31 August 2005
The article is headed "Patent threat looms over dynamic web pages". It discusses patent infringement claims that a company called EpicRealm has launched in the USA against 13 companies. The patents are for systems for managing dynamic web page generation. The defendants appear to be end-users rather than software houses and they include dating agencies, a dietary supplement manufacturer and a shopping mall. The interesting parts of the article from a foreign lawyer's perspective are interviews with the lawyers for both sides and the links to the specifications of the patents alleged to have been infringed.
All good stuff. One can see why Florian Mueller gets agitated about software patents here.
30 Aug 2005 "Software Patents: Call for EP Resolution"
29 Aug 2005 "Applying for Patents"
28 Aug 2005 "UK Patents Acts 1977 - 2004"
25 Aug 2005 "Patents - Excluded Matter: NMR Holdings Pty Ltd.'s No 2 Application
22 Aug 2005 "Basic Patents - IPR Helpdesk Briefing Paper on European Patents
I am prompted to write this post because my usual super-duper computer loaded with the very latest operating system and applications (including antivirus software updated as recently as 26 Aug 2005) has caught a bit of a bug. Hoping that this is the computer equivalent of a summer cold rather than avian flu, I have taken my ailing electronic pet back to the chap whose talented lads put together my impressive kit in the first place.
My supplier is now a mate but he first came to me as a client under the public access rules. I don't normally talk about my cases - partly because that sort of thing is restricted by the Code of Conduct but mainly because I find other lawyers' stories rather boring. However, I mention this one because it shows the savings of time and money that can be made with the UDRP and the panellist's decision extends the scope of the Policy in a way that may be useful in other cases. It also shows how well the public access rules can work.
My client ran a mail order computer business in the 1990s. He had won quite a few accolades for his products in the computer press. He had even supplied a PC to Buck House and I have visions of HM and HRH using it to download the racing pages from the internet. He started out as a sole trader and registered a trade mark in his own in class 9 for computers and computer systems and equipment. He was later joined by his brother and they set up a company. The company registered a generic top level domain name in the name of the trade mark with my client's permission. The business ran into cash flow difficulties as a result of the computer buying public's disilluionment with IT following the Y2K non-event and the .com bust. The company had to be wound up and a liquidator was appointed.
The liquidator appointed a firm of estate agents to realize the company's assets. One of those assets was the domain name which the estate agents sold to one of my client's main local competitors. The competitor registered the domain name not in his own name but that of the dissolved company.
My client, who still had his registered trade mark, reverted to trading under his old name as a sole trader. The competitor used the domain name to promote his company's business. On the home page he stated that my client's business was in association with his. My client visited the respondent, showed him his certificate of registration and offered to buy back the domain name. The respondent was not prepared to sell it, at least not for a price that my client was willing to pay.
My client consulted one of the best law firms in Leeds who wrote what we call a "letter of claim" and Americans a "cease and desist letter". The other side went to a slightly smaller but still posh firm who wrote what we call a "letter of response". Although couched in very polite language, it amounted to a request to get lost. The argument was that the domain name had been bought in good faith for valuable consideration and that my client was now passing his business off as that of the respondent.
My client was advised to sue but the cost of proceedings even in the Leeds District Registry would have been substantial. The claim would have taken weeks to come on for trial. There was no guarantee that my client would win. If he failed, he would risk paying the other side's costs as well as his own.
I understand that it was about that time that my client's 18 year old son (who was then doing his "A" levels - that is to say, that he was the equivalent of a high school senior in the USA) noticed my materials on domain names on our old chambers website. He told his father about me and my client made an appointment to see me under the public access rules.
At the conference I asked my client why his top drawer solicitors had not made an application under the UDRP and was amazed to be told that they had never discussed it with him. After thinking about it more, I surmised that the top draw law firm might have decided that administrative proceedings would not work because of fears that they might not clear the hurdles set by para 4 (a) (ii) and (iii) of the Policy. I took the view, however, that it was still worth a go because UDRP applications do not cost very much and there is no risk of an adverse costs order.
