Sally Yoon is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Russian theatres are turning to pirated films to stay alive during these trying times - and it may not be working. , some theatres in Russia have resorted to screening pirated movies to offset the Hollywood sanctions while others are practicing more caution by renting out spaces to show the films to certain individuals, with or without a fee.

Following the Russian invasion of Ukraine, Hollywood has protested by putting a halt to the release of films in Russian theatres. , going one step beyond its initial commitment to pause all future projects and acquisitions in the country, thereby putting an indefinite stop to the development of four Russian originals. Shortly after , marking the general suspension of the US film and TV business in Moscow. The harsh sanctions have particularly been interesting because . In fact, to ensure that their films would be released in Nazi Germany, Hollywood used from the credits during the 1940s.

Russians are avid cinemagoers and are particularly hard-hit by the sanctions. , Russia had the highest number of admissions in Europe – 145.7 million in 2021. Moreover, Russia’s cinema market seemed to also be bouncing back since the start of COVID. According to data from the International Union of Cinemas (UNIC), represented in the table below, Russia was one of the major territories that performed strongly in its recovery in cinema admissions. compared to 2020. , Paul Heth, CEO of Russia’s cinema operator Karo Group, predicted that they would achieve the near $1 billion box office receipts that they saw in 2019, this year. However, the current situation with Ukraine has prevented box office receipts from approaching anywhere close to those figures.

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So far, there seems to be no consequences for these illegal showings. In March, Russia in an effect to mitigate sanctions imposed by Western nations, thereby legalizing piracy of several entertainment forms, including films. , the Russian government has announced that its companies will no longer be required to pay patent holders from countries that have sanctioned the country for the use of intellectual property, effectively legalizing piracy throughout the country.

But despite efforts to keep the industry alive, the results have not been encouraging – compared to the same time last year. Moreover, the Association of Theatre Owners has that “at least half the movie theatres in Russia would go out of business in the next two months”. Russia is encountering further issues with screening costs, , there has been a sharp increase of about 80% in the cost of lamps and components for projectors, with an estimated 50% of the Russian cinema screens already dark because of the lack of films and equipment. For now, pirated films continue to keep the theatres dimly lit, but it might not be too long before the Russian cinema industry faces a total blackout.

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Tugce Kucukali is an IPilogue Writer and incoming LL.M. Candidate at University of British Columbia.

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requires genuine use of a trademark to maintain registration. Lack of use may cancel a trademark’s registration; as well, any oppositions based on a trademark without genuine use may not withstand a non-usage defense.������������������������������������������������

Trademark owners have a grace period of five years to abstain from this obligation. Refilling a trademark is a method for extending this period. Thus, the repeated registration of a trademark can help an owner to circumvent their obligation to prove genuine use.

Hasbro v EUIPO

In , the well-known toy brand Hasbro tried to register the “Monopoly” word mark. In 1998, the “Monopoly” mark was registered for computer, software, electrical, and scientific products (class 9), clothing and apparel products (class 25), and toys and sporting goods products (class 28). By applications made in 2008 and 2010, trademark protection was granted respectively for the education and entertainment services (class 41) and paper and printed material products (class 16). In 2010, a trademark application covering goods and services in classes 9, 16, 28 and 41 was made and subsequently registered in 2011.

Hasbro relied on their trademark to oppose the “Drinkopoly” word mark. As a defense, the owner of the Drinkopoly mark, Kreativni Događaji, claimed that the 2010 Monopoly registration was filed in bad faith and must be invalidated. In 2015, Događaji’s invalidation claim was brought before While the Cancellation Division of the EUIPO rejected the request, the Appeal Board in 2019 held that Hasbro’s trademark application was partially filed in bad faith, particularly for the goods and services that are within the scope of the previous registrations. In April 2021, ) the Appeal Board’s decision.

