Can I build an IPRs database for free using Asana?

photo-1483058712412-4245e9b90334When you are an owner of intellectual property rights such as patents, trademarks, domains, designs, copyrights etc., it’s not enough only to protect them.

In order to maintain their protection and to take advantage of it you need to know all the time what you have and whether there is something you need to do for its protection and use.

The way to achieve this is to build your own database where to store the whole information about your intellectual property assets.

A database for intellectual property represents an organised way of storing information for all IP assets that one company or individual owns.

The database can include different sections depending on the type of the intellectual property. What is typical for it to have, in general, is an easy access to the relevant information and the necessary flexibility for better efficiency.

So how you can build such a database?

The easiest way, although the most expensive, is to buy a specialized software in the form of an intellectual property database which will allow you to store your information. There are many products in that regard but most of them can break the bank.

If you are a startup company, entrepreneur or just a freelancer who owns some intellectual property, such an option could be impossible.

Is there another solution?

Yes there is. You can build your own database using free services such as Google sheets, for instance. However, you can adapt some of the many productivity and project management apps turning them into a database too.

One example in that regard is Asana which can be used as an intellectual property database completely for free. What’s more, because it is a cloud based solution you will have access to your information from everywhere. In addition you will be able to take advantage of some of its options such as collaborating with your team, IP attorney etc.

If you want to learn how to build such a database you can check this new upcoming course from here. There will be free coupons for early birds.

Contracts and intellectual property – a decision by the European court

pexels-photo-169573The European court has ruled in case C‑666/18 IT Development SAS срещу Free Mobile SAS. The case concerns the following:

By a contract of 25 August 2010, amended by an addendum of 1 April 2012, IT Development granted a licence to and concluded a maintenance agreement with the company Free Mobile, a mobile phone operator offering mobile phone packages on the French market, for the ‘ClickOnSite’ software package, centralised project management software designed to enable Free Mobile to organise and monitor in real time the progress made by its teams and external technical service providers in deploying all its radiotelephone antennae.

By document of 18 June 2015, IT Development brought proceedings against Free Mobile before the tribunal de grande instance de Paris (Regional Court, Paris, France) for infringement of the copyright of the ClickOnSite software package and seeking compensation for its loss. IT Development alleged that Free Mobile had modified the software, in particular by creating new forms. In addition to the substantive nature, in IT Development’s opinion, of those modifications, it argued, in particular, that Free Mobile did not have the right to make such modifications because the provisions of Article 6 of the licence agreement, entitled ‘Scope of the licence’, stated, in essence, that the customer expressly undertakes not to reproduce, directly or indirectly, the software package, to decompile and/or carry out retro-engineering operations on it, as well as to modify, correct, adapt, create second works and add, directly or indirectly, to that software.

Free Mobile brought a counterclaim for abuse of process and argued that IT Development’s claims were inadmissible and unfounded.

By judgment of 6 January 2017, the Tribunal de grande instance de Paris (Regional Court, Paris) declared the claims brought by IT Development based on Free Mobile’s tortious liability inadmissible, dismissed Free Mobile’s claim for damages and interest for abuse of process and ordered IT Development to pay the costs. That court held that there are two separate sets of rules relating to liability in intellectual property matters, one being tortious liability in the event of infringement of the exploitation rights of the author of the software, as determined by law, the other being contractual liability in the event of infringement of a copyright reserved by contract, and that, in the present case, Free Mobile was clearly alleged to have failed to perform its contractual obligations, providing a basis for an action for contractual liability, and not for the tortious act of infringement of software copyright.

IT Development brought an appeal against that judgment before the cour d’appel de Paris (Court of Appeal, Paris, France), requesting the latter to refer a question to the Court of Justice for a preliminary ruling, to set aside the judgment at first instance and to declare the infringement proceedings which it had brought to be admissible. IT Development also seeks a declaration that the modifications to the software made by Free Mobile constitute copyright infringements, that Free Mobile be ordered to pay IT Development the sum of EUR 1 440 000 as compensation for the damage suffered and, in the alternative, that Free Mobile be ordered, on a contractual basis, to pay IT Development the sum of EUR 840 000 as compensation for that damage. It also requests, in any event, that Free Mobile and its subcontractor, Coraso, be prohibited from using the software and from extracting and reusing the data from it.

Free Mobile requests the cour d’appel de Paris (Court of Appeal, Paris) in particular, to uphold the provisions of the judgment at first instance, to order IT Development to pay it the sum of EUR 50 000 euros by way of damages and interest for abuse of process and to declare all IT Development’s claims inadmissible and in any event unfounded.

The referring court states that French civil liability law is based on the principle of non-cumulation, which means that, first, one person cannot hold another person liable in contract and tort for the same acts, and that, second, tortious liability is excluded in favour of contractual liability where those persons are bound by a valid contract and the damage suffered by one of them results from non-performance or improper performance of a contractual obligation. In addition, the referring court states that, under French law, copyright infringement, originally a criminal offence, is based on tortious liability but that, under that law, there is no provision under which such an infringement cannot exist where there is a contract binding the parties. In that respect, for example, infringement proceedings could be brought against a licensee who has infringed the limits of his contract in patent and trade mark matters.