Because barristers still can't conduct litigation under the public access rules, I introduced my client to Janet Bray, an excellent local patent agent to do the filing. I settled the complaint. I had no trouble with para 4 (a) (i) because my client had a registered trade mark. That also helped me clear the second hurdle of para 4 (a) (ii). I was also helped by the fact that the respondent had registered the domain name not in his own company's name but in that of the dissolved company. The notice on the home page that my client's business was in association with the respondent's satisfied the 4th probandum.
The problem was para 4 (a) (iii) because the domain name had been registered originally by my client. I submitted that "registration" applies to a subsequent transfer as well as an original registration citing authority that the top drawer law firm really should have known. I argued that registration in the name of a dissolved company in disregard of a registered trade mark for the purpose of diverting my client's traffic to the competing site had to be bad faith. Fortunately, the panellist, Ian Blackshaw, agreed with me.
Had my client chosen to sue he would probably still be at the disclosure ("discovery" across the Atlantic) stage. The cost of issuing a claim form would not have been far short of the WIPO Arbitration and Mediation Centre's filing fee. The cost of settling particulars of claim would not have been less than that of settling the complaint. Counsel or a solicitor advocate would also have had to settle or review witness statements, draft skeleton arguments and appear on a case management conference and trial. There might also have been an inquiry as to damages which would have been almost as expensive as a trial. There would also have been the cost of serving the claim form and all sorts of interim applications. There would certainly have been an assessment of costs. Even though court lists are shortening my guess is that my client would have been lucky to come of to trial in less than a year. An inquiry would have taken another year. Costs assessments would have taken even longer.
Contrast that with what actually happened. Settling the complaint took somewhat over an hour for which I charged Â£350 + VAT. There would have been the filing fee of US$1,500. There was quite a lot of photocopying which my client took to Staples. And Janet would have charged something for filing. Even if my client had won, been awarded costs on the standard basis and actually recovered them, the likelihood is that he would still have been a great deal more out of pocket. The application was launched in April and Mr Blackshaw's award was published on 11 July. As the Americans would say in the language that my spell check understands, the choice between litigation and the UDRP is a "no brainer."
Relevant Post: "Hallelujah! More Entertainment from across the Atlantic"
30 August 2005
Huddersfield has a lot to be proud of - The Huddersfield Choral Society, the annual Contemporary Music Festival, The Textile Centre of Excellence, The Media Centre and a University with a rapidly growing reputation, particularly in business, engineering and design. We also have living among us Peter Bissell, the author of "A Better Mousetrap" and "the Business of Invention", both excellent primers for inventors. They have been commended by Business Link, the Chartered institute of Patent Agents and many others. Consequently, the town and its industries have a lot of intellectual property to protect.
HIP's activities this year include "Brass from Gumption" on 18 Feb. This was an all day open day of seminars, exhibitions, patent searches, patent clinics and a simulated "Baylis Breakout" by wind up radio inventor, Trevor Baylis. Another activity is the website to which I have added information, resources, news and events pages which should interest people far beyond Huddersfield.
Whatever one's views on the desirability of software and business method patents, such a resolution would be impertinent. As Jacob J said in R v Comptroller (ex parte Lenzing AG)  EWHC Admin 390 (BAILII) at paragraph , the EPO has nothing whatsoever to with the EC:
"The EPC did not form and does not form part of the legal framework of the then European Economic Community (now the European Union). Countries outside the Community can be and are signatories. Switzerland, for instance, was a founder member of the EPC and one of the first countries to ratify it. There are now 17 member states and others (including perhaps some Eastern European countries) are actively thinking of and preparing to join. Thus the EPC is a free-standing international convention."
In the last 9 years, the number of contracting parties has double. Many of the countries that have acceded to the EPO have no intention, or no immediate prospect, of joining the EU.