The that since Hasbro repeated the registration to avoid having to prove usage, the registration is deemed as in bad faith. Bad faith was detected by a Hasbro executive’s statements at the hearings before the Appeal Board. They indicated that the refilling of a trademark is also beneficial to avoid several administrative burdens. Even though Hasbro claimed that it prefers to degrade its trademarks to one, the Court disagreed with this argument since none of the previous trademarks were withdrawn.

Of significance, the Court also pointed out that Hasbro’s applications are atypical. However, the Court emphasized that even though the present case does not conform with the common pattern, Hasbro’s applications are intended to extend the grace period of five years in an artificial and fraudulent way.

It should be noted that bad faith was accepted only for the goods and services that were already covered within the scope of the previous registrations. Bad faith is not precisely defined in European trademark law and its examination must be conducted on a case-by-case basis. Such cases where bad faith is partially accepted are exceptional.

Refilling the same trademark is not legally prohibited and this practice does not constitute bad faith per se. The precedents of the General Court and the EUIPO have accepted various objectives for refilling. For instance, , the Court considered the applications to modernize the logos. , the owner applied to expand the goods and services covered by the trademark. Perhaps if the font or the goods and services list of the “Monopoly” mark changed, the EUIPO and the CJEU would have reached a different conclusion.

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Photo Credit: Prof Pina D'Agostino

Prof Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. She is also very proud of her new book!

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I am excited to share that I just published a collection on Artificial Intelligence (AI) and the law, Leading Legal Disruption: Artificial Intelligence and a Toolkit for Lawyers and the Law (Thomson Reuters 2021). Co-edited with Dr. Aviv Gaon and Carole Piovesan, the book provides a provocative analysis on the emerging terrain of AI and how it interrogates various areas of the law. The book, that features a foreword from the Hon. Marshall Rothstein (formerly of the Supreme Court of Canada), is an international collaboration of thought leaders in AI, with contributors from Canada, the USA, Europe and Israel. Issues discussed include intellectual property, privacy, contract law, regulation, governance, ethics, business and more. Importantly, such issues merit a toolkit of practical and international perspectives as they are increasingly complex and ajurisdictional. ����

In many ways this book is also a reflection of Osgoode’s strengths in AI. My co-editors, Dr. Aviv Gaon, Director at IDC Herzliya of Experiential Programs, is a PhD graduate (class of 2019) publishing several other books on AI and emerging technology, and Carole Piovesan (class of 2009) has co-founded her own firm, INQ Law. ��I am myself an LL. B graduate from Osgoode (class of 1999), eventually returned as faculty to found and run IP Osgoode and I am currently co-chairing the 91��ɫ AI & Society Task Force, among many other initiatives in this space.

I am particularly thankful to the Osgoode JD students who provided helpful research assistance: Elif Babaoglu, Daniel Joseph, Joseph Simile, Rachel Marcus, Christopher Tsuji, and Julianna Felendzer.

I am most grateful for the enthusiastic endorsements by Prof David Vaver (Professor of Intellectual Property Law, Osgoode; Emeritus Professor of Intellectual Property & Information Technology Law, University of Oxford), Prof Jane Ginsburg (Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law), Justice Michael Manson (Federal Court of Canada), and Dan Bereskin (Partner, Bereskin & Parr LLP) all which can be read on the back cover.

They say you can’t judge a book by its cover, but I particularly like this one, inspired by an AI and suggestive of our youth, our future ultimately grappling with AI and other emerging technology, that will iterate in every generation.

I look forward to hearing from you on your thoughts on the book (and the cover!). You may order your copy��here.

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In its appeal, ������ٱ�é sought to use the recognisability of its product to show that it had acquired a distinctive character. On appeal the case was referred by the UK Court to the Court of Justice of the European Union to decide three separate issues:

1. whether the trademark had acquired distinctive character following the use that had been made out of it;
2. whether the three essential features of the KitKat—one which derives from the nature of the goods themselves and two which are necessary to obtain a technical result—are precluded from registration by UK and EU law; and,
3. whether the should be interpreted as precluding the registration of shapes that are necessary to obtain a technical result.

