1899-1963: The untold story of the Italian model of GI protection and of how it failed

Andrea Zappalaglio, “1899-1963: The untold story of the Italian model of GI protection and of how it failed” 

The paper explores the history of the early Italian attempts to introduce a law on the protection of geographical names. It will reveal that Italy, in the decades before World War II, tried to develop its own rules independently from the French paradigm of sui generis GI protection. The history of this early ‘Italian way’ of GI protection has never been told before not only by the English-speaking but also by the Italian literature. The present paper will introduce this legislative evolution and analyse the reasons why this original system never eventually came to life. Thus, it will show that in the early days of sui generis GI protection in Europe, the French model was not alone.

The Complex Genesis of ABS

Florelia Vallejo Trujillo, “The Complex Genesis of ABS” 

The fair and equitable sharing of benefits arising from the utilisation of biological diversity (hereafter biodiversity) and traditional knowledge (TK) i.e. access and benefit sharing (ABS), is a topic that has been increasingly gaining importance in the international arena. At the same time, biotechnology was evolving, allowing the use of genetic resources (GR) as separate components of biological resources. The ABS refers to the right of providers to be compensated when a third party uses their biodiversity and the knowledge related to its use, for example, to develop marketable products. Thus, it was acknowledged by the international framework that the countries of origin of the resources and the traditional communities who have preserved and developed these resources and knowledge deserve a compensation for their use, based on both, property and equity reasons.  This paperwill show that a key element for the understanding of the ABS system as enshrined in the CBD must include the analysis of its historical development at an international level, mainly within FAO, CBD and TRIPS forums. Through this historical description, it will be supported that poor developments and poor compliance of the ABS systems are caused by the lack of political will of developed countries in the fulfilment of ABS obligations, as well as by their high ability to include their interests in the texts of international treaties, which, in addition, may include the non-recognition or non-inclusion of other countries’ rights in the same treaties. This fact can be observed for example in the avoidance of providers’ demands to establish a mandatory disclosure requirement in patent applications.

The implications of the new UK Open Access policies on the ownership of copyright in academic publishing

Eugen Stoica, “The implications of the new UK Open Access policies on the ownership of copyright in academic publishing” 

For the last three years the UK universities had to comply with new Open Access policies which requires that publicly-funded research should be freely accessible. Considering that in order to publish in the journal of their choice academics are required to assign the copyright or an exclusive license to the publisher and also that most of the research is publicly-funded, suddenly the issue of who owns the copyright in works produced by academics during employment becomes a very stringent one, not to mention expensive. 

The topic of copyright ownership in academia has been debated at length between faculty members and HEIs management without reaching a conclusion. This paper, based on theoretical and practical insights, will examine the new UK Open Access policies and consider whether they might be the deciding arguments of this debate. A possible solution will be proposed and discussed.”

Be Authentic: The politics of Trademark Counterfeiting in India and The United States

Sanskriti Singh & Lipsa Dash, “Be Authentic: The politics of Trademark Counterfeiting in India and The United States“

Trademark counterfeiting is one of the biggest global limit to the intellectual property law. Developed Country like The United States of America has enacted a specific legislation for the protection of the trademark, India being a developing country needs a strong enforcement measures to protect the trademark owners from the loss from counterfeit products. This paper shall in its first part study the existing laws in the India and The United States of America to counter the trademark counterfeiting, in the second part the author attempts to make a comparative analysis of the landmark judgments in both the countries and in the end details the enforcement measures that India can develop to strengthen its position as of The USA.

A harmonised international trademark database to inform IP research and policy

Stephen Petrie, “A harmonised international trademark database to inform IP research and policy” 

Researchers and policy makers are concerned with many international issues regarding trademarks, such as trademark squatting, cluttering, and dilution. Trademark application data can provide an evidence base to inform government policy regarding these issues, and can also produce quantitative insights into economic trends and brand dynamics. Currently, national trademark databases can provide insight into economic and brand dynamics at the national level, but gaining such insight at an international level is more difficult due to a lack of internationally linked trademark data. We are in the process of building a harmonised international trademark database (the “Patstat of trademarks”), in which equivalent trademarks have been identified across national offices. This will provide a quantitative evidence base for economics research, brand research, and government policy.