Some of Mr Mueller's other remarks are close to intemperate. One example is his paragraph heading "Patent offices disobey the law" albeit that it is watered down in the text to "flagrantly bending the law". Another is his observation that "until they are invalidated, [invalid software] patents can be used to intimidate the innocent". The difficulty that most of my clients find is quite the reverse. IP litigation is so expensive (at least in this country) that they dare not risk enforcing palpably valid patents. There are effective safeguards, such as s.70 and s.71 of the British Patents Act 1977, to discourage patentees from throwing their weight about.
I am not altogether sure that the exceptions actually confer a competitive advantage upon us or that we are the envy of many in Asia and North America. Many of the SME in the North of England who come to see me would love to be able to protect their investment in innovation in financial services, e-commerce, healthcare and so on. I know of at least one IT (not particularly large) company from another part of England that has been forced to litigate in the USA to protect is investment in R & D because it would never get anywhere near the courts in this country and even if it did it would stand much greater risk of revocation of its European patent than it would of revocation of the corresponding US patent in the USA.
Even if art 52 EPC does give us a competitive advantage, the question that arises is should it? Art 27 (1) TRIPS requires patents to "be available for any inventions, whether products or processes, in all fields of technology." That requirement is incorporated by reference into the WTO agreement that governs world trade.
The objections to software and business method patents in Europe seem to me to be primarily social and economic. The argument is that the companies that would stand to gain most from them would be companies outside Europe. Mr Mueller seems to allude to that argument by his claim that "if Europe doesn't send a signal to the rest of the world, then the US government might just have its way." It seems to me that these arguments are not altogether different from those in favour of the common agricultural policy or, perhaps more topically, for excluding Chinese made garments from our stores.
Related Posts in August 2005:
29 Aug 2005 "Applying for Patents"
28 Aug 2005 "UK Patents Acts 1977 - 2004"
25 Aug 2005 "Patents - Excluded Matter: NMR Holdings Pty Ltd.'s No 2 Application
22 Aug 2005 "Basic Patents - IPR Helpdesk Briefing Paper on European Patents
29 August 2005
Related Posts in August 2005:
28 Aug 2005 "UK Patents Acts 1977 - 2004
"25 Aug 2005 "Patents - Excluded Matter: NMR Holdings Pty Ltd.'s No 2 Application
22 Aug 2005 "Basic Patents - IPR Helpdesk Briefing Paper on European Patents
David's email shows that he is now using the Summer vacation profitably by focussing on some of the older cases. One of those cases is Investors Compensation Scheme Ltd -v- West Bromwich Building Society Times, 24 June 1997;  UKHL 28;  1 All ER 98;  1 WLR 896 which is our leading case on contract construction. Lord Hoffmann, who delivered the lead speech, also had things to say that cast some insight into how we construe patent claims. Indeed, he applied similar principles in Kirin-Amgen Inc. v Hoechst Narion Rousel Ltd which is now our leading case on claims. I count myself privileged to have been a pupil in Lord Hoffmann's chambers shortly after he had taken silk and I was even more privileged to have appeared against him and Nick (now Mr Justice) Patten in the Stoke on Trent County Court shortly after I was called to the Bar. Sadly, they won that one.
Most of the agreements concern American companies and are governed by the law of one state or other of the USA. But there are one or two foreign companies such as our own, dear BT, where the agreement is governed by our law. In particular, there are several Chinese companies in the list.
There is also a rather good blog - Contracts Blog - to which I have just signed up for RSS feeds.
