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Breaking News
2018-12-11 - My Law360 Article on Makan Delrahim’s December 7 Speech
2018-12-11 - Experts Call For Global Accountability Mechanism For Access To Essential Medicines
2018-12-11 - Traditional Knowledge, Folklore: How To Protect Them From Misappropriation – This Week At WIPO
2018-12-11 - IP Chat Channel Webinar on Enforcing Patents Globally
2018-12-11 - Singapore IP Office Grants First Accelerated Patent Under New FinTech Initiative
2018-12-10 - European Council Committee Agrees On Higher Protection For Spirit Drinks, Takes GIs Beyond TRIPS
2018-12-10 - Why is SCOTUS Creating a Federal Common Law of Patents?
2018-12-10 - Capitol Hill Roundup
2018-12-10 - Federal Circuit Protects Novartis Gilenya Patent From Obviousness-Type Double Patenting
2018-12-10 - Novartis AG v. Ezra Ventures LLC (Fed. Cir. 2018)
Home / 2018 / October / 11

  • Intellectual property and crime: The Nigerian Copyright Commission files criminal charges against a music collecting society

    — 2018-10-11

    As some readers will know, the Nigerian Copyright Commission (NCC) has this week moved to give effect to its suspension of the operating licence of the Collecting Society of Nigeria (COSON). The NCC has filed criminal charge FHC/L/338C/18 at the Nigerian Federal High Court, Lagos Division against COSON, Chief Tony Okoroji, Mr. Chinedu Chukwuji (General Manager), Mrs Bernice Eremieghe and Miss Anne Okomi (collectively, “COSON and its officers”). The alleged offence against COSON and its officers is that of carrying out the duties of a collecting society without the approval of the NCC.
    Background – corporate governance issues

    The background to this criminal charge filed against COSON and its officers is the meeting of the COSON’s governing board and subsequent meeting of COSON’s general assembly all held in 2017. See hereand here.

    At the meeting of the governing board, Chief Tony Okoroji was removed as Chairman and another board member, Mr Efe Omoregbe appointed in his place. However, when the general assembly had its annual general meeting, Chief Tony Okoroji was purportedly reinstated as Chairman. Upon petition by some members of COSON to the NCC alleging irregularities in the appointment process and proceedings at the meeting, the NCC inter alia directed COSON not to give effect to the resolutions regarding the removal and reinstatement of board members. Contrary to NCC’s directives, COSON continued to operate with Chief Okoroji at the helm of its affairs ostensibly giving effect to the resolutions reached at the meeting of the general assembly. The NCC, by a letter dated 30thApril 2018, suspended COSON’s operating licence pending COSON’s compliance with the NCC’s previous directives.

    Several stakeholders have made calls to the NCC to reconsider its decision and lift the suspension placed on COSON, while exploring other options towards calling COSON’s erring officers to order. See here.

    What’s happened now?

    Matters came to a head this week. The NCC has been investigating COSON’s activities since it issued the suspension order. COSON is alleged to have demanded and collected royalties from a public place, a company called Noah’s Ark. This action is alleged to amount to the performance of the duties of a collecting society i.e. carrying on the business of negotiating and granting licenses on behalf of copyright owners without the approval of the NCC.

    Sections 39 (4), (5) and (6) of the Nigerian Copyright Act makes it an offence to operate the business of a collecting society without the approval or licence of the NCC. Apart from the inherent “taint” of conviction (e.g. disqualification from holding public office, disqualification from holding directorships in other companies upon an order of court etc.), the offence attracts a fine of N1,000 ($3) for individuals on first conviction and for subsequent convictions, fine of N2,000 ($6) or imprisonment for a period not exceeding six months or both fine and imprisonment. In the case of a body corporate, N10,000 ($27) upon conviction and N2,000 ($6) for each day on which the offence continues.