The distinctive character of the KitKat bar could not be confirmed��merely because of its recognisability. The definition of a trademark in the EU is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. Additionally, the registration of a trademark cannot be rejected if “before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character”. The Trade Marks Act in the UK contains an almost identical provision. To satisfy these requirements ������ٱ�é relied on a survey in which over 90% of those surveyed identified the four-finger shape as a KitKat. The premise was that KitKat had acquired a distinctive character through its use over time. This strategy failed.

The shape of a KitKat can be reduced to three features: the rectangular slab shape, the grooves between the four fingers, and the number of grooves. The first feature was given little consideration by the Court because most chocolate bars are rectangular slabs. Both the second and third features were assessed as existing in order to obtain a technical result - separating the four rectangular slabs - and so were considered as a means to an end and not the end itself.

������ٱ�é’s strategy was peripheral rather than direct. The strategy of using the recognisability of the bar using survey evidence failed to address the problems that the court identified. ������ٱ�é failed to show that members of the public could separate the shape of the bar from the logo embossed onto it or the packaging associated with it.

Following the decision in��������ٱ�é, businesses should consider whether their products have features that result from the nature of their goods or are necessary to obtaining a technical result. Failing to successfully register a trademark can be costly. Competitors and other interested parties often bring challenges to these sorts of applications. From a policy perspective, the ruling is intended to prevent the monopolization of the features related to a shape.

The decision is not entirely dissatisfying for ������ٱ�é, who was concerned that the CJEU might confirm an written by the Advocate General of the UK High Court. In that opinion Advocate General Wathelet denied the trademark to ������ٱ�é and—further than the CJEU—required the shape of the proposed trademark to be distinguished from goods with different commercial origins.

The CJEU did agree, however, that the trademark for which the application was brought was “capable of fulfilling the function of identifying the origin of the goods by itself”. In other words, the CJEU took the 10% of respondents who saw the four-fingered shape as something other than a KitKat as a very significant group. For a 3-D product, however, the recognisability of the proposed trademark is not enough for the product to acquire a distinctive character.��In January of 2016, the case was heard in the UK High Court of Justice, Chancery Division. After an exhaustive review of the CJEU decision��as well as British case law,��������ٱ�é's application��was .

In 2014, Canadian Parliament passed which made significant amendments to our Trade-marks Act [the Act]. In particular was an amendment to Section 32 of the Act. The amendment, expected to come into force sometime in 2016,��allows a 3-D trademark to be registered where that trademark is distinctive at the filing date of the application.��The ������ٱ�é��decision will likely be persuasive in Canadian jurisprudence given the similarity between the UK and Canadian provisions.

Quin Gilbert-Walters is an IPilogue Editor and a JD Candiate at Osgoode Hall Law School. He also works as a Research Assistant at the Canadian Forum on Civil Justice.

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Cybercrime is a growing global problem that no company or country can tackle alone. At any given time, an estimated 150��000 viruses and other types of malicious code are circulating across the internet, infecting more than a million people every day.

Anti-virus software developer McAfee counts 75 million unique pieces of malicious malware code on its databases, with botnets spewing out spam that account for a third of all the emails sent every day. Bots are one of the most sophisticated and popular types of cybercrime today. They allow hackers to take control of many computers at a time, and turn them into “zombie” computers, which operate as part of a powerful “botnet” to spread viruses, generate spam, and commit other types of online crime and fraud. The worldwide cost of cybercrime is estimated at over €750 billion annually in wasted time, lost business opportunities and the expense of fixing problems.

In addition to developing wider cybersecurity strategies for Europe, the European Commission takes concrete actions to tackle cyber security risks, and pools resources with national governments, industry, universities and NGOs, to develop innovative technologies to improve cybersecurity.