That appears to be a decision of an appellate court in Illinois enforcing an arbitration clause on an e-commerce site. The point at issue appears to have been that the buyer did not appreciate that they were consenting to that clause when they clicked the "I accept" box on the supplier's site. Their lordships do not appear to have had much sympathy with that submission. The author quotes the following passage from their judgment:
"The blue hyperlink entitled "Terms and Conditions of Sale" appeared on numerous Web pages the plaintiffs completed in the ordering process. The blue hyperlinks for the "Terms and Conditions of Sale" also appeared on the defendant's marketing Web pages, copies of which the plaintiffs attached to their complaint. The blue hyperlinks on the defendant's Web pages, constituting the five-step process for ordering the computers, should be treated the same as a multipage written paper contract. The blue hyperlink simply takes a person to another page of the contract, similar to turning the page of a written paper contract. Although there is no conspicuousness requirement, the hyperlink's contrasting blue type makes it conspicuous. Common sense dictates that because the plaintiffs were purchasing computers online, they were not novices when using computers. A person using a computer quickly learns that more information is available by clicking on a blue hyperlink"
Clicking without reading these very long contrats d'adhesion is something that we do all the time. A question that might arise in other jurisdictions such as ours is whether they would survive the Unfair Contract Terms Act 1977 as amended (a copy of which appears on John Antell's website) or The Unfair Terms in Consumer Contracts Regulations 1999 (SI 1999 No 2083). From my days as legal advisor at VISA and also from teaching US students at McGeorge's summer school I seem to remember that there was some legislation in the USA to similar effect. It might be a good essay for the learned law profs to set their students when they return from their vacation in the new term.
28 August 2005
I should have acknowledged them sooner but I only found out about their remarks yesterday through an email from Lee Curtis of Pinsent Masons. Thanks Lee. I did not expect to be noticed so soon.
I tried to leave a message on IPKat and even joined the IPKat group to do it. However, some officious IPBot said that I didn't have sufficient permission for that. Ilanah and Jeremy will therefore have to make do with this post and yesterday's email, at least for the time being.
I have been a fan of Jeremy and Ilanah's blog ever since it started. I have also read a lot of other publications by one or other of them over the years.
Another person I should like to thank is Delia Venables for her mention. I think we all owe a lot to her. She has been prominent in computer law for many years. The first time I came across her was as one of the expert witnesses in Mackenzie Patten & Co. v British Olivetti Ltd., (unreported Michael Davies J 11 Jan 1984) one of the first (if not the first) computer supply case in England and Wales. Those with long memories will remember that it was the case about the retired zoo keeper who never learned how to operate a solicitors' accounting system. I read that case because Butterworths had commissioned me to write the first chapters on computer law and data proteciton for Atkin's Court Forms and the Encyclopedia of Forms & Precedents. Delia's website on lawyers' websites had many of the characteristics of the modern blog long before blogs were invented.
27 August 2005
The notes in the side bar explain that it is devoted to raising his compatriots' awareness of the fascinating subject of information and communications technology law. That may be a mistranslation because the adjective that Sulliman actually uses to describe the subject is "passionnate". My lips started to curl into a smile as I was reminded of Sergeant Sullivan's celebrated put down to a rather pompous judge about an abstruse point of law that in the drinking places of a particularly remote part of Ireland from where his client hailed they talked of nothing else.
However, frivolity aside, this blog is good. To give some idea of the quality, his latest post discusses the reasonableness or otherwise of the AOL and Tiscali standard terms. Others include a decision of the Cour de Cassation on information theft by an employee, the Commission's proposal for a second enforcement directive (a matter I have also addressed in my very first post to this blog), peer to peer copying and much, much more.
Most of the posts are in French but one or two are in English. "Is downloading of copyrighted files covered by the french harbour of private copy ?" which discusses some French case law on the fair dealing exception in the French copyright law is a case in point. Altogether very good stuff. Again, as they say in the Michelin guide, "vaut le voyage".
As I practise in a small town 300 kilometres from London that has never had a barristers' chambers let alone a patent set before, much of my work is awareness raising. Through initiatives like HIP (Huddersfield Intellectual Property Forum) I remind my neighbours in the Huddersfield Media Centre and the Huddersfield Business Generator of the need to protect their brands, designs, technologies and creative works. A lot of people ask me such questions as "just how do you copyright a program" or "how do you apply for a patent, trade mark or registered design". For them, I have produced "IP 101" or "Acquiring IP" on my .law.pro site. It supplements "Applying for a Trade Mark" on my IP/IT Update site, which is intended primarily for local solicitors and others with some basic legal knowledge. I have an "Applying for a patent" and "Applying for a registered design" somewhere on the internet. I shall try to locate them over this bank holiday weekend.
