IPO: Sean Dennehey for Comptroller

Tucked away on the IPO website is a short announcement that Ian Fletcher has left the Patent Office to take up an appointment as CEO of the Department of Employment, Economic Development & Innovation for the Government of Queensland and that "Sean Dennehey has been appointed Interim Chief Executive and Comptroller-General pending the appointment of a substantive replacement for Ian Fletcher."

First things first. I've never met Mr. Fletcher but I congratulate him on his appointment and wish him every success in his new job. I hope he watches out for the sharks (including those on two legs) and doesn't get too sun burnt.

Now to the nitty gritty. "Why" asks patent agent and solicitor Barbara Cookson on twitter"is Sean's appointment only interim?" And I agree with her. I have met Sean and heard him speak several times and can think of nobody BUT NOBODY who would be better qualified to do the job full time.

The contexts in which our paths have crossed include

• A presentation to the IP Bar on proposals for a European patent court which industry and particularly SME in this country sorely need. Sean has done a lot of work on that.
• Software and business method patents: Sean is aware that services are important to modern developed economies such as our own but in contrast to manufacturing IP law affords very limited and patchy protection for innovation in services (probably because IP law developed in the 19th century when manufacturing was king) and
• Various events for SME and private inventors in the North and indeed the rest of the country: Sean knows that small business is the motor of any economy and its entrepreneurs need help that they are not yet getting.

He also won my respect and that of the rest of the IP Bar as a very good hearing officer.

I have to add that IP is international and Sean is highly regarded overseas. Last month, for instance, I attended the WIPO domain name conference in Geneva and as always WIPO officials spoke very highly of him and asked me to pass on their regards on my next meeting.

So I am starting a campaign for Denehey for Comptroller in this blog, in my other blogs, on twitter, at a seminar at Barnsley tonight, through representations to my MP, through my inventors' clubs, through chambers of commerce, through Business Link talks and wherever else I get the chance to promote this cause. Not for Sean but for intellectual property, for the IP Bar, for SME, for industry and ultimately for Britain.

If you want Sean as your comptroller please do the same. If you are on twitter please use the #sean4comptroller hashtag.

The Supreme Court - a Missed Opportunity

Some years ago I was a member of a working party of the Lib-Dem Lawyers Association that was tasked with commenting on the government's proposals for constitutional reform. One of those proposals was a new Supreme Court for the United Kingdom in place of the House of Lords. The others were abolition of Queen's Counsel and reform of the procedure for recruiting judges. It was quite a high powered committee so far as I can remember. We were chaired by Lord Goodhart QC and our number included Professor Jowell and Jonathan Marks QC.

To my mind all the proposals seemed very modest if not bordering on the irrelevant. The proposal to set up a Supreme Court with essentially the same powers and discharging the same functions as the House of Lords seemed to me to be nothing more than a name changing exercise. The only justification proffered by our wonderful government for the change was that it would end an historical anomaly. What anomaly one might well ask? Montesquieu's doctrine of separation of powers has never been as deeply rooted in our constitution as it has in that of the United States or the Fifth Republic. Nobody of my acquaintance ever worried that the head of the executive branch was also an MP or that the Lord Chancellor presided over the House of Lords and sat occasionally on appeal. In earlier times Parliament was referred as a High Court.

But that is not to say that I did not see an opportunity for reform. The highest court in the European Union hears and determines references on Community law from all levels of courts and tribunals in the member states. Art 234 of the Treaty of Rome mandates courts of last resort to refer questions of Community law to the European Court for a preliminary ruling but permits any court from the employment tribunal or magistrates upwards to make such a reference "if it considers that a decision on the question is necessary to enable it to give judgment". As I understand it, this is similar to the principle of "pourvoi" to the Cour de Cassation in many civil law systems. Although not quite the same the US Supreme Court does something similar through its writs of certiorari, prohibition and mandamus.

Everyone involved in the administration of justice from the President of the Supreme Court downwards should remember that the courts system exists for the benefit of the public and not the other way round. Anything that reduces cost is to be commended. Anything that maintains cost is to be deplored. Although novel points of law do not arise very frequently they do occur particularly in relation to technology. When I was called to the bar there was a lot of uncertainty as to whether copyright could subsist in computer programs under the 1956 Act until the matter was resolved by the Copyright (Computer Software) Amendment Act 1985. Nowadays there are a host of new issues presented by Web 2.0 such as who owns copyright in material on social networks, who should be liable for wrongdoing occasioned by such material and where can an alleged wrongdoer be sued. Obviously a judge of first instance or even a hearing officer can decide these issues which remain the law until they are overturned by a higher court but consider the cost savings that could be achieved if it were possible for a hearing officer or trial judge to refer a novel point of law for determination by the Supreme Court.