For the period 2007-2013, the European Commission has spent about €350 million in cyber security research; from 2013 to 2020, €400 million is earmarked to support key enabling & industrial technologies such as cyber security, privacy and trust technologies, and an additional €450 million is earmarked for ‘Secure Societies’ research which includes aspects of cybersecurity.

The following EU-funded projects address the big issues facing cybersecurity: cost, speed and long-term security; helping to keep computer users one step ahead of the hackers, Trojans and viruses plaguing the online world today.��to read more.

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Cloud computing represents an innovative use of information and communication technologies which has drastically modified the way in which computing resources are used and deployed over the Internet.

INTRODUCTION

Cloud computing represents an innovative use of information and communication technologies which has drastically modified the way in which computing resources are used and deployed over the Internet. Hardware and software resources are delivered on demand through the Internet, eliminating the need for users to purchase expensive computers and/or software applications. Similarly, data need no longer be stored on users’ devices; they can be exported in large data-centres where they can be easily processed by Cloud operators. Consequently, the decentralized structure of the Internet (built on the ‘end-to-end’ principle) is slowly being supplanted by increasingly large and centralized infrastructures (designed around the concept of ‘mainframes’).

The first section of this paper will analyse how this shift may affect the fundamental rights of users, mainly with regard to the right of privacy and freedom of expression. Indeed, given that they control most of the data passing through their platforms, Cloud providers have the ability to infringe users’ rights – e.g. by collecting and/or processing personal data without authorisation, or arbitrarily censoring certain types of communication.

Theoretically, it could be assumed that, in a competitive market, market players will eventually be forced to adapt to users demands and expectations in order not to lose market share. Yet, the Cloud market is an oligopolistic market dominated by a few large corporations concerned with the maximization of their own profits. The second section of this paper will examine the behaviour of these market players, and how they contribute to increasing or preserving their market share both by locking users into their systems and by claiming priority access to the network – without paying particular concern to the fact that their activities might impinge upon users’ privacy and freedom of expression.

Finally, the last section will address the potential solution that may be endorsed in order to preserve the fundamental rights of users, without constraining innovation. After addressing the distinction between ex-ante regulation (e.g. through the definition of net neutrality rules) and ex-post regulation (e.g. by means of competition law, consumer protection law, etc.), the paper will assess their corresponding benefits and drawbacks so as to determine whether either of them, or a combination of the two, could successfully preserve users’ right without excessively limiting the operations of Cloud providers. Finally, the paper will explore the viability of alternative forms of regulation based on self-regulation and technical regulation by end-users. Indeed, users are becoming increasingly aware of the risks derived from Cloud computing, and are developing specific technologies and software applications in order to counteract the negative effects that certain Cloud services might have on their fundamental rights. Rules are, consequently, no longer dictated by Cloud operators in a top-down fashion; they are, instead, established by the users themselves through a bottom-up approach.

Luca Belli is a PhD candidate in Public Law at PRES Sorbonne University / Université Panthéon-Assas / CERSA; ISOC returning Ambassador to the United Nations Internet Governance Forum and member of the Steering Committee of ��.

Primavera De Filippi is a researcher at the CERSA / CNRS / Université Paris II; representative of CreativeCommons France and coordinator of the Public Domain working group at the Open Knowledge Foundation.

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Looking at the current state of trans-border licensing of music inEurope, the European example can teach mainly what to avoid. Even more so, many of the issues discussed in the EU might even be totally irrelevant for Canada. Unlike Canada, the EU currently consists of 27 member states, and as of today, there is no unified EU copyright code.

As a starting point, it has to be stated, that since the beginning of the new millennium no workable mechanism has been achieved for the music sector to provide easy, centralised Pan-European access to the full scope of licenses needed for on-demand offers of music. Investigating this issue a bit closer, it becomes evident however, that the problems are limited almost entirely to the licensing of copyrights for works of musical authors, namely the rights of composers and lyricists. In contrast, the EU-wide licensing of the rights vested in producers of sound recordings and in performing artists functions relatively smoothly without any fundamental problems arising.