I know this is very basic stuff for you very bright chaps in Australia and the USA who have sent me some kind emails about this blog, but IP101 is not for you. It is meant for the young graduates and fashion designers in the Media Centre or Textile Centre of Excellence who are trying to establish them in a very competitive environment.
Finally, I wish any of my fellow compatriots who may be reading this post a very pleasant August bank holiday weekend. For those in London I hope it stays fine for the Notting Hill Carnival. I also wish my American friends a very pleasant Labour Day for next week. Pace friends in Australia, I hope it stays fine in Trent Bridge. It's not often we have a test (cricket) team that plays so well.
26 August 2005
See Post of 1 Sept 2005 with links to OPSI and analysis by IPKat.
The "What's New" page of the Designs Index of the Patent Office website rarely has much to report. This week it has two items of interest to practitioners.
The first are two recent decisions, one by Mr Barford under s.246 of the Copyright Designs and Patents Act 1988 relating to unregistered design rights, the other by Mr McGillivray on an application for invalidation of a registered design. The second item is a summary of the Community Designs Regulations 2005 which will come into force on 1 Oct 2005.
For the benefit of readers outside the UK, it is perhaps worth mentioning that there are at least 5 (and if one counts semiconductor chip protection separately 6) ways of protecting designs in this country:-
(1) designs of products that are new and have individual character may be registered as registered designs for the UK only with the Designs Registry of the Patent Office under the provisions of the Registered Designs Act 1949 as amended;
(2) alternatively, designs of products that are new and have individual character may be registered with OHIM (the Office for Harmonization in the Internal Market) (the Community designs and trade marks registry) for the whole EC as registered Community designs under the provisions of the Community Designs Regulation (COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs);
(3) designs that could be registered either as UK registered designs or as registered Community designs are protected automatically from copying throughout the EC for 3 years by the Community Designs Regulation as unregistered Community designs;
(4) original designs of aspects of shape or configuration of an article or part of an article (and that part can be as minute as the shape of a contact lens) with certain exceptions are protected automatically from reproduction in the UK by a new intellectual property right peculiar to us British called "unregistered design right" pursuant to Part III of the Copyright, Designs and Patents Act 1988;
(5) fabric designs, wallpaper and works of artistic craftsmanship that are excluded from unregistered design right protection by s.213 (3) (c) of the 1988 Act are protected indirectly by artistic copyright.
It sounds very complicated but in fact it works quite well in practice. These several IPR overlap to give monopoly protection through registration of designs of things that sell on appearance such as crockery or consumer durables but not their innards unless they are visible and a design feature in themselves. The manifold of the Morgan motor car (reputedly Sir Hugh Laddie's favourite conveyance) could have been so protected had it been introduced to the British or European market now. Unregistered design right, however, does protect components and other purely functional product designs from copying. Unregistered design right is, incidentally, the way in which we protect semiconductor topographies though the Part III has had to be modified quite substantially by special regulations to give effect to our obligations under the Washington Treaty.
The design right case, Justwise Group Ltd v Magis SpA, is a delicious case for English IP lawyers though it will probably make no sense at all to anyone else. Before the Copyright Designs and Patents Act 1988 came into force engineering drawings were regarded as artistic works which meant that the simplest design of the humblest component could be protected by copyright for the life of the designer plus 50 years. This produced all sorts of anomalies which resulted in the House of Lords' concocting a defence of an implied licence to repair in order to prevent vehicle manufacturers from holding the public to ransom whenever they needed to replace an exhaust pipe. There was a lot of argument among academics and practitioners as to how product designs should be protected. The course eventually chosen was to introduce unregistered design right for product designs and allow artistic copyright to revert to its original function of protecting fine arts such as drawings, paintings and sculpture.