    Some questions

    It is trite that under Nigerian criminal law, an accused person is innocent until proven guilty. Accordingly, the accused persons here, i.e. COSON and its officers are presumed to be innocent of the offence of carrying on the business of collecting society without the requisite licence, until proven guilty. Also, in proving the commission of a crime, the prosecution must show that the accused person(s) is responsible for the actus reus (physical act) and had the mens rea (guilty mind or intention). See Bolanle Abeke v State (2007) 9 NWLR (Pt 1040) 411 SC. [The requirement to prove mens rea is not necessary where the offence is a strict liability offence. For example, the offence of having sexual intercourse with a child under section 31(3) of the Child’s Right Act.]

    With respect to the offence envisaged by section 39(4) of the Copyright Act, the ingredients of the offence would be: (1) the absence of approval or licence to operate and (2) carrying on the business of a collecting society in the absence of such approval. The element of absence of approval or licence may be easy to prove, as the existence of operating licence is a question of fact evidenced by a letter of approval or renewal in the case of an expired licence. However, proving the element of “carrying on the duties or business of a collecting society” may not be so straightforward.

    A conviction (or acquittal) in respect of the offence envisaged by section 39(4) is hinged on two questions: what is the “business of a collecting society”. When is an organisation said to carry on such business? It appears from the statement on the NCC’s website that the duties of a collecting society undertaken by COSON and its officers involved “demanding and collecting royalties from Noah’s Ark of 9 Sowemimo Street, GRA, Ikeja Lagos and carrying on the business of negotiating and granting licenses on behalf of copyright owners”.

    As some readers would recall, Afro-IP has reported on and analysed various cases from the Nigerian courts on the issue of the status as well as the locus standi of an organisation that demands and collects royalties on behalf of copyright owners. See here, hereand here. On the issue of locus standi, the courts have indicated that there is a difference between a collecting society and an owner, exclusive licensee and assignee of copyright. While the former cannot validly maintain an action for copyright infringement without an operating licence from the NCC, the latter may validly do so. [For example, Adeokin Records and another v Musical Copyright Society of Nigeria SC/336/2008; Compact Disc Technologies Limited and others v MCSN (2010) LPELR-CA/L/787/2008; MCSN v Adeokin Records (2007) 13 NWLR (Pt 1052) 616; MCSN v Detail (1996) FHCLR 473; Visafone Comm Ltd v MCSN (2013) 5 NWLR (Pt 1347) 250 etc.]

    However, in all these cases, the courts have not categorically defined the concept of the “duties” or “business” of a collecting society even though they acknowledge that collecting societies are owners, assignees and exclusive licensees of copyright by virtue of the assignment given to them by each of their members. A definition of this concept is crucial as it determines which organizations would require the approval or licence of the NCC to validly operate. This is not solely a Nigerian problem. The requirement for aspiring collecting societies to obtain approval, licence or accreditation from some regulatory authority exists in many countries. Recently, South Africa’s Portfolio Committee on Trade and Industry requested public commentson specific clauses of its Copyright Amendment Bill. These clauses involve the requirement of collecting societies to be accredited and make it a crime to operate without such accreditation. If adopted, these clauses would also necessitate a clear definition of the business of a collecting society or a definition of who is a “collecting society”.

    So, does demanding for and collecting royalties amount to operating the business of a collecting society such that doing so without NCC’s licence would amount to an offence? Only the court can tell. But, for sure, an acquittal or a conviction in this case (NCC v COSON & 4 others) will depend on how the court defines the expression, “performing the duties of a collecting society” as stated in section 39(4) of the Copyright Act.