In the “” and “” authors’ societies, organised in CISAC, chose a type of reciprocal representation agreement containing a restriction whereby only the society at which the user was located should be responsible (and qualified) for licensing. This restrictive policy lead to antitrust investigations with the Directorate General (DG) Competition at the EU Commission and an administrative ruling against CISAC and the member companies concerned. This matter () is currently subject of a lawsuit before of the ECJ, effectively resulting in a breakdown of the system of reciprocal representation concerning online rights of musical authors.

Subsequently, encouraged by an official yet non-binding recommendation by the EU Commission (DG Markt) () which was intended to facilitate and speed up pan-European licensing of rights, most of the big music publishing companies have withdrawn the mechanical rights concerning the US repertoire from the network of European collecting societies, in order to administer these rights by themselves.

This fact has shown to have serious consequences – and not at all the ones intended by the EU Commission: While withdrawing US-repertoire from collective licensing, all other parts of the overall repertoire of music remained within the collecting societies. The same applied to the “making available” right. If an online service like iTunes is interested in licensing a sound recording of a US author, he not only requires a license of the record company but needs to establish licensing relations with collecting societies of musical authors, too, and, last but not least, with the respective music publishers insofar as their rights are not represented by those societies. In effect, not two, but three different types of contracts are required for using a single song in an online service (while not a single such contract was needed for a traditional retailer to re-sell CDs) – theoretically to be concluded on a country by country basis.

These problems are basically home made by the music publishing industry and should not be used as an argument against the viability of the EU Copyright System as it stands.

Dr. Jur. Martin Schaefer began his career as assistant to his mentor, Prof. Dr. Wilhelm Nordemann. From the beginning of the 1990s, Dr. Schaefer was employed by the German national group of the recording industry association, IFPI (Bundesverband der Phonographischen Wirtschaft und Deutsche Landesgruppe der IFPI). As in‐house counsel, and from 1998 as Managing Director, Dr. Schaefer was responsible for such areas as combating piracy, representing industry interests in the making of government copyright policy, and the development of future oriented industry projects. In 2001, he moved to BMG (Bertelsmann Music Group) as Vice President, Legal Counsel Europe. In this position, he was integrated into the European management team before leaving the company at the beginning of 2004 in order to apply his knowledge and experience as lawyer. He has specialized in copyright law with an emphasis on music industry matters, collective and individual administration of rights and electronic media law.

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On October 27, 2011 the European Commission adopted a recommendation calling for the nations of the EU to pool their resources and renew their commitment to the digitisation of European cultural texts and artifacts. These cultural materials are stored in Europe’s digital library, .

As , Europeana represents Europe’s homegrown response to competition from Google Books. Started in 2008 with only 2 million items, Europeana’s collection has since grown to over 19 million objects. These objects include digitised books, photographs, paintings, manuscripts, maps, newspapers, archival documents, audio and film. As Google’s resource digitisation project gained traction in the United States in 2008 and 2009, the EU launched Europeana as a publicly funded alternative that allowed them to sidestep the perils they perceived to exist in Google’s project. The European Commission worried about reliance on a corporate actor for the preservation and reproduction of their culture and history.

As outlined in both the and by the European Commission announcing the adoption of Recommendation 2011/711/EU, EU member states have been challenged to grow the collection to 30 million items by 2015. In order to achieve this goal, the Commission suggests that states seek innovative solutions and adopt programs that engage the private sector. As outlined in the , the Commission is hoping “to get more in-copyright and out-of-commerce material online and to adapt national legislation and strategies to ensure the long term preservation of digital materials”.