For historical reasons, Parliament did not want any overlap between copyright and unregistered design right. Copyright now protects works of art for life plus 70 years. Design right by contrast lasts only 10 years if a design is marketed and in the last 5 anyone in the world including an infringer can apply for a licence to make articles to the design. This issue in this case was whether a stool specially commissioned from the celebrated designer Stefano Giovanni at a cost of £500,000 (approx US$900,000) was a work of art or simply an article of furniture not substantially different from something one could pick up from Ikea. If it were the former it would be protected for the rest of Mr Giovanni's life plus 70 years and would not be subject to a licence of right. If the latter, anyone in the world could seek a licence to reproduce it. Not surprisingly, the hearing officer held that the stool was a work of artistic crafstmaship. As such it was protected by copyright and not by design right. His jurisdiction under the Act applies only to design right. Drawing an analogy to CPR 3.4 he struck out the statement of case.
The case before Mr McGillivray, McBride v Garnett, was an application for invalidation of a registered design on the ground of anticipation and want of individual character. It is perhaps worth pointing out that there is no substantive examination of design applications in this country. Challenges, if they are to come at all, will follow after grant. In this case the challenger alleged invalidity but adduced no evidence to support his claim. Not surprisingly he was thrown out on his ear.
The summary of the new regulations isinterestingg because there is as yet no draft of the regulations. However, there was a consultation last year in which the government set out its thinking. The net effect of the changes is to extend some of the provisions that apply to national registered designs to registered Community designs. Thus, there will be a "threats action" which will be a relief to the garment trade and it will be an offencefalselyy to claim a registered design.
This isbasicallyy levelling the playing ground and it is long overdue. I for one will welcome the new law.
Related News Item
TIPLO Dinner Meeting Tuesday 18 Oct 2005 Richard Arnold QC "Design Right: Is it working?"
Richard Arnold QC (a London patent silk) will give a talk entitled "Design Right: Is it working?" at Gray's Inn on 18 Oct 2005 after drinks and dinner. Richard sits as an appointed person on appeals from hearing officers in the Trade Marks Registry. I've been against him in court several times and he is very good. The evening is arranged by TIPLO (The Intellectual Property Lawyers Organization) so enquiries should be addressed to Ms Renata SIEBRASSE, c/o MEDTAP Instituute, 20 Bloomsbury Square, London WC1A 2NS, Tel +44 (0)20 7289 4552, email@example.com. Tickets costs £95 (US$170) for members (£120 (US$216) for non-members) which seem a big steep to my North Country eyes but then it is being held in London and, as I have said, Richard is good. I would have gone but for a conference at the WIPO in Geneva, which I plan to attend.
The article starts with a delightful anecdote of a request by one of Mr Nipper's children to skip the commercials in a live television broadcast. The post also displays a charming photo of the child. I have a lot of sympathy for the little boy. My recollection of American telly from my days as a graduate student in Los Angeles is that commercials can go on for quite a long time. I was told that the reason for a lot of irritating breaks at American football and basketball matches was that the broadcasters needed time to run their advertisements. I think that is why I have never been able to take to American sports even though my university won the student basketball championship several years in a row and was second only to another local university in the regional American football competition when I was there.
Mr Nipper reflects on all the changes to IP practice that have taken place in the USA since his first child was born. He says that that child was born 7 years ago - just one year after I opened NIPC in Manchester. It reminded me of all the changes that have taken place here too. Many are the same as those that Mr Nipper mentions in his post. But we have also had some of our own such as public access to the Bar, the exclusion of civil legal aid for business disputes requiring, the Civil Procedure Rules, increasing competition in our market from the rest of Europe as a result of Council Regulation 44/2001 - to mention just a few. We can expect even more change when the Department of Constitutional Affairs publishes its promised white paper this autumn.
