STOCKHOLM INTELLECTUAL PROPERTY LAW REVIEW
Victor Mütter, Anna Buss, Julia Zwiech & Anna Hofmann
Stockholm IP Law Review
Editorial
The first issue of the Stockholm IP Law Review for 2024 arrives amidst significant developments affecting intellectual property rights at both the EU and international levels. One notable advancement is the implementation of the AI Act, which takes effect on August 1, 2024. Proposed by the Commission in April 2021 and ratified by the European Parliament and the Council in December 2023, the AI Act aims to address potential risks posed to citizens’ health, safety, and fundamental rights. It sets forth clear expectations and obligations for developers and users of AI, while also aiming to alleviate the administrative and financial burdens on businesses. The AI Act establishes a cohesive framework across all EU member states, utilizing a proactive definition of AI and a risk-based methodology. While the main text of the law does not touch specifically upon copyright issues, it does repeatedly make specific mention to the topic in the text’s recitals (from 105 to 109) including:
• Recital 105 of the AI Act which reminds of the relevance of the data mining exceptions to copyright introduced by the Directive (EU) 2019/790.
• Recital 107 which stipulates that providers of AI generative models will be required to provide a detailed summary of the content used for the training, in a comprehensive way that will allow copyright or parties with legitimate interests to exercise and enforce their rights under EU law.
In another milestone, WIPO member states have ratified a pioneering Treaty focused on intellectual property (IP), genetic resources, and associated traditional knowledge, marking a historic achievement that culminated decades of negotiations. This Treaty stands as the first to explore the relationship between IP, genetic resources, and traditional knowledge, and it notably includes provisions aimed directly at protecting Indigenous Peoples and local communities.
Once 15 countries have ratified the Treaty, it will introduce a new international law requirement mandating patent applicants to disclose if their inventions are based on genetic resources or traditional knowledge. A signing ceremony is set to take place later today. Negotiations on this Treaty began in WIPO in 2001, following a proposal from Colombia in 1999 that emphasized the participation of Indigenous communities. Simultaneously, the legislative process continues regarding the Commission’s proposal unveiled on April 23, 2024, which seeks to amend and replace existing pharmaceutical legislation (Regulation 726/2004 and Directive 2001/83/EC) as well as legislation concerning medications for children and rare diseases (Regulation 1901/2006 and Regulation 141/2000/EC). The proposal aims to achieve several key objectives:
• Ensure all EU patients receive timely and fair access to safe, effective, and affordable medications.
• Strengthen the security of supply, ensuring medicines are accessible to all patients within the EU.
• Maintain a conducive and innovative climate for pharmaceutical research, development, and production within Europe.
• Promote the environmental sustainability of medicines.
• Tackle antimicrobial resistance (AMR) and pharmaceutical contamination in the environment by adopting a One Health perspective.
Together, these three concurrent developments are pivotal to the ongoing transformation of the contemporary intellectual property rights system while also significantly impacting societal goals, including the ethical use of AI, equitable access to medicines, and acknowledgment of Indigenous communities’ contributions to technological progress. This issue of the Stockholm IP Law Review is representative of the exciting developments in the field of IP.
It is an honor to be able to publish the SIPLR interview with Dr. Martin Müller, the chairman of Technical Board of Appeal 3.5.06, one of the boards dealing with computing technology and artificial intelligence, and Member of the Enlarged Board of Appeal. In this very engaging
interview Dr Müller contributes with valuable input on AI’s impact in the patent world, as well as a career in the patent system. Victor Mütter’s article “The Protection of Translations under European Copyright Law”, explores how the general requirements for copyright protection developed by the Court of Justice of the European Union apply to translations. This is an interesting and unexplored subject. In her article, “Reading between the lines: a glance on how the notion of bad faith is interpreted and applied in the European Union with regards to EU trade marks”, Julia Zwiech analyzes the currently applied subjective/ objective approach towards the finding of ‘bad faith’ and puts forward a suggestion that could lead to an increased clarity and objectivity with this regard.
Anna Buss has in her article, “The Challenge of Balancing Artistic Autonomy and AI Training – Evaluating the Effectiveness of the Opt-Out Mechanism under Art 4(3) DSM Directive for Artist Protection“, engaged in the debate concerning Article 4 of the DSM Directive and its
practical use as a commercial exception for text and data mining. In her article with the title, “The Requirements of Art. 3(a) and (c) SPC Regulation and Post-grant Amended Patents”, Anna Hofmann investigates how procedural and substantive requirements for a patent amendment influence
the interpretation and application of articles 3(a) and 3(c) of the SPC Regulation.
We hope you enjoy reading this issue!