I wrote a memorandum suggesting an equivalent to art 234 in the statute constituting the Supreme Court to my fellow working party members. Willie Goodhart was polite enough but declined to take the suggestion further. No doubt he feared that this would be another wild and woolly Lib-Dem canard.

Practice: Mediation in the IPO

Last week I represented a defendant to a trade mark and passing off claim in a mediation that took place in the new London offices of the Intellectual Property Office. This was the first time I had visited those premises and I was rather taken back to see that they shared them with Human Fertilisation and Embryology Authority and, even more disconcertingly, the Insolvency Service. The IPO used to share their premises with the Charities Commission in Harmsworth House - rather less ominous for the sort of start-ups and other small businesses I tend to advise and represent.

The mediator was Mr Peter Back. This must have been one of his last mediations since Peter is due to retire very shortly. Peter and I already knew each other since he had spoken at a seminar on IP mediation that I had chaired in Leeds on 10 May 2006. Peter was a very patient and perceptive mediator and the fact that we did not settle was down to the nature of the case and the attitudes of the parties. I have appeared in front of many mediators over the years including some of the most famous and of course I have resolved a few cases myself . Peter was every bit as good as any of them.

The IPO has two advantages over other mediation services. First, its mediators are hearing officers who already know more than most about IP dispute resolution. Secondly, its charges are very reasonable: £1,000 for a full day in London or £750 for a day in Newport.

The new London offices are at 21 Bloomsbury Street which is almost parallel to Tottenham Court Road, It is surrounded by good eateries including TAS a Turkish restaurant which is just across the road. My instructing solicitor bought me a very good lunch there. Rather more inviting than then the Witness Box the former watering hole.

The European Court of Justice Explained

Barbara Cookson

Chartered Patent Agent/European Patent Attorney

Filemot Technology Law

The Rt Hon Sir Francis Jacobs KCMG QC and former ECJ Advocate General was the surprise guest speaker at the Hogarth Chambers Summer IP Seminar on Wednesday 15th July. Quietly spoken and urbane, his manner reflected the lugubrious nature of ECJ proceedings that are now seriously frustrating the IP community. It seems that the ECJ, or at least its Advocate Generals, can be quietly frustrated too. Jacobs spoke of being minded on one occasion to invoke Lewis Carroll and the Hunting of the Snark and quote that “what I tell you three times is true”.  

The admirable role of the ECJ is to interpret European law in a manner that will enable all national courts to apply it consistently.  

Its procedure is relatively straightforward. References may be made by any national court or tribunal and must be made by the highest where doubts arise. The Reference is translated into all the national languages and circulated to all member states. There is just one cycle of written submissions, a short oral proceeding, an Advocate General’s opinion and a judgment. In the 70s it used to take 7 months but that rose to two years and is now down to 18 months but these are averages. Jacobs felt that a target of about 12 months would be right. The ECJ has the power to reformulate the question. Clearly a delight for any lawyer, but a particular joy for an Advocate General. Jacobs gently mocked some questions that read like extremely detailed exam papers with questions. For example: lf the answer to 4.3.a is no then does this affect the opinion on 3.7.b? (my notes may not be accurate here but you get the idea). Apparently A-G's dislike being set such tests.  

Procedures were simplified to accommodate the expected increase in workload from the new member states - a triumph of diplomacy of which Jacobs seemed proud as, at that time, changes had to be unanimous. In particular some references can now be dealt with summarily, but that is still relatively time consuming and resource hungry in the early stages, though judge time is saved. However, the workload seems to have remained stable within the range of 210-250 references annually and around 540 cases in all taking into account appeals from the CFI and other sources. Is this because the influx of unclear new law is balanced by the light being cast by the Court? Within the IP field it seems to me that it just get murkier.  

The delay it seems is mainly due to the need to translate the references. There is no prescribed form. Since judges are encouraged to submit answers with their questions, it is not surprising that there are some long treatises prepared that may be a challenge to the limited translation resources in Maltese, say. Jacobs singled out the UK Employment Tribunals for their ability to submit appropriate references and Laddie's references on pharmaceutical labelling - although apparently complete with answers - as the most laboured.  

Jacobs emphasised that there were sanctions that could be taken if the national courts failed to make references. These might sound in damages, presumably in claims between the parties, but the ultimate sanctions can be taken by the Commission in enforcement action against the member states. I suspect he was warning us, ever so politely, that though should we be tempted to rebel, our hands were tied and we had no choice. The compulsion to refer was where Jacobs began his presentation so you can see that this is a personal interpretation.  