One thing that Mr Nipper says that is undoubtedly true:
“Most of these changes weren't driven by attorneys wanting to earn more money. It's hard to argue that simplifying things, ease of use and speed are synonymous with billing by the hour. They aren't. Instead, these changes were driven by the public, by entrepreneurs and by access to technology.”
He says he is “thankful to be involved with this great rethinking of the practice of IP law.” The members of these chambers, Ekundayo Cole-Wilson, Alex Khan, Richard Aird and I certainly are.
25 August 2005
The NZLII is already pretty good. Collections include case law from the NZ Court of Appeal, Supreme Court, the Copyright Tribunal, Competition Commission and Privacy Commissioner, Acts of the NZ Parliament (so far only 3) and plenty of law reviews, law commission reports, links and many other goodies.
The resource that actually drew me to the site was in fact a report of the Trustpower reference to the Copyright Tribunal in respect of a newspaper cuttings licensing scheme run by the Print Media Copyright Agency along the lines of a similar copyright licensing scheme in Britain (see Trustpower Ltd Public Relations Institute of New Zealand v The New Zealand Press Association  NZ CopyT 1 (27 July 2005). It is remarkable that a country with a fraction of the population of the UK could generate so many licensing schemes a high proportion of which seem to come on before the Tribunal.
A particularly helpful feature of the resource is the categorization of databases by subject matter. The Intellectual Property index is at http://www.worldlii.org/catalog/2913.html. It links to the websites of the Ministry of Economic development, IPONZ (NZ patent office), law firms, patent agents and plenty of other good stuff. As the Michelin guide puts it, "vaut le voyage".
Don't forget that this blog is the best place to pick up RSS feeds and updates.
The applications were brought by NMR Holdings No 2 Pty Limited. Two applications for a method of designing coils for magnetic resonance imaging apparatus were rejected by the examiner "on the grounds that they related to mathematical methods and/or methods of performing mental acts". Amendments introducing a step of producing the coil as the product of a design process and methods of manufacturing the coils failed to change her mind.
Before proceeding further, it is worth explaining that the countries that are party to the European Patent Convention exclude the following from patentability:
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business,
or a program for a computer;
(d) the presentation of information.
However, those exclusions are not absolute. A proviso to the above paragraphs in the British patents legislation continues "..... The foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such." Over the years, there has been a lot of discussion in the European and national patent offices and the courts of the contracting states as to what the exception to the exception and, in particular, the words "as such" actually mean.
In CEPH's application Mr Prescott detected a divergence in the approaches of the British and European Patent Offices to the patentability of software related and business method inventions. Whether such divergence makes much practical difference is hard to say because the Patent Office applied both the European and British methodologies to the hypotheticals presented at the "technical contribution" consultation road show earlier this year and could find only one case where it might have made a difference (see "Computer-Implemented Inventions, Patentability: analysis of the effect of the CFPH and Halliburton judgments", 23 Aug 2005).
The hearing officer, Mr M G Wilson, accepted the applicant's invitation to apply the European approach but found that it did not assist him to overcome the examiner's objections. The addition of a manufacturing step to the design stage did not result in either a new product or new process. The only advance was in the design process and that was, of course, excluded from patentability as a mental act. As it was not possible to save the application by any kind of amendment, it followed that the patent application had to fail.
There is a right of appeal to the Patents Court but it is hard to see what more could be said.
24 August 2005
We have had the same sort of issues here though they have been fought on different battle grounds. Since we also refer to "district" and "circuit judges", it is worth mentioning that a "district judge" and "circuit judge" in the USA are rather more grand than their namesakes here. A district judge is a judge of a federal district court which is comparable to the High Court England and Wales. The Circuit Court is a regional, federal appellate court comparable to our Court of Appeal. Indeed, the full title of the Fourth Circuit is "The United States Court of Appeals for the Fourth Circuit".