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  • Supreme Court Asked to Consider Immoral or Scandalous Trademarks

    — 2018-10-11

    On September 7, 2018, the government filed a petition for writ of certiorari in the case relating to Eric Brunetti’s clothing brand, called FUCT. Although Brunetti has marketed various apparel under the FUCT mark since the early 1990s, the application at issue in this case was filed in 2011. The examiner rejected the application under Section 2(a), finding that FUCT “is the past tense of F*CK,” and “is scandalous because it is disparaging and [] total[ly] vulgar.” The Trademark Trial and Appeal…

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  • Judge Rules That Script for “Friday the 13th” Was Not a Work For Hire, Allows Scriptwriter to Reclaim Copyright

    — 2018-10-11

    District Judge Stefan Underhill of the District of Connecticut issued a ruling on cross-motions for summary judgment in a copyright case involving the cult horror film Friday the 13th. Judge Underhill’s ruling determined that Victor Miller, the screenwriter who wrote the script for the movie, did not produce the script as a work made for hire, thus preserving his ability to claim ownership of the copyright for the script.

    The post Judge Rules That Script for “Friday the 13th” Was…

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  • Roche loses in Rifampin case

    — 2018-10-11

    The issues in the Roche case were :101


    The only issues on appeal are whether the aforementioned
    primer claims and the method claims of the ’723
    patent are patent-ineligible within the meaning of § 101.
    Section 101 provides that “[w]hoever invents or discovers
    any new and useful process, machine, manufacture, or
    composition of matter, or any new and useful improvement
    thereof, may obtain a patent therefor, subject to the
    conditions and requirements of this title.” 35 U.S.C.
    § 101. There are certain exceptions to this provision: laws
    of nature, natural phenomena, and abstract ideas are not
    patent-eligible subject matter. Alice Corp. v. CLS Bank
    Int’l, 134 S. Ct. 2347, 2354 (2014) (collecting cases).

    Roche lost.


    Appellant Roche Molecular Systems, Inc. (“Roche”)
    owns U.S. Patent No. 5,643,723 (“the ’723 patent”), titled
    “Detection of a Genetic Locus Encoding Resistance to
    Rifampin in Microbacterial Cultures and in Clinical
    Specimens.” The United States District Court for the
    Northern District of California found that the asserted
    claims of the ’723 patent are directed to patent-ineligible
    subject matter and are therefore invalid under 35 U.S.C.
    § 101. Roche appeals from a grant of summary judgment
    of invalidity. We affirm.

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  • Mixed 101 result in Data Engine Technologies v. Google

    — 2018-10-11

    From the opinion:

    Data Engine Technologies LLC (“DET”) appeals the
    district court’s entry of judgment on the pleadings holding
    that the asserted claims of DET’s U.S. Patent
    Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are
    ineligible under 35 U.S.C. § 101. The district court held
    that the asserted claims are directed to abstract ideas and
    fail to provide an inventive concept. We conclude that,
    with the exception of claim 1 of the ’551 patent, the asserted
    claims of the ’259, ’545, and ’551 patents (“Tab
    Patents”) are directed to patent-eligible subject matter.
    These claims are not abstract, but rather are directed to a
    specific improved method for navigating through complex
    three-dimensional electronic spreadsheets. We agree,
    however, that the asserted claims of the ’146 patent,
    reciting methods for tracking changes to data in spreadsheets,
    are directed to the abstract idea of collecting,
    recognizing, and storing changed information. After a
    searching review, we find nothing in these claims that
    provides an inventive concept sufficient to render the
    claims patent eligible. Accordingly, we affirm-in-part,
    reverse-in-part, and remand.

    QuatroPro is mentioned:


    Although these spreadsheet interfaces have become
    ubiquitous, Quattro Pro, the first commercial embodiment
    of the claimed invention, was highly acclaimed as having
    revolutionized three-dimensional electronic spreadsheets.
    During prosecution, DET submitted contemporaneous
    articles showing the state of the art at the time of the
    invention and evidencing the significance of the claimed
    methods to spreadsheet technology. For example, PC
    World, a leading computer magazine, published a frontpage
    article, “Quattro Pro for Windows: The Ultimate 3-D
    Spreadsheet.” J.A. 981. The article reflected the industry’s
    view that “keeping large, complex worksheet projects
    organized, manageable, and reliable ha[d] long been a
    major concern for serious spreadsheet users” and that
    existing spreadsheets had “data and results hidden all
    over the place.” J.A. 982. The article touts the claimed
    notebook-tabbed spreadsheet interface as a solution to
    that problem, explaining that it “makes developing nifty
    applications far easier for the average spreadsheet user,
    and [that] intelligent command organization makes
    navigation efficient.” Id. PC World published another
    cover story naming Quattro Pro “The Best of 1992,” again
    lauding it as “the first spreadsheet to make threedimensional
    modeling an accessible, useful analytic tool.”
    J.A. 1007. The article stated that “[o]ne of the keys to the
    product’s success is a notebook metaphor, in which each
    worksheet page can be assigned a descriptive name and
    users can navigate through the set by clicking on page
    tabs.” Id.

    Of the ‘146 patent:


    Google filed a motion for judgment on the pleadings
    under Federal Rule of Civil Procedure 12(c), arguing that
    the asserted claims of the Tab Patents and the ’146 patent
    are directed to patent-ineligible subject matter under
    § 101. The district court granted the motion with respect
    to the Tab Patents, concluding that representative
    claim 12 of the ’259 patent is “directed to the abstract idea
    of using notebook-type tabs to label and organize spreadsheets.”
    District Court Op., 211 F. Supp. 3d at 678. The
    district court also agreed with Google that claim 12 “is
    directed to an abstract idea that humans have commonly
    performed entirely in their minds, with the aid of columnar
    pads and writing instruments.” Id. at 679. The
    district court held that the remaining limitations of
    claim 12 fail to recite an inventive concept. Id.

    Of the ‘259 patent:


    When considered as a whole, and in light of the specification,
    representative claim 12 of the ’259 patent is not
    directed to an abstract idea. Rather, the claim is directed
    to a specific method for navigating through threedimensional
    electronic spreadsheets. The method provides
    a specific solution to then-existing technological
    problems in computers and prior art electronic spreadsheets.
    The specification teaches that prior art computer
    spreadsheets were not user friendly. They required users
    to “master many complex and arbitrary operations.”
    ’259 patent col. 2 ll. 28–29. Users had to search through
    complex menu systems to find appropriate commands to
    execute simple computer tasks, which required users to
    memorize frequently needed commands. Id. at col. 2
    ll. 29–45. This was burdensome and hindered a user’s
    ability to find or access the many commands and features
    available in prior art computer spreadsheets, undercutting
    the effectiveness of the computer as a means to
    review and edit a spreadsheet. Id. at col. 2 ll. 45–56. This
    was particularly true for three-dimensional spreadsheets,
    which allowed users to build spreadsheet workspaces
    consisting of multiple two-dimensional spreadsheets,
    further increasing the complexity of using and navigating
    between multiple spreadsheets. Id. at col. 2 l. 66–col. 3
    l. 24

    Note footnote 2:

    The district court declined to consider the articles
    included in the prosecution history, relying only on the
    pleadings and the patents attached to DET’s complaint.
    District Court Op., 211 F. Supp. 3d at 681 n.4. On a
    motion for judgment on the pleadings, however, the court
    may consider “matters of public record.” Cf. Bruni v. City
    of Pittsburgh, 824 F.3d 353, 360 (3d Cir. 2016) (quoting
    Pension Benefit Guar. Corp. v. White Consol. Indus., Inc.,
    998 F.2d 1192, 1196 (3d Cir. 1993)). Prosecution histories
    constitute public records. See Hockerson-Halberstadt, Inc.
    v. Avia Group Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir.
    2000) (“The prosecution history constitutes a public
    record . . . .”); see 37 C.F.R. § 1.11(a) (“The specification,
    drawings, and all papers to the file of: [a] published
    application; a patent; or a statutory invention registration
    are open to inspection by the public . . . .”). We consider
    this evidence relevant in our de novo review because it is
    part of the Tab Patents’ prosecution histories and was
    relied on in DET’s opposition to Google’s Rule 12(c) motion.

