JVs) and collaborations. Why enter a JV, he asked. They can reduce risk, rationalise costs, grant access to new markets, serve as a means for each partner to get to know the other better -- perhaps with a view to acquiring it -- and provide access to assets, including IP, which the partner won't sell outright. Quoting a PWC report, Nigel warned of the complexity of JVs: it takes three times as much paperwork, due diligence etc to set up a JV than will be consumed by a merger or acquisition.

IPKat team blogger Jeremy is in Stockholm today, attending a conference: "International Copyright and IP Law: Challenges for Media Content Producers". This event, organised by the Media Management and Transformation Centre together with the Institute of Foreign Law, Jönköping International Business School. Some 90 academics, practitioners, rights owners and dedicated students attended, of whom (if figures cited by copyright expert Jan Rosén are true) some 30 are statistically likely to be actively involved in file-sharing.

Jan's talk, ostensibly on Swedish compliance with international copyright obligations, also provided a delightful opening into the psychology of a fair-minded, law-abiding nation when faced with the three-way collision between the interests of copyright owners, users of protected materials and the providers of the means by which the latter obtain and potentially abuse the rights of the former. He also introduced the IPKat to a term which, he suspects, he should have already known: digital Maoism.

Next to speak, giving the perspective of Swedish creators (and also, incidentally, users), was Kristina Lidehorn (Chief Legal Counsel, TV4). Kristina described the scenario of all content -- lawful and unlawful -- coming into the home through the same hole in the wall". Kristina was followed by Monique Wadsted (MAQS, but speaking for the media companies), who gave a live demonstration how torrents work (linking to The Pirate Bay) and what their significance is in commercial and legal terms [IPKat note: for an account of the threats made to TPB and their responses, click here].

This session concluded with a panel discussion, chaired by Jan, in which Kristina and Monique were joined by Johan Axhamn (secretary to the Swedish Ministry of Justice investigation into music and film on the internet), at which the battle between legal and commercial solutions was reviewed -- particularly within the context of the rights in question mainly being American, the beneficiaries being Swedes and the position of Sweden as a marginal market with its specific cultural needs. Slow responses by media companies to consumer demand, the particularly comfortable position of service providers and the effect of the IP Enforcement Directive were all under review.

After lunch barrister Gillian Davies (alias Copinger and Skone James on Copyright) touched on a technically tricky topic, the extent to which the interpretation of copyright law at national level affects international treaties.

Right: pirates flourished before an intricate web of bilateral copyright treaties gave way to the Berne Convention

Gillian explained the evolution of international treaties as they moved from establishing bare principles to requiring the adoption of minimum substantive norms, as well as the consequences of direct or indirect implementation of those norms in domestic law.

Swedish legal academic Edward Humphreys -- a driving force behind this event -- then focused sharply on the protection of TV format rights, including Big Brother, Who Wants to be a Millionaire and The Farmer Wants a Wife. After outlining the magnitude of the commercial market and the extent to which mainline IP protections skirt round format protection, Edward asked some testing questions as to how formats can best be protected, making the most of the various ingredients of any given format that might enjoy protection in their own right.

The day closed with presentations by Dimiter Gantchev (WIPO) on his organisation's work towards the establishment of a framework for "business and development" [says Merpel, is business what you do when you create IP, while development is what you do with someone else's?] and the BBC's Martyn Freeman, giving a view of the opportunities, challenges and headaches for businesses operating in a multitude of copyright regimes.

Lessig count: there was just one mention of Larry Lessig in the course of the whole day's programme. Is this, ask Merpel, the result of embarrassing ignorance or of a new European determination to think for itself?

What particularly struck this bit of the IPKat was the excellence of so much of the current research, and the high level of awareness and sensitivity to contemparary issues, that his Swedish hosts displayed.

Right: a Swedish wildcat, meditating over the concept of digital Maoism (or is it Miaoism?)

The IPKat's verdict: however much you deny it, and however much the new media make it easy to receive and absorb information from around the world, the best way to learn and think about new ideas and concepts is to sit down and talk to other people about them - particularly if those other people are fresh to you. Even when you are working in London, constantly discussing your own ideas and arguments with your own friends and colleagues is a comfortable route to complacancy and parochialism. This visit to Stockholm helped clear out the cobwebs of habits of thought, for which the Kat is truly grateful.

Further details of the programme here
All the presentations have been recorded. If you'd like to hear them, absolutely free, and if you'd like copies of the available PowerPoints, email Barbara Eklof here