Open Metropolitan Design & IP-governance: Two Case Studies in Contemporary, Collaborative Urban Development

Sander Nysten, Esther van Zimmeren & Sigrid Pauwels, “Open Metropolitan Design & IP-governance: Two Case Studies in Contemporary, Collaborative Urban Development” 

Urban development and design processes are increasingly interdisciplinary and collaborative in order to provide appropriate solutions in modern cities for so-called “wicked” problems. Such processes, hence, require the input of various experts and stakeholders, such as urban planners, architects, economists, climatologists, biologists, medical doctors, engineers, and citizens. For the purpose of the proposed research project, the concept ‘Open Metropolitan Design’ (OMD) is introduced to refer to this trend. The concept of OMD is based on the literature on urban theory and the economic literature on “open innovation” (OI) and “co-creation” (CC). “Rebuild By Design” in New York, which focuses on providing a sustainable solution for the challenges of climate change, is an exemplary project for the increase of interdisciplinary, collaborative urban development projects. This paper will provide a first set of valuable insights on OMD and will elaborate on how parties are managing their IP in this collaborative and non-traditional environment. Ultimately, the proposed paper considers the need for an adapted regulatory framework as well as the formulation of a set of best practices (i.e. contractual arrangements on IP-ownership, conflict management and subsequent knowledge sharing) in the area of OMD. These findings will not only provide a valuable addition to the currently lacking body of legal research on OI/CC in general, but will also address specific IP-governance issues arising in the presented OMD-cases.

Website Blocking in Russia and the EU: Recent Trends and Common Grounds

Ruslan Nurullaev & Irina Bogdanovskaya, “Website Blocking in Russia and the EU: Recent Trends and Common Grounds”

With the rising popularity of the Internet as a medium for dissemination of creative works, enforcement of copyright online becomes a pressing concern for right holders. There are different ways of addressing online copyright infringements, such as enforcement of copyright against website owners or users who access the content unlawfully. However, in Cartier International AG v British Sky Broadcasting Ltd Arnold J recognised that blocking of access to websites which are used to infringe intellectual property rights could the most effective and also least burdensome measure. This proposal suggests to review recent developments in implementation of website blocking in Russia and compare them with the practice established in the EU. When implementing website blocking, Russian courts have to deal with the same issues as their counterparts in the EU. Hence, analysis of the Russian practice may deepen our understanding of website blocking in the EU. Implementation of website blocking in Russia and the EU should not be fundamentally different considering that the European Court of Human Rights, which has jurisdiction over Russia as well as EU member states, laid down general requirements for website blocking in Yildirim v Turkey.

Managerial aspects of differentiation strategy: Evidence from the analysis of trademark statistics

Shukhrat Nasirov, Cher Li & Stephen Thompson, “Managerial aspects of differentiation strategy: Evidence from the analysis of trademark statistics”

Earlier research on competitive strategy has demonstrated only partial support for aligning CEO personality with product differentiation. Our article revises and extends these findings by considering a much wider set of managerial characteristics proposed by subsequent studies. By integrating the upper echelons perspective with the hierarchical view of strategy, we also draw attention to alternative channels through which chief executives may influence organisational outcomes. In particular, we argue that along with direct involvement, decisions made by the CEO regarding the firm's businesses portfolio and resource allocation will eventually affect the extent of product differentiation, too. Our empirical testing is based on a sample of 854 chief executives in 263 U.S. publicly traded companies over the period 1992-2012. Using trademarks to measure product differentiability, we have demonstrated that CEOs' tenure, firm-specific knowledge, education, and proactivity have statistically significant explanatory power for variations in the degree of product differentiation across companies, even after controlling for unobserved firm-specific and year-specific heterogeneity. Furthermore, it has been shown that managerial characteristics stipulate the selection of product markets or industries to be in, thus mediating the relationship between chief executives and differentiation strategy. By confirming CEO biases that guide product differentiation, this research contributes to the broader discussion on the necessity to account for managerial background characteristics when considering the process of making strategic decisions.

Patent Litigation Reform & Non-practicing Entities: Solutions in Search of a Litigation Problem?

Kelli Larson, “Patent Litigation Reform & Non-practicing Entities: Solutions in Search of a Litigation Problem?”