    Note

    Google avers that humans have long used tabs to organize
    information. It cites tabbed notebooks, binder
    dividers, file folders, and sticky Post-it notes as wellknown
    examples of organizing information using tabs.
    We agree that tabs existed outside the context of electronic
    spreadsheets prior to the claimed invention. It is not
    enough, however, to merely trace the invention to some
    real-world analogy. The eligibility question is not whether
    anyone has ever used tabs to organize information.
    That question is reserved for §§ 102 and 103. The question
    of abstraction is whether the claim is “directed to” the
    abstract idea itself. Id. We must consider the claim as a
    whole to determine whether the claim is directed to an
    abstract idea or something more. Google fails to appreciate
    the functional improvement achieved by the specifically
    recited notebook tabs in the claimed methods. The
    notebook appearance of the tabs was specifically chosen
    by the inventors because it is easily identified by users.
    The tabs are not merely labeled buttons or other generic
    icons. DET has disclaimed as much. See Oral
    Arg. at 11:03–47. Rather, the notebook tabs are specific
    structures within the three-dimensional spreadsheet
    environment that allow a user to avoid the burdensome
    task of navigating through spreadsheets in separate
    windows using arbitrary commands

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  • American Chemical Society goes after ResearchGate for copyright infringement

    — 2018-10-11

    The American Chemical Society (and Elsevier) filed suit in the federal District Court of Maryland on 2 October 2018 asserting copyright infringement by the German entity ResearchGate.

    The complaint is available on the internet.

    There are a variety of issues.

    As a condition of publishing, the American Chemical Society [“ACS”] requires authors to execute an assignment of copyright. Sometimes, authors will modify the agreement to allow use for “advertising” the authors or the institutions of the authors. Sometimes, authors, who do not modify, are not fully aware of the restrictions imposed by the standard ACS form. ResearchGate apparently gets some of its copies from websites into which authors have posted copies of their articles.

    As to publication requirements on papers arising from federally-funded research, note the policy impacting papers arising through funding by
    the National Science Foundation [NSF]:

    NSF’s policy on public access to copyrighted material (Public Access Policy) reflects the Foundation’s commitment to making certain that, to the extent possible, the American public, industry and the scientific community have access to the results of Federally funded scientific research. Pursuant to this policy, grantees must ensure that articles in peer-reviewed scholarly journals and papers in juried conference proceedings:

    are deposited in a public access compliant repository (as identified in the Public Access Policy);
    are available for download, reading, and analysis within 12 months of publication    ;
    possess a minimum set of machine-readable metadata elements as described in the Public Access Policy; and
    are reported in annual and final reports with a persistent identifier.
    Either the final printed version or the final peer-reviewed manuscript is acceptable for deposit. NSF’s Public Access Policy applies to awards, funded in whole or in part, as a result of proposals submitted, or due, on or after January 25, 2016. NSF’s Public Access Policy may be viewed at: http://www.nsf.gov/news/special_reports/public_access/index.jsp.

    If the ACS policy sounds vaguely familiar, look back to a post on IPBiz in the year 2006:


    Journal publication, pubmedcentral and the ACS     , including the text:


    In context, Nally is complaining about posting of scientists’ final, peer-reviewed articles on an internet website (pubmedcentral) within 12 months AFTER publication in the journal.

    I could not help thinking about Dan Hunter’s article, Walled Gardens, 62 Wash & Lee L. Rev. 607, which complained about the requirement of some law reviews that articles which had been pre-published on an internet website to be removed from the website BEFORE publication in the journal.

    The common theme is the perceived undesirability, by the journals, of information being made available on the internet. The noncommon theme is the timing. The SCIENCE journals have the expectation of presenting the information FIRST, and worry about the impact of later publication. The LAW journals do not care that the information has been presented somewhere else first, but don’t want someone to access the information (presented elsewhere first) AFTER they decide to publish it LATER.