Over the last few years, the Commission has been pushing Europeana as a one-stop shop for the digital preservation of Europe’s shared history and culture. This recommendation is simply another representation of the Commission’s commitment to coming up with a pan-European solution which allows the citizens of Europe greater access to culturally significant items from the comfort of their own homes. As stated by the Commission on previous occasions and affirmed in the press release accompanying Recommendation 2011/711/EU, the hope is that Europeana’s content will spur development of educational content, documentaries, and tourism related applications. The Commission states that the digitisation project “will give enormous economic opportunities to Europe’s creative industries, which currently account for 3.3% of the EU’s GDP and 3% of jobs in the EU.”

Europeana and the digitisation activities associated with it are one of the “digital service infrastructures” earmarked for funding under the and the project plays an integral role in the European Commission’s . Europeana has also just launched two innovative projects. The first, entitled “,” is a project that allows citizens to submit their own stories and memorabilia from World War I. So far, Europeana has collected and digitised more than 25,000 items as part of this project.

The second project Europeana recently undertook was the “”. As part of this project, 85 developers were given access to Europeana’s content in order to produce innovative prototype applications for mobile or gaming devices. With the adoption of this recommendation, Europe has once again affirmed its position that the digitisation of culturally significant objects and in-copyright and out-of-commerce represents an important undertaking that requires support from all of Europe’s Member States.

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On September 22, 2011, the European Court of Justice handed down on a series of trade mark related questions spurred by the long running dispute between international flower delivery network Interflora and English retailer Marks and Spencer. The case stemmed from a complaint raised by Interflora that Marks and Spencer used Google’s “AdWords” service to create internet advertisements targeting keywords such as ‘Interflora’, ‘Interflora Flowers’, and ‘Interflora.com’.

This use of Interflora related keywords by Marks and Spencer meant that when users visited sites where the name Interflora appeared, ads for Marks and Spencer’s own flower delivery services would be displayed. Interflora Inc. owns a trade mark on the word ‘Interflora’, and as a result, brought an action against Marks and Spencer alleging that their use of words identical to Interflora’s trade mark is unlawful.

The High Court of Justice (England and Wales), Chancery Division, which heard Interflora’s case for trade mark infringement referred questions to the Court of Justice on a series of issues related to the use of keywords identical to a trade mark, without the consent of the trade mark proprietor, by a competitor within an internet referencing service. It is important to note that the European Court of Justice’s decision does not decide the case between Interflora and Marks and Spencer, it simply clarifies the law for the High Courts of each of Europe’s member states.

As outlined in a by the court, because the use of a keyword can only be prevented by a trade mark owner if it is liable to have an adverse effect on one of the functions of that mark, each of the functions of a trade mark were examined and outlined in the course of considering the case. These functions included the origin-indicating function, the advertising function, and for the first time, the investment function of a trade mark.

In dealing with the origin-indicating function of a trade mark, the court followed its decision in Google France (). The Google France case was previously covered by the IPilogue here. In Google France, the court observed that the test to determine whether a trade mark has been infringed should consist of an evaluation of whether a reasonably well informed and observant internet user is able, based on general market knowledge, to determine whether the goods or services referred to by an advertisement originate from the proprietor of the trade mark. Applied to the Interflora v Marks and Spencer case, this element of the trade mark evaluation becomes a question of fact for the lower courts related to whether Marks and Spencer’s advertisement enabled an internet user to recognize whether or not Marks and Spencer is a member of the Interflora network.

Considering the advertising function of a trade mark, the court ruled that a rise in the cost-per-click of advertising online due to a competitor’s use of a trade mark keyword was not sufficient in every case to conclude that the advertising function of a company’s trade mark had been adversely affected. The court also commented that there is nothing wrong with a company using an internet advertising service to create competition by offering alternatives to a particular product of service; however, the trade mark owner must not be prevented from using their mark to attract customers.