Patent litigation initiated by so called non-practicing entities (NPEs) or patent trolls, individuals or entities that build business models solely around the procurement and enforcement of patents to generate revenues, has seemed to cause a wave of eruption across the American intellectual property law, business and political world. This essay provides an overview of the most recent federal legislative reforms that have been considered in light of the NPE patent litigation reform debate and assesses their status beginning with the AIA reform leading to the proposed Innovation Act. The Innovation Act is the main focus of assessment in light of its comprehensiveness including to a greater extent several provisions of previous proposed patent reforms intended to address an alleged NPE patent litigation problem. The essay concludes that Congress should take caution in trying to curb alleged patent abuses supposedly caused by NPEs by passing seemingly broad, unnecessary legislation of the Innovation Act before fully exploring and examining any implications resulting from the recently passed AIA patent reform, and before key Court decisions affecting patent enforcement are better understood. Pausing to reflect on the potential wider implications the Innovation Act may impose upon all patent owners operating in the patent ecosystem, not only for NPEs, may help Congress to reconsider reform that further weakens an already weakened patent enforcement landscape. The implications of the Innovation Act, if passed, may ultimately lead patent owners to explore other jurisdictions to enforce patents, namely Europe and parts of Asia where the strengthening of patent enforcement is taking place.

Legal Adjustments to International Law for an Economically Sound Patenting of Biotechnological Inventions

Franck Gloglo, “Legal Adjustments to International Law for an Economically Sound Patenting of Biotechnological Inventions”

Patents apply to a very broad range of technologies for which there are sometimes few other sources of data. As for the biotechnology sector, patents are based on any technological application that uses biological material to make or modify products or processes, and its role in the production of means that aim to improve human life on earth. With regard to the sub-sector of pharmaceuticals for example, studies have shown that a large proportion of new drugs come from biotechnological inventions. Yet, the use of tools to producing these innovative drugs arises a huge controversy, not just on the ownership of these tools –which, as a matter of fact, may be sorted out by the right anybody has to prospect natural resources under certain circumstances–, but on ethical concerns. The question, then, is to what extent and for how long international law shall be overdue in a matter that enables further technological developments for the benefit of humankind. Ethical considerations may deter companies from taking strategic decisions on R-D activities resulting in underinvest in such activities because of their inability to sufficiently appropriate the returns of their investments. Moreover, ethical concerns make it hard to design policies that aim at shaping IP systems and aligning them with the needs of the society. The aim of this paper is to analyse how to properly address the patentability of biotechnological inventions with an international law that meets the evolution of technologies.

Surname commercialisation in Fashion Law

Joanna Buchalska, “Surname commercialisation in Fashion Law” 

The object of this presentation is to answer the question whether there really is a need to createa new legal discipline in Europe; moreover how to regulate the commercialisation of surnames in this field. 

According to US practice there is a possibility to sell or give a license to a personal trade mark, but this kind of practice can infringe on personal goods and human rights. The question which arises is should we take the pattern form US legislation and case law, or try to regulate this area in a unique way.

'Success’ in IP enforcement actions: and the consequences for the Creative Industries

Abbe Brown, “Success’ in IP enforcement actions: and the consequences for the Creative Industries” 

Legal, societal and technical developments across jurisdictions have led to substantive changes in the remedies which can be obtained after bringing a successful infringement action, in the willingness of courts to grant these orders, and against those in respect of whom orders may be sought.  Some notable instances follow. The decisions and bases for them cover a range of laws, countries, industries and infringing scenarios. The focus of this paper is to assess the extent to which there are conflicting and contrasting themes across these decisions. Particular regard will be had to the extent to which IP rights should confer a right to control (see (Bell and Parchomovsky 2014, Firth 2015, Claeys 2015); do these approaches overly extend or limit the power of IP owners; the consistency of these new approaches with Part III TRIPS, human rights, competition and emerging trade agreements; and do they indicate inappropriate judicial creativity? This will be done through the lens of the potential impact of these decisions on one particular sector: Creative Industries. These industries are of increasing value in society (both cultural and economic). A wide range of IP rights and forms of information protection underpin and are relevant to the core activities in these industries, both in terms of encouraging and stifling development.  Finally, this paper will consider if there is a place or need for a different approach to be taken to remedies in this sector, across jurisdictions.

Exploring the Principle of Separation of Powers in the European and US Patent Systems

Federica Baldan, “Exploring the Principle of Separation of Powers in the European and US Patent Systems” 

Institutional developments taking place at the European and US patent systems are raising some fundamental questions about the respect of the principle of separation of powers. In the European patent system, decision R 19/12 of the Enlarged Board of Appeal brought to the foreground important issues concerning the lack of independence of the quasi-judicial Boards of Appeal (BoAs) from the administrative branch of the European Patent Office. In the US patent system, the 2011 America Invents Act expanded the role of the Patent Trial and Appeal Board (PTAB), raising concerns about the check and balances between the administrative and judicial powers. The research question of the current research is: to what extent are the BoAs and the PTAB independent from the executive branches that created them?

