Getting to work on next year’s AIPPI questions

Anne Marie Verschuur of Nauta Dutilh said an example of the requirements for the protection of industrial designs came in the Apple/Samsung case, which touched on the question of what is minimalistic design. The topic of industrial designs was last discussed at the 2012 Congress, which looked at the interplay between designs and copyright.

Some of the suggested questions to be explored included defining designs, the requirement for obtaining design protection, differences between registered and unregistered designs and whether parts such as the handle of a pan can be separately protected as a design.

One particularly important and controversial area is functionality, such as whether design protection is denied to functional designs, whether it is relevant if there are alternative ways to get the same functional result, and what if only part of the design is functional.

“I think functionality is one of the key questions to explore, and that will be interesting,” said Verschuur. She noted that those interested in this question may want to attend the session on “Industrial designs: form over function” on Tuesday between 9am and 10.30am.

IP as collateral is playing an increasing role in lending. But there is a lack of certainty and inconsistency about the types of IP over which security interests may be granted and about the requirements for creating security interests. Application of general commercial law may not be sufficient in this area.

“It’s something that hasn’t really been studied,” noted Ralph Nack of Noerr, when introducing the question. Most countries have no system for this important topic. “The main problem here is we are focusing on a vast plethora of systems providing security on IP,” said Nack. “It’s a wonderful playground for AIPPI because there is so much to do!”

Nack suggested many questions for consideration including whether national laws provide for possibilities to create security rights over IP, whether there are caps or limits on  the extent to which IP may be used as collateral in comparison to other assets, whether regulations provide a comprehensive security system regarding IP rights, how the creation of a security interest over an IP right affects the legal or actual position of the IP right holder, and whether there are specific provisions governing the liquidation of collateral over IP or do general commercial law principles apply.

The third question addresses patent quality, and the extent to which amendments are allowed. Differences in approach can make it difficult for patent applicants trying to gain multinational patent protection.

Ari Laakkonen of Powell Gilbert revealed questions for consideration including whether the patent applicant is allowed to make amendment, what the types of added or non-added matter are, how the scope of disclosure of matter by the original application is determined, what the legal consequences are if an amendment is considered to introduce an impermissible extension of subject matter, what means of legal redress are permitted, and whether the validity of a granted patent may be challenged on the basis of an impermissible extension/added matter. “I am aware this needs narrowing down so don’t let all this knock your socks off,” he said. “Maybe one way of narrowing down the scope is to take the top three political points that come up.”

The fourth question is a copyright question, and concerns deep linking, framing and embedding within hyperlinking.

There have been several CJEU judgments, including the Svensson judgment in February 2014 and the Bestwater judgment in October 2014. Yusuke Inui of Kubota Law said there were two issues unresolved in these cases: how should links or embedding of illegal content be treated and if the initial access is restricted by means of restriction on the website, does the hyperlinking/framing/embedding require the copyright holder’s consent?

Possible topics for consideration include should framing or embedding of copyrighted works constitute copyright infringement when performed without authorisation of the copyright holder, should framing or embedding be  treated differently to hyperlinking, what is the appropriate treatment for hyperlinking/framing/embedding of illegal works, and what is the appropriate treatment of these to works where access is restricted.