However, the referring court points out that Article 2 of Directive 2004/48, which defines the scope of that directive, provides in general terms that the measures, procedures and remedies which it provides for are to apply to any infringement of intellectual property rights, without distinguishing between whether or not such infringement results from the non-performance of a contract.

In those circumstances, the cour d’appel de Paris (Court of Appeal, Paris) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a software licensee’s non-compliance with the terms of a software licence agreement (by expiry of a trial period, by exceeding the number of authorised users or some other limit, such as the number of processors which may be used to execute the software instructions, or by modifying the source code of the software where the licence reserves that right to the initial rightholder) constitute:

–   an infringement (for the purposes of Directive [2004/48]) of a right of the author of the software that is reserved by Article 4 of Directive [2009/24] on the legal protection of computer programs,

–  or may it comply with a separate system of legal rules, such as the system of rules on contractual liability under ordinary law?’

The Court’s decision:

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the breach of a clause in a licence agreement for a computer program relating to the intellectual property rights of the owner of the copyright of that program falls within the concept of ‘infringement of intellectual property rights’, within the meaning of Directive 2004/48, and that, therefore, that owner must be able to benefit from the guarantees provided for by that directive, regardless of the liability regime applicable under national law.

Marvel fights against BlackBerry because of ‘Jarvis’

iron-man-933709_960_720.jpgMarvel filed an opposition against a BlackBerry’s attempt to register a trademark for ‘Jarvis’ in class 42 in the US.

As it is well-known ‘Jarvis’ is a character, an AI software assistant to Toni Stark, another character from the “Iron Man” comics and movies.

Marvel is the owner of an earlier trademark ‘Jarvis’ registered in class 9:

Computer application software that may be downloaded via global computer networks and electronic communication networks for use in connection with mobile
computers, mobile phones, and tablet computers, namely, software for use as a
voice-controlled personal digital assistant.

According to the company, there is a significant chance for consumer confusion between both marks because of the reputation of its trademark which has been gained throughout the years in connection with Marvel movies and different merchandising activities such as Lego own movies, video games, etc.

This case is intriguing by its own. On one hand, we have a registered trademark for a name which is used as a character in comics and movies. On another hand, there is an attempt for registration of the same mark but for another class of real services. The question here is whether the use of a trademark as a character is enough in order to stop such following applications. Yes, merchandising use, especially for video games, is a point in the right direction but it is interesting to what extent a reputation connected to a fictional character for software can be useful to stop identical signs for real software in the real world.

Source: WIPR (Marvel hits out at BlackBerry over ‘Jarvis’ TM)

 

When AI can be protected by patents?

robot-1797548_960_720Darren Hau (Marks & Clerk) published an interesting article for Lexology which discusses the topic for patent protection of Artificial Intelligence (AI).

As it is well known, computer programs and mathematical methods are excluded from patent protection because it requires a technical solution of a technical problem.

The main question here is, however, when one software, including AI, meets these requirements, that is to say when it has a concrete technical effect.

The updated EPO “Guidelines for Examination”  gives some tips in that regard.

When it comes to AI inventions, the guidelines provide the following as examples of technical applications:

  • control of a specific technical system/process;
  • encryption/decryption or signing electronic communications;
  • audio/image/video enhancement or analysis;
  • speech recognition, e.g. mapping a speech input to a text output;
  • etc.

The natural conclusion from an in-depth analysis of these examples is that AI is protectable by patents in a case that it claims are restricted to specific technical purposes or such technical implementations.

The full article can be found here.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

What should we know about trademark oppositions?

pexels-photo-277124It is a widespread opinion that protection of a trademark requires its registration before the Country’s Patent Office. Even though this is true it is not the end of the story when it comes to trademark protection. Why?

The main reason for this is the fact that the legislation in most of the countries around the world doesn’t require from Patent Offices to stop every new trademark application even in a case that it is identical or similar to already registered one. This responsibility is given to the trademark owner who can file an opposition against such new marks if and only if he wants to do this.

But if the owner misses out on filling an opposition on time, the new mark will be registered and the following options for its cancellation could be more expensive and time-consuming.

So all in all every trademark holder has two main variants to support its already registered mark:

  1. To monitor the Patent Office’s trademark bulletins by himself – it has to be noted here that although everyone can assess identical marks for identical goods and services (a mark X for a good Y is a mark X for a good Y), the situation is much more complex when it comes to similarity, which requires in-depth knowledge regarding trademark legislation and case law.
  2. To subscribe for different software decisions which will alert him in case of new identical or similar marks and after that to discuss the results with a trademark attorney.

In any case, it is vital such monitoring to be carried out on a regular base and oppositions to be filed on time in order for the trademark protection to be maintained properly.