He did, however, end by describing the Green Light procedure. This works if you have answers with the questions to which a green light can be given quickly, though presumably still only after all that translation work. There is an obvious tension here with the dreaded reformulation power. A green light seems to imply that the referring court was misguided into thinking it needed to make a reference, though it may be a quick way for the ECJ to point the way when there are two clear potential routes the law could take. Maybe it will work.  

He does not believe that specialist sections would work. Each member state sends one judge and the ECJ gets what it is given. Specialism, I suppose, would leave IP law with a subset of the judges and therefore unduly influenced by a geographical part of the EU.  

Clearly being saddled with a reference is a disaster to any entity who sought recourse to the court to disentangle his IP problem with reasonable speed. Head for ADR if your barrister says that it’s an area where the law is not clear. The Tower of Babel that the ECJ has become is only for those whose strategy desires delay.  Authoritative this note is not. If you want statistics that are accurate look elsewhere but do add a comment. All errors are of course my own and probably due to lack of attention to our illustrious speaker, who has also written a book.   

Cases You Should Know About

Here is a list of some recent intellectual property and other cases that I you may wish to read.

I have commented on some of some of those cases in articles and case notes on this or one of my other blogs:

Topic	Court	Case	Transcript	Issues	Comment
Patents	Court of Appeal	Aerotel Ltd v Wavecrest Group Enterprises Ltd 20 May 2009	[2009] EWCA Civ 408	Obviousness, software implemented invention
	Patents Court: Peter Prescott QC	Folding Attic Stairs Ltd v The Loft Stairs Company Ltd and Another 9 June 2009	[2009] EWHC 1221 (Pat)	What constitutes an enabling disclosure Construction of claims: words of intentionality
	Arnold J	NS Group Holdings Ltd. v Nielsen Media Research Inc 20 May 2009	[2009] EWHC 1160 (Pat)	Whether there is discretion to strike out a valid claim under CPR 3.4 (see also Shah v Ul-Haq below). Judicial discretion to stay a case to abide the outcome of opposition proceedings in the European Patent Office.	Case Note 29 May 2009 IP/IT Update blog
	Fioyd J	Leo Pharma v Sandoz Ltd 15 May 2009	[2009] EWHC 996 (Pat)	Anticipation and obviousness. Windsurfing principles as amplified by Pozzoli applied.	Case Note 29 May 2009 IP/IT Update blog
Trade Marks	Chancery Division: Arnold J	Interflora, Inc and Another v Marks & Spencer Pl 22 May 2009	[2009] EWHC 1095 (Ch)	Google “AdWords”: whether purchase of sponsored links and searches infringes a trade mark. Reference to the European Court.	Discussed in “Trade Marks and E-Commerce” 24 May 2009 IP/IT Update blog
	Arnold J	L'Oreal SA & Ors v EBay International AG & Ors 22 May 2009	[2009] EWHC 1094 (Ch)	Whether a trade mark is infringed by sponsored links and searches and the scope of the defence in art 14 of the E-Commerce Directive.	Discussed in “Trade Marks and E-Commerce” 24 May 2009 IP/IT Update blog
	Geoffrey Hobbs QC	Daimler AG v Sany Group Company 14 May 2009	[2009] EWHC 1003 (Ch)	Practice: whether CPR Part 24 is appropriate to a case that requires a comparison of similar signs and similar goods	Case Note 28 May 2009 IP/IT Update blog
	Trade Marks Registry: Mrs Corbett	Sparklycard, Barclays Bank Plc v Snelgrove	BL No. O/104/09	Opposition on the ground of an earlier mark.
Domain Names	WIPO: Jane Lambert	Intesacanda.com: Intesa Sanpaolo S.p.A. v. George Papadakos	Case No. D2008-1531	Whether parking a domain name on an “under construction” page that generates sponsored links or searches is necessarily evidence of bad faith.	Discussed in “Trade Marks and E-Commerce” 24 May 2009 IP/IT Update blog
Practice	Court of Appeal	Shah v Ul-Haq and Others 9 June 2009	[2009] EWCA Civ 542	Whether there is jurisdiction under CPR 3.4 to strike out a valid statement of case on the grounds that there has been fraud in an associated claim
	Chancery Division: Stephen Smith QC	Hayim and Others v Couch 15 May 2009	[2009] EWHC 1040 (Ch)	The extent of the court’s jurisdiction t make a declaration before trial	Case Note 28 May 2009 IP/IT Update blog
Business Link	Court of Appeal	Business Link Berkshire & Wiltshire Ltd v Fearn 20 May 2009	[2009] EWCA Civ 455	Circumstances in which Business Link can recoup grants	Case Note 27 May 2009 IP Yorkshire

If you want instant, pithy reaction to a new decision or simply an alert that it is there, just search for @nipclaw or follow me on twitter at http://twitter.com/nipclaw.