Frantzeska Papadopoulou Skarp,
Chair of the Board SIPLR
Content Editor in chief
The Challenge of Balancing Artistic Autonomy and AI Training
By Anna Buss
ABSTRACT
The introduction of Article 4 of the DSM Directive was intended to create a commercial exception for text and data mining. The intention behind the article was to foster innovation and to create a legal framework to accommodate this. However, the article is not very well drafted, particularly in relation to the rise of generative AI and the training of AI systems. The article contains a reservation of use clause that allows authorsauthors to opt-out of the use of their works for text and data
mining. The absence of an EU standard of opt-out declaration creates certain complications. The AI Act initially seemed to constitute a promising solution, but the opportunity to eliminate legal uncertainties was not utilised. Instead, there is a high chance of blocking future technological innovations.
The Requirements of Art. 3(a) and (c) SPC Regulation and Post-grant Amended
Patents
By Anna Hofmann
ABSTRACT
SPCs are linked to a basic patent and presuppose the existence of such a patent. The requirements for the grant of an SPC in Art. 3(a) and (c) SPC Regulation depend on the basic patent and its content. However, patents can be amended, even after they have been granted. It is conceivable that a patent amendment could influence the assessment of these requirements and thus the granting or validity of an SPC. This issue is the subject of this contribution. It is approached by first analysing the requirements for the grant of an SPC in Art. 3(a) and (c) SPC Regulation, in particular their interpretation by the CJEU, as well as the procedural and substantive requirements for a patent amendment. Based on this, the interaction between these two areas of law is examined,
recognising that there are similarities. Different potential scenarios are discussed with the result that the requirements for the grant of an SPC in Art. 3(a) and (c) SPC Regulation, in their current interpretation by the CJEU, are suitable to withstand a patent amendment and cannot be circumvented by such an amendment.
The impact of AI in the patent world: An interview with Martin Müller, Chairman of a Technical Board of Appeal at the EPO
WHICH IS YOUR POSITION AT THE EPO?
WHAT IS IT THAT YOU ARE WORKING WITH?
– I work as a chairman of a Technical Board of Appeal.
The Technical Boards of Appeal at the EPO, of which
there are about 25, deal with appeals against decisions of
the Examining Divisions and the Opposition Divisions of
the EPO. The individual boards are responsible for different
technical fields, in such a way that the members with a
technical background are allocated to boards within their
technical competence. My board, board 3.5.06, deals with
matters of computer science, in particular computer systems,
operating systems, computer security, image-based
pattern recognition, and what is sometimes called “core
artificial intelligence”. The latter includes generic methods
used in artificial intelligence contexts, including
neural networks, genetic programming and knowledge
representation.
The Protection of Translations under
European Copyright Law
By Victor Mütter
ABSTRACT
Translations may be placed somewhere on a spectrum between an independent work and a copy of an existing work. A translation will always be dependent on an already existing text and the aim of the translation will be to convey the meaning of this text in a new language. From a copyright perspective this raises several issues, including the question of when a translation will be considered protectable as an original work in its own right. This article explores this issue from a European perspective, and provides a comprehensive assessment of how the general requirements for copyright protection developed by the Court of Justice of the European Union apply to translations. In addition, it explores how different national courts in Europe have assessed the question of copyright protection for translations. The article concludes that in many instances translators are able to make the necessary free and creative choices to be granted copyright
protection, albeit this is dependent on the specific translation at hand.
Reading Between the Lines: A Study on How the Notion of Bad Faith is Interpreted
and Applied in the European Union with Regards to European Union Trade Marks
By Julia Zwiech
ABSTRACT
‘Bad faith’ in the European Union trade mark law constitutes an absolute ground for invalidation, while in certain EU Member States it can additionally be treated as a refusal consideration.
Therefore, as a notion with severe repercussions for EU trade marks, it deserves a profound scrutiny. This article explores two main themes. Firstly, the paper discusses the openness of
the concept of ‘bad faith’ and its impact on the overall legal certainty. The author analyzes the currently applied subjective/ objective approach towards the finding of ‘bad faith’ and puts forward a suggestion that could lead to an increased clarity and objectivity with this regard. The key idea
proposed concerns the introduction of a normative model while assessing ‘bad faith’. Secondly, a more procedural angle is undertaken and presents the reader with a substantial non-homogeneity with regards to the practical application of the concept. The notion, under the EU Trade Mark Regulation, is currently used merely as a ground for invalidation, which entails that a trade mark must first be registered in order to be assessed in the light of ‘bad faith’. Meanwhile, the EU Trade
Mark Directive provides for the notion being applied not only as a ground for invalidation, but also refusal which means that national offices may apply ‘bad faith’ ex officio already during the process of trade mark application. The author provides perspectives on why aligning EUTMR with EUTMD might be of importance for clarity and consistency in EU trade mark law.