    See also the 2004 post
    American Chemical Society suing Google over google scholar?

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  • 資する

    — 2018-10-11

    　　　　　　　　　　　　　　　　　　　　　　　　目次はこちら

    資する

    (HELP)
    $$ To help understanding of the invention, various specific embodiments thereof will now be described by way of example and with referenc…

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  • University of California Office of Innovation and Entrepreneurship Opens Liaison Office in Beijing

    — 2018-10-11

    The University of California [UC] has opened a “liaison office” in Beijing to provide opportunities for UC startups to access China’s large market for products and services as well as its venture capital market.  The press release states, in part:
    Office Opening

    In June, 2018, UC’s Office of Innovation and Entrepreneurship (I&E) established a liaison office in Beijing at TusStar, a leading tech incubator and early-stage investment fund. The key objective of this liaison office is to provide business development and business-matching services as well as overall administrative support to UC startups looking to expand their business in China.

    TusStar operates over 160 incubators globally; it has deployed over $2 billion in investment capital since 2001.  It is owned by Tus Holdings, a large integrated enterprise with 500+ subsidiaries and $15+ billion in investment capital.  

    The new UC office will be located inside TusPark, the largest science park in Zhongguancun, the “Silicon Valley hub” of Beijing where multinational tech companies, such as Google, are based. 

    Key Objective

    The creation of this new office and relationship with TusStar will help UC startups connect with resources to market their products to Chinese customers, find additional sources of investor funding, connect with strategic manufacturing and distribution partners, and network with other UC alumni and UC entrepreneurs in China.

    The Beijing office will also provide UC’s Office of Innovation and Entrepreneurship with the necessary business network and program support to coordinate alumni events and other programs connecting with Chinese investors and industry partners, i.e., cross-border tours, pitch competitions, conferences, forums and symposiums.

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  • USPTO Publishes Final Rule Adopting Phillips Standard at PTAB

    — 2018-10-11

    The United States Patent and Trademark Office (USPTO) has published a final rule in the Federal Register changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings before the Patent Trial and Appeal Board (PTAB). This final rule replaces the broadest reasonable interpretation standard the USPTO has used to interpret claims since AIA administrative trial proceedings came online effective…

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  • Some Recent German Articles on FRAND-Related Topics

    — 2018-10-11
    1. Martin Schaffer and Christian Czychowski have published a paper titled Wer bestimmt, was FRAND ist?, in the June 2018 issue of GRUR (pp. 582-85).  Here is the abstract (my translation from the German):
    To determine the meaning of FRAND is surely one of the most difficult questions in patent law.  In this regard, copyright law has addressed similar questions regarding the licensing of mass uses.  Moreover, section 23 of the Patent Law already offers in its valuation model the possibility of drawing FRAND declarations into the patent licensing system.  This should be accomplished, however, in the context of an action for rate-setting and dispute resolution.  The following contribution offers some preliminary ideas.

    In case you’re not familiar with the aforementioned article 23, here is a translation of it from WIPO’s website: 

    (1) Where a patent applicant or the person entered in the Register as the proprietor of the patent (section 30 (1)) declares to the German Patent and Trade Mark Office in writing that he is willing to allow anyone to use the invention in return for equitable remuneration, the annual renewal fees due in respect of the patent following receipt of the declaration shall be reduced to one half. The declaration shall be recorded in the Register and published in the Patent Gazette (Patentblatt).

    (2) The declaration shall be inadmissible as long as there is an entry in the Register regarding the grant of an exclusive licence (section 30 (4)) or an application is pending before the German Patent and Trade Mark Office for such entry to be made.