Practice: an IP Practitioner's Diary, 31 May 2009

I am often asked by solicitors whether I go to the Patents Court. Or by trade mark attorneys whether I represent clients in the Registry. Or by Business Link whether I can do a risk analysis or draft terms and conditions for their clients. Or by businessmen and women whether I can review a draft contract.   The answer to all those questions is a resounding YES.

All of those things are within the traditional scope of the intellectual property barrister and I m as much an intellectual property barrister as anyone in Lincoln's Inn or Grays.  Confusion may arise because there are some things that I don't do. I don't apply for patents, trade marks or registered designs. I don't issue claim forms or even send letters of claim in my own name. I don't even accept instructions to appear in court or other hearing in a matter that requires lengthy correspondence or investigation such as reviewing documents and interviewing witnesses unless the client has instructed a solicitor or other authorized literature as well as me.   The reason why I do not do any of those things is that barristers keep their eye on the law and leave legal management to such as solicitors, patent agents and other professionals who are trained and equipped to manage clients' legal business. Moreover, as the law stands, barristers are not even allowed to hold clients' funds.

So that members of the public and indeed other professionals can enjoy a clearer picture of what intellectual property counsel like me can do, and also what we do not do, I shall publish a monthly diary.    This supplements the FAQ and case studies on my personal website.

I practise as an arbitrator and mediator as well as a barrister. One of the panels upon which I sit is the WIPO's domain name dispute resolution panel. The last domain name dispute to come before me was Case No. D2008-1531 Intesa Sanpaolo S.p.A. v. George Papadakos.  In that case the complainant, which carried on business in many parts of the world though not in Canada, complained that the respondent had registered one of its brands with the addition of the word "canada" as a domain name and had parked that domain name on an "under construction" page of the Yahoo website. The "under construction" page generated all sorts of sponsored links and searches some of which led to the complainant's competitors.   The parking of the domain name on the "under construction" page raised the possibility of preparations to use the domain name for a website for the bona fide goods and services which might have afforded a defence. Also, I was not persuaded that the automatic generation of sponsored links and searches outside a respondent's control was necessarily a sign of bad faith. Whether automatically generated links and searched infringe a trade mark is a question that has recently been referred to the European Court.   To help me draw inferences I took the unusual step of making a procedural order requiring the respondent to a written statement identifying the preparations (if any) that he may have made to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services exhibiting any draft web pages or other material to such statement.   

I have of course been been in court and in the IPO.  In one design case that went to trial before the Patents County Court both parties were able to keep their costs well below £17,000 and the claim was tried within 8 months of the issue of the claim form.   The issues in dispute were not straightforward and were closely argued over 2 full days.   This shows that intellectual property litigation need not be ruinously expensive or take forever. However, even £17,000 is a lot of money for most people and litigation is to be avoided wherever possible.

One forum where costs are very tightly controlled are is the Trade Marks Registry. Costs in proceedings before hearing officers are awarded on a fixed scale unless a party has acted unreasonably.   The Intellectual Property Office in Newport which I attended a few weeks ago on a trade mark invalidation hearing was one of the most convenient venues that I have ever visited. I was allotted a parking space just a few feet from the entrance to the hearing rooms and my opponent and I were offered refreshments afterwards. NIPC are looking into the possibility of opening an annexe in Newport for proceedings in the IP Office.

However, most of my work is non-contentious and I have done lots of advisory and drafting work. I have had to draft terms and conditions for several e-commerce sites, review patent licences and assist parties to a joint venture to go their separate ways.   Much of that work comes to me under the public access scheme.   Some of it is funded by Business Link and other funding bodies.   Some by the clients themslves.

I have also done a lot of pro bono  work through NIPC Clinics.  At present I run IP clinics in 8 centres: Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham and York in Yorkshire and Bromborough in the Wirral. That is just about as much as one woman can manage and as I want to run them nationally we shall be reorganizing them shortly in association with local professionals.   Any solicitor, patent attorney or other professional who would like to take part is welcome to drop us a line. Everyone who has assisted us has found found NIPC clinics to be a good source of work.