Common elements from the theories of copyright regarding the protection of author’s moral and material interests

David Felipe Alvarez, “Common elements from the theories of copyright regarding the protection of author’s moral and material interests” 

This paper proposes a revision of some of the principal theories regarding copyright in order to find its relation with the possible elements that would support author’srights as human rights. The principal conclusion in this paperis to recognise that the discourse of autonomy and freedom of expression regards anyone, and the author is this “anyone” who potentially could express and exercise his communicative power. His will is fundamental for this purpose. Is author’s volition what makes possible to publish or not a given expression, and in terms of communicative rationality, it means that such will is in the middle between communication or not communication. This means that individuals are potential holders of social power. Such power emerges through the intersubjective exchange of opinions and this is possible under conditions of autonomy. Finally in this paper it will be analysed that copyright cannot only be explained as mere property. A natural law conception of copyright could not be limited to the idea of natural property, which would be an incomplete conceptualization of copyright. Instead, copyright should be inscribed in the system of constitutional rights with a very important role in democracy.

Patenting Processes in Europe and the Unitary Patent

Papers and Contributors:

  1. The Effect of Time Pressure on Real Effort Investment Under Ambiguity – Daniel Zizzo (Newcastle University), Sven Fisher (Newcastle University) and Marco Kleine (Max Planck Institute)
  2. Patenting Strategies in Europe – Dietmar Harhoff (Max Planck Institute), Antanina Garanasvili (Padua) and Georg von Graevenitz (QMUL)
  3. Patent Appeal Cases at the UK High Court – Chris Hanretty (UEA), Georg von Graevenitz (QMUL) and Prashant Gupta (Swansea)

This session brings together contributions from the ESRC Knowledge Exchange “Assessing the Unitary Patent and the Unified Patent Court”. This project was set up to investigate the patenting process in Europe before the introduction of the Unitary Patent System to provide a baseline against which to evaluate the impact of the Unitary Patent.

The session provides new evidence on three aspects of the European patenting process:

  1. Effects of cooling off periods in patent application processes
  2. The choice between national patents and validation of the EPO’s patent in multiple countries
  3. Litigation at the UK High Court – importance of judge effects on outcomes

Each paper addresses aspects of the European patenting system that are relevant to discussion surrounding the Unitary Patent at present. The first paper addresses the question of how applicants’ incentives to pursue a patent are affected by delays enforced by the patent office. This is particularly important in the UK, where patent applicants are not required to seek representation by a patent attorney.  The second paper focuses on the choice between national and EPO patents made by firms patenting in Europe. It provides descriptive evidence at the firm level on firms’ patenting strategies (including validation choices) and analyses the relative impact of national, sectoral and technological influences on these strategies. The third paper analyses how important the characteristics of judges and particularly their experience and educational backgrounds are for the outcomes of patent litigation in the High Court of the UK. 

Each of these papers provides evidence on the current patenting process in Europe that is currently not available. This evidence is intended to inform decisions on the design of patent application processes, the pricing of patents and the education of patent judges that will shape the way the Unitary patent and the existing patent systems in Europe interact.

Consuming copyrighted media without paying

Daniel John Zizzo (Newcastle University), Piers Fleming & Sven Fischer, “Consuming copyrighted media without paying – A controlled experiment with a representative sample”

We report the results of controlled experiments on unlawful consumption of non-rivalry consumer goods such as film and music, with a sample of 1,200 participants, representative for the adult population aged 18 to 65 in the United Kingdom. Our study allows us to identify how consumer behaviour is affected by equity considerations towards the right holder, deterrence, intrinsic and social norms, and empirical expectations of how others behave. We are furthermore able to correlate experimental and real-world behaviour with reported norms, personality measures and socio-demographic characteristics. This main study with a representative sample has been preceded by an experiment with a student sample population. More specifically, the experiments replicate a situation in which a consumer can decide whether to pay a small price for the consumption of a non-rivalry consumer good (such as media) he likes very much, or obtain it without paying the seller or rights holder. The good is linked to a ͞rights holder͟(represented by another participant), who is the recipient of the price paid, whenever the consumer decides to pay.  Obtaining it without paying, on the other hand bears the risk of being detected, which results in a fine in excess of the gain from consumption.  We systematically analyse the effects of several aspects on consumer behaviour in such an environment.  i) We compare consumption of goods the rights holder worked to produce, to those she herself received for free. Equity considerations would predict a higher willingness to pay from consumers in the first case. ii) We manipulate deterrence, by varying the detection probability from 0%, to 1%, 10%, or 20%. This tests standard financial risk considerations. iii) We force some consumers to reflect on their own norm, that of others, and their expectations of how other consumers behave, before they make their own purchasing decision. This enables us to get an understanding of consumers’ social norms and whether reflecting on them nudges behaviour. We elicit and compare perceptions and attitudes towards consumption of music to that of films, and of downloading such media versus consuming it by stream. In a follow up survey, two months after the first one, we test whether real world consumption of either films or music was related to the choices our participants made in our main study.