    (3) Any person who, subsequent to the declaration being entered, wishes to use the invention shall inform the proprietor of the patent of his intention. The information shall be deemed to have been effected if it has been dispatched by registered letter to the person entered in the Register as the proprietor of the patent or to his registered representative or the person authorised to accept service (section 25). The information shall indicate how the invention is to be used. Subsequent to the information, the informing party shall be entitled to effect use in the manner he has indicated. He shall be obliged, after the expiry of each calendar quarter, to inform the proprietor of the patent of the use effected and to pay the remuneration for that use. If he does not fulfil this obligation in due time, the person registered as proprietor of the patent may set him a reasonable extension of time for payment and, following expiry without the obligation being fulfilled, may prohibit further use of the invention.

    (4) The remuneration shall be fixed by the Patent Division upon the written request of a party. Sections 46, 47 and 62 shall apply mutatis mutandis to the procedure. The request may be directed against more than one party. When fixing the amount of the remuneration the German Patent and Trade Mark Office may make an order requiring the party opposing the request to bear the costs of the procedure in whole or in part.

    (5) After the expiry of a period of one year following the last fixing of remuneration, any party affected thereby may apply for its adjustment if in the meantime circumstances have arisen or become known which make the remuneration fixed appear obviously inappropriate. In other respects, subsection (4) shall apply mutatis mutandis.

    (6) Where the declaration is made in respect of an application, the provisions of subsections (1) to (5) shall apply mutatis mutandis.

    (7) The declaration may be withdrawn in writing vis-à-vis the German Patent and Trade Mark Office at any time, as long as the proprietor of the patent has not been informed of any intention to use the invention. The withdrawal shall take effect when it is filed. The sum by which the annual renewal fees have been reduced shall be paid within one month of the withdrawal of the declaration. If the difference is not paid within the time limit specified in the third sentence, it may still be paid together with the surcharge for late payment before the expiry of a period of a further four months.

    The U.K. has a similar “license of right” provision in section 46 of its patent law.  Anyway, Drs. Schaffer and Cychowski argue that something along these lines could be used to determine FRAND rates.  If I understand correctly, the proposal would be for SEP owners to establish voluntary agents (analogous to collective rights organizations in copyright) to grant nonexclusive licenses on a standard-wide basis.  The authors recognize that for such a proposal to work, there would have to be a critical mass of owners willing to participate.

    2.  Maximilian Haedicke has published an article titled Vorlagepflichten und Schutz vetraulicher Informationen im Patentverletzungsprozess (“Submission requirements and protection of confidential information in patent infringement proceedings”) in the June 2018 issue of Mitteilungen der deutschen Patentanwälten (pp. 249-55).  Here is the abstract (again, my translation):

    Recently, interest has intensified surrounding the question of how to protect confidential information in patent infringement proceedings.  Comprehensive legal means for the protection of secret information are not in place.  Nevertheless, it is important to achieve a balance among the protection of litigants, especially their right to a legal hearing, the claim to access to justice, and also the public interest in transparent jurisprudence and legal development.  This essay is intended to discuss, under what conditions potentially confidential information is introduced in patent litigation, whether it is adequately protected, and what improvements should be considered.

    For previous reference on this blog to this topic, which is becoming important in FRAND matters in Germany, see here and here.

    3. Michael Nieder has published an article titled SEP-Lizenzen-ein Fall für die Gesamtgläubigerschaft? (“SEP Licenses:  A Case for Joint Creditorship?”), in the July 2018 issue of GRUR (pp. 666-70).   Here is the abstract in my translation:

    In SEP proceedings the FRAND license plays a prominent role.  Different answers have been proposed to the question of how to avoid overburdening implementers with royalty payments when there are a large number of claimants.  The author proposes the use of rules for joint creditorship for resolving the accumulated license claims of SEP owners up to the aggregate royalty burden.

    If I’m understanding correctly, the procedure the author envisions, based on sections 428 and 430 of the BGB (the German Civil Code), strikes me as functionally somewhat similar to the proposal made a couple of years ago by Bartlett and Contreras for resolving FRAND disputes through use of interpleader.

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