Patents: Leo Pharma v Sandoz Ltd.

In Leo Pharma (a/s Leo Laboratories Ltd) v Sandoz Ltd [2009] EWHC 996 (Pat) (15 May 2009) the defendant admitted that it had infringed the patent in suit but contended that the patent was invalid for lack of novelty and obviousness. The case was decided on its facts rather than on the law.  

On anticipation, Mr Justice Floyd summarized the principles expounded by Lord Hoffmann in Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005) as follows:

"(1) There are two requirements for anticipation which it is important to keep separate, 

(a) disclosure and 

(b) enablement;

(2) So far as disclosure is concerned, the prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent."

In Leo Pharma the relevant subject-matter contained in the prior art document was said to disclose the invention not because it described the product in terms (which it did not), but because it was said that carrying out the disclosure would inevitably produce that product.   The judge disagreed.   Experimental and other evidence did not support the claim that the patented product would be the inevitable result.

As to obviousness, his lordship followed Lord Justice Jacob's reformulation of the Windsurfing questions as set out in Pozzoli v BDMO SA, [2007] EWCA Civ 588; [2007] FSR 37 at [23].

"(1) (a) Identify the notional "person skilled in the art"

(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?""

The defendant put its case on obviousness in several ways none of which appealed to the judge.   The attack on validity having failed, the judge found for the claimant.

Patents: TNS Group Holdings Ltd. v Nielsen Media Research Inc

A fascinating little case on judicial discretion.  The claimant in TNS Group Holdings Ltd. v Nielsen Media Research Inc. claimed the revocation of the defendant's patent for a television audience management measurement system. It had also launched opposition proceedings in the European Patent Office under art 99 of the European Patent Convention.   Shortly before the issue of the claim form in the present proceedings the patentee had offered the claimant a licence the terms of which were not disclosed but which are unlikely to have been burdensome.  

The patentee applied to strike out the claim under CPR 3.4, alternatively asking for a stay on the following grounds:

(1) the revocation proceedings were pointless and wasteful and served no commercial purpose in view of the offer of a licence;

(2)   the proceedings had been brought for an improper purpose; and

(3)   the English revocation proceedings duplicated wastefully the opposition proceedings at the EPO.

Mr Justice Arnold accepted that he had power under CPR r. 3.4(2)(b) to strike out a properly constituted claim on the ground that it is an abuse of process in circumstances where it is plain that the litigation is pointless and wasteful and that such power may have been properly exercised in the defamation cases upon which the patentee relied, but in his judgment a case such as the present could not be struck out on that basis:

"In the present case it is not disputed by the defendant that the claimant has a properly constituted and arguable claim for revocation of the patent in suit, nor is it suggested by the defendant that there is anything in the conduct of the present claim for revocation, as opposed to its institution, that amounts to an abuse of process. Given that any person can apply to revoke a patent and that the applicant's motive is irrelevant, in my judgment it follows that it is not an abuse of process to apply to revoke a patent even if, as counsel for the defendant argues, the claimant has no sufficient commercial interest in bringing the present claim. There is no requirement that the claimant should have any commercial interest at all. It is sufficient that the claimant contends that the patent is invalid and should be revoked. The position is different to that in defamation cases because a patent is a monopoly and section 72(1) of the 1977 Act reflects the public interest in ensuring that invalid monopolies are revoked."

The key point lies in the last sentence.    The public has an interest in the dispute.

The "improper purpose" alleged in this case was that a judgment of the English court would be used in litigation elsewhere in Europe.   The judge's answer to that was that:

"it is perfectly legitimate for the claimant to seek to obtain a judgment of this court on the validity of the patent in suit in the hope that it will lead to a settlement of the dispute between the parties throughout Europe. Nor, in my judgment, would it be in any way illegitimate for the claimant, absent such a settlement being achieved, to seek to rely upon the judgment of the English court in proceedings before the courts of other Contracting States or the European Patent Office. It is commonplace for parties litigating on the same European patent in a number of Contracting States to put before the courts of one Contracting State decisions arrived at in one or more other Contracting States. I do not see that such conduct can possibly be stigmatised as an abuse of process. That is particularly so given that such judgments may come to the attention of courts in other Contracting States in any event. The courts of all the Contracting States are seeking to apply the same substantive law. It would be most unfortunate if anything were to be done which made it more difficult for the courts of the Contracting States to arrive at common answers to common questions."

As to the third point on costs, he agreed that the point was well made but looking at matters in the round, Mr Justice Arnold concluded that the present case was not one in which he should exercise his discretion to grant a stay.