Patent Thickets and Licensing: Empirical Findings from Japanese Listed Companies

Xingyuan Zhang (Okayama University) & Jiaming Jiang (Okayama University), “Patent Thickets and Licensing: Empirical Findings from Japanese Listed Companies”

In this paper, we employ licensing contract information disclosed in the ``Important Technology Contracts in Business" section of the Annual Securities Reports of Japanese listed companies to construct a licensing dataset, and propose alternative methods of measuring patent thickets to examine the effects of patent thickets on licensing contracts and patent portfolio races of Japanese companies. Our empirical results show that patent thickets are positively associated with licensing activities, and the patent applications of both licensors and licensee, while licensing activities help to alleviate patent portfolio races both for licensors and licensees.

Market for Trademark

Maryam Zehtabchi (WIPO), “Market for Trademark”

This paper focuses on the notion of “market for trademarks”.First, welook at trademark market vis-à-vis patentto unveil theirmarketdifferences which unveilstrademarks have higher  market visibility,  less complementarity,  less value  rivalry,  lack  of repugnance, indefinite renewabilityandareemployedinbroader range of products. Second weposit a formal  model  to  discusses  how  fluctuation  inmaintenance  costimpacts trademark transactions.  Our  model explainsthat,  an  increase  in  trademark  maintenance  cost increases rate of transactions, thesetransactionsare more likely to be in form of security interestand among parties in distant locations.

Addressing Climate Change: Domestic innovation, international aid and collaboration

Joy Xiang (IIT Chicago-Kent College of Law), “Addressing Climate Change: Domestic innovation, international aid and collaboration”

Climate change is a pressing issue confronting the global community. The rapid development and diffusion of clean technologies (i.e., technologies necessary for adapting to or mitigating climate change) must be a central part of the solution. However, a stalemate has persisted in global climate change negotiations at the United Nations, caused by diverging views regarding the role of intellectual property rights (“IPR”) in the international transfer of clean technologies. Developed nations insist on strong IPR for clean technologies, while developing nations claim that IPR is a major barrier to the international transfer of clean technologies and demand to remove or reduce IPR for clean technologies. This article explores two questions: (1) Is the existence of IPR a major barrier to the international transfer of clean technologies, and (2) why has the international transfer of clean technologies to developing nations been limited? Analyzing evidential data available, this article concludes that IPR probably has not been a major barrier to the international transfer of clean technologies. However, sustainable international transfer of clean technologies requires the joint efforts of developing and developed nations. To prepare for sustainable international transfer of clean technologies and to advance the effort for addressing climate change, this article proposes a new paradigm based on domestic innovation, international aid and international technology collaboration.

Patent Trolls as Financial Intermediaries? Experimental Evidence

Stephen H. Haber & Seth Werfel (Stanford University), “Patent Trolls as Financial Intermediaries? Experimental Evidence”

Why do individual patent holders assign their patents to "trolls" rather than license their technologies directly to manufacturers or assert them through litigation? We explore the hypothesis that an asymmetry in financial resources between individual patent holders and manufacturers prevents individuals from making a credible threat to litigate against infringement. First, individuals may not be able to cover the upfront costs associated with litigation. Second, unsuccessful litigation can result in legal fees so large as to bankrupt the individual. Therefore, a primary reason why individual patent holders sell to PAEs is that they offer insurance and liquidity. We test this hypothesis by experimentally manipulating these financial constraints on a representative sample of inventors and entrepreneurs affiliated with academic institutions that are particularly known for their innovative activity: Stanford University and the University of California, Berkeley. We find that in the absence of these constraints, subjects were significantly less likely to sell their patent to a PAE in a hypothetical scenario. Furthermore, treatment effects were significant only for subjects who were hypothesized to be most sensitive to these constraints.