The European Court of Justice recognized the investment function of a trade mark for the first time in this judgement. The court ruled that the investment function of a trade mark is adversely affected when use of the mark by a competitor substantially interferes with the owner’s ability to create or preserve a reputation capable of attracting customers and retaining loyalty with the trade mark. This consideration of the investment function of a trade mark was followed by a clarification of the scope of “dilution” (detracting from the distinctive character of a trade mark) and “free-riding” (taking unfair advantage of the distinctive character of a trade mark). The court ruled that choosing to duplicate a trade mark without due cause when selecting keywords for internet advertising may be construed as “free-riding”; however, the court made clear that this was intended to deal with cases where internet advertisers were selling replica and imitation goods by using the trade mark as a keyword to attract potential customers.

Ultimately, the European Court of Justice ruled that the decision in this case would come down to a finding of fact by lower courts as to whether or not Marks and Spencer adversely affected one of Interflora’s trade mark’s functions. However, as re-iterated in the court’s , “Where [an] advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward an alternative to the goods or services of the proprietor of the trade mark with a reputation – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution of the trade mark or detriment to its repute, and without adversely affecting the functions of the trade mark – such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned.”

It will be interesting to see how the High Court in the UK decides the case of Interflora v Marks and Spencer based on this ruling.

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On May 12, 2010 the Enlarged Board of Appeal of the European Patent Office (EPO) responded to several questions posed by the President of the EPO, Ms , regarding the patentability of computer programs in Europe.�� The resounding answer to these questions, provided by the Enlarged Board of Appeal, was that they are inadmissible and that the status quo should prevail.��

In constructing , the Enlarged Board of Appeal cited that the purpose of the European Patent Convention (EPC) is to establish uniformity of law within the EU patent system.�� The only way the Enlarged Board of Appeal can partake in the development of law is in instances of conflict between existing precedents, whereby the board may break with existing practise and point the development of law in a new direction.�� The President’s questions posed to the Enlarged Board of Appeal did not address conflicting decisions in the patent system, and were thus inadmissible.

While the Enlarged Board of Appeal did not deviate from current case precedents in Europe, it did clarify and provide guidance regarding the interpretation of leading cases in the European patent system.�� ��Under the EPC, computer programs are listed among the categories that are not patentable subject matter.�� However, while patents explicitly claimed as computer programs are not patentable, programs that are part of a computer, network or other programmable apparatus’s scheme are not excluded and may be patentable as a .��

The Enlarged Board of Appeal clarified that according to the (Microsoft) decision a program on a computer-readable medium is not excluded from patentability.�� So long as either the computer-readable medium or the program it contains has a technical effect, it will not be excluded from patentability.�� The final question, before granting a patent then, is to consider whether the computer program or computer-readable storage medium which contains it, has an inventive step.���� ��

While a computer program on a computer-readable medium is not excluded from patentability, the Enlarged Board of Appeal did state that simple patent claims for a program on a computer-readable storage medium or method of operating a computer will still fail to be patentable for lack of an inventive step. ����To be patented, the programmer must construct a program/procedure which a machine cannot only carry out, but must make a non-obvious technical contribution, or solve a technical problem.

This decision by the Enlarged Board of Appeal likely disappointed many who hoped for a change to exclude the patentability of all computer programs in Europe.�� Many consider software patents to be broad and trivial by nature, and that these patents harm the economy by stifling innovation and growth.�� Because the work of a programmer is already protected by copyright, detractors of the software patent system argue that patents in this area are often used to restrict the interests of software producers in favour of patent producers.�� Alternatively, proponents of software patentability cite that these patents will promote economic growth by encouraging investment in research and development, and increase the valuation of small companies who can protect their market-share using patents to challenge larger companies and thus increase competition.��

Europe’s software patent policy currently has settled on a restrained approach to granting software patents, where computer programs must have a technical characteristic as part of a larger computer or network scheme.���� While proponents and detractors of software patents had hoped the Enlarged Board of Appeal would reform Europe’s patent system, clinging to the status quo has done little to satisfy European software developers’ appetite for change.���� All eyes are now on the US Supreme Court and their upcoming decision in to provide guidance for the development of software patent law in North America, Europe and around the world.

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