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Frank van Bouwelen Dutch and European Patent Attorney European Trademark Attorney Overview of Maritime IPR Issues.

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Presentation on theme: "Frank van Bouwelen Dutch and European Patent Attorney European Trademark Attorney Overview of Maritime IPR Issues."— Presentation transcript:

1 Frank van Bouwelen Dutch and European Patent Attorney European Trademark Attorney Overview of Maritime IPR Issues

2 Rotterdam February 4, 2010 Disclaimer Paraphrased the law to make the points in non-legal style (still correct though) Points are made on the basis of the way patent laws operate and the effects thereof Acknowledgements: Various clients and AMEM - particularly John Kühmayer

3 Rotterdam February 4, 2010 IPR Registered rights Unregistered rights Patents Copyright Design (registered ) Unregistered design rights Trademarks Know-how?

4 Rotterdam February 4, 2010 Protection of Intellectual Property: - Patents - Trademarks - Designs - Copyright ? enhances technology, safety not only marketing, also liability!

5 Rotterdam February 4, 2010 What right does a patent give? A patent gives the proprietor a right to stop others, from - making, offering, putting on the market, using, importing, stocking a product, or - using a process subject to the patent

6 Rotterdam February 4, 2010 Key to the market? By being able to stop others the market for the product or process claimed in the patent can be yours! Note: You could be stopped by proprietors of other patents which have claimed features which you used, to end up with the product or process claimed by you.

7 Rotterdam February 4, 2010 Patent laws aimed at motivating technological innovations Research exception (vs. Bolar provision) Selection invention Dependencies of broader and narrow/advantageous claims Compulsory licence Most importantly: Publication of application Sufficiency of disclosure of invention Stimulates competition on technological level

8 Rotterdam February 4, 2010 Patent has competitive nature o You have to apply for it First-to-file First-to-invent o Claimed technology must be novel and inventive relative to prior technology o Procedure can be monitored by public o Public can file observations o Public can file opposition Public is in practice the competition

9 Rotterdam February 4, 2010 Lifetime of a patent? 20 years from filing Can be attacked by anyone during its lifetime Can be revoked on the basis of serious grounds (a) not novel/inventive (b) not sufficiently disclosed (c) matter added during prosecution

10 Rotterdam February 4, 2010 Spotting infringement Up to the proprietor of patent Normally, for example: Using putting on the market making Offering importing or stocking making

11 Rotterdam February 4, 2010 Example of spotting infringement 1.Product is seen to be used 2.You buy the product, reverse-engineer it, analyze it, establish it infringes your patent claim 3.You move up in the chain: supplier importer manufacturer, and sue!

12 Rotterdam February 4, 2010 Problems with spotting infringement of marine equipment 1.You do not see it being used 2.You do not buy a ship, not inspect a ship, not enter a ship/yard 3.You cannot analyze, reverse-engineer it 4.Usually no shop, offers not made to competitors 5.Exhibition only display

13 Rotterdam February 4, 2010 Further complications with enforcement of the patent Patent has territorial character Vessels move from one territory to another

14 Rotterdam February 4, 2010 Article 5ter Paris Convention Rights conferred by a patent shall not extend to: - the use of the patented invention on board of vessels - when such vessels temporarily or accidentally enter the waters Provided that the invention is used exclusively for the needs of the vessel

15 Rotterdam February 4, 2010 Background of Article 5ter Paris Convention 1851 in London : Burgermeester Huidekoper Stadt Dordrecht Fyenoord - infringing a UK patent

16 Rotterdam February 4, 2010 1852 British Patent Act: Subject to reciprocity, no infringement! 1857 Supreme Court of the USA: No infringement, provided that in its domestic port the vessel is also not seen to be infringing

17 Rotterdam February 4, 2010 1877 German Patent Act: Auf Einrichtungen an Fahrzeugen, welche nur vorübergehend in das Inland gelangen, erstreckt sich die Wirkung des Patentes nicht No reciprocity! Legal situation in Domestic Port irrelevant !

18 Rotterdam February 4, 2010 1925The Hague Conference: Freedom of international transport prevails: >Article 5ter PC

19 Rotterdam February 4, 2010 Case Law then focussed on the meaning of temporarily

20 Rotterdam February 4, 2010 Stena versus Irish Ferries Court of Appeal UK: Irish Ferries entered UK territorial waters 3-4 times a day for around 3 hours each time Court of Appeal held: Entering UK waters is temporarily within the meaning of the patent law

21 Rotterdam February 4, 2010 Result: If no protection on-shore before and during shipbuilding + no protection throughout lifetime of vessel >No protection at all !

22 Rotterdam February 4, 2010 Far East countries have taken advantage of this! Europe did not respond!

23 Rotterdam February 4, 2010 Flaws in rationale of Article 5ter PC Reciprocity – only OK if all participate

24 Rotterdam February 4, 2010 Is it necessary to switch off protective power of a patent to ensure freedom of international transport?

25 Rotterdam February 4, 2010 Compare with green tax or environmental tax for airplanes Compare with pharmaceuticals and compulsory licences

26 Rotterdam February 4, 2010 Temporarily Is it not the nature of a ship to only be temporarily in territorial waters? Judicial review?

27 Rotterdam February 4, 2010 Key system If you ask a key to be cut for a lock, prove that you are entitled to open the door! Safety and Fair Competition in the Marine World

28 Rotterdam February 4, 2010 What is the current single key to market in marine world? Certificate You should sell us the cheapest option, good or not, as long as it comes with a certificate Certificate determines commercial success of your product!

29 Rotterdam February 4, 2010 Certification meeting minimum standards Transparent procedure? Public (competitor) can monitor procedure? First come - first served? Certificate challengeable by public (competitor)? Judicial review? Appeal? No.

30 Rotterdam February 4, 2010 Good news about certificate Allows proprietor of a patent to spot infringement! Certification process itself actionable? (Bolar provision) Possibly, under very specific conditions!

31 Rotterdam February 4, 2010 Role of Classification Societies: Documenting technology! For safety it needs to be accurate. This facilitates monitoring of equipment entering a port

32 Rotterdam February 4, 2010 Role of Port State Control : Charging for use of technology, for use of rights? Techno-tax?

33 Rotterdam February 4, 2010 Patents drafted in style of certificate

34 Rotterdam February 4, 2010 Modern Laws can take Modern Technology into account!

35 Rotterdam February 4, 2010 Cork money for not made in Europe ?!

36 Rotterdam February 4, 2010 So far, the best monitorable and best defined IP Right. Back to know-how What is going on?

37 Rotterdam February 4, 2010 Example: Act of State of Republic of Korea : In 2010, ships built in Korea will for more than 90% comprise of Korean produced products.

38 Rotterdam February 4, 2010 Can you please produce in Korea so we can buy from you?

39 Rotterdam February 4, 2010 Customs : Disclosure of composition or no entry into country!

40 Rotterdam February 4, 2010 Response is required!

41 Rotterdam February 4, 2010 Thank You for Your Attention

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