The first defendant, The Rev Dr. Jerry Falwell, is a clergyman who appears regularly on US television. He holds what Her Honour Judge Motz described as "common law trademarks" in the signs JERRY FALWELL and FALWELL. He had also registered the words LISTEN AMERICA WITH JERRY FALWELL as a registered trade mark. He has a website under the generic top level domain name which attracts an average of 9,000 hits a day.
It appears that Dr. Falwell expressed opinions on homosexuality that upset the claimant. In protest, the latter set up a spoof website under the domain name <FALLWELL.com> which criticized comprehensively Dr. Falwell's preaching. Even though the spoof site was nothing like as popular as their website, the defendants resented the claimant's. They threatened the claimant with legal proceedings. He responded by applying for a declaration of non-infringement. The defendants counterclaimed for
- trade mark infringement under 15 USC 1114;- false designations of origin under 15 USC 1125 (a);
- unfair competition under 15 USC 1126;- cybersquatting under 15 USC 1125 (d); and
- the Virginia law of unfair competition.
Upon applications by both parties for summary judgment, the learned district judge dismissed the claim, injuncted the claimant from using the contested domain name and ordered him to transfer it to the first defendant. The judgment is reported at 360 F. Supp. 2d 768 (E.D. Va., August 5, 2004)and a case note by Mr. Martin Samson appears on Phillips Nizer LLP's site. However, His Honour refused to award damages and costs against the claimant. Both sides appealed to the Circuit Court.
The Court of Appeals allowed the claimant's appeal on both the claim and counterclaim. Delivering judgment on behalf of the Court, Judge Motz restated the purpose of trade mark law:
"Trademark law serves the important functions of protecting product identification, providing consumer information, and encouraging the production of quality goods and services. See Qualitex Co. v. Jacobson Products. Co., 514 U.S. 159, 164 (1995). But protections "‘against unfair competition’" cannot be transformed into "‘rights to control language.’" CPC International, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) quoting Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1710-11 (1999))."
While she expressed sympathy with submissions that the Lanham Act restricts only "commercial speech", she based her judgment on the absence of any likelihood of confusion. The defendants had argued that they were entitled to succeed on the ground that the claimant had lured traffic from their site. That contention failed because the critical element - use of the proprietor's mark to capture his customers and profits - did not apply. Finally, the complaint of cybersquatting failed because there was no evidence of bad faith. Having dismissed the counterclaim, it was not necessary for the Court to consider the defendants' cross appeal.
We have also had to explore the interface between private property rights and guarantees of freedom of expression though they have been fought on different issues. Cases that spring immediately to mind include Campbell v MGN Ltd.  UKHL 22, where the right to enforce an obligation of confidence had to be weighed against the Convention right to freedom of expression, and Hyde Park Residence Ltd v Yelland and others  EWCA Civ 37 (10 February 2000), where the issues were the extent of the fair dealing exception to copyright under s.30 of the Copyright, Design and Patents Act 1988 and whether there was such a thing as a public interest defence. These notions are very new to us and largely because of the importation of the European Human Rights Convention into English Law by the Human Rights Act 1998.
Despite the existence of broadly similar issues here, this case also highlights many differences, both legal and cultural, between the Americans and ourselves. These range from the notion that a minister of religion carries some kind of business that needs trade mark protection to the survival of some sort of protection for unregistered trade marks in the USA which was abolished here over a century ago. We may share a common language with the USA but we have a very different culture.
Finally, in my post below I opined that there is no such thing as a threats action in the USA. In an email Mr. Schwimmer challenged my view and very kindly drew my attention to the federal US Declaratory Judgments Act. This case, which began as an application for a declaration that the claimant's website did not infringe the defendants' trade marks, would appear to be an example of the exercise of that jurisdiction. If that is so, I would still have to say that a declaration of non-infringement is not quite the same thing as a threats action. The US statute, which applies to all litigation and not just IP claims, is much closer to s.71 of our Patents Act 1977 or even the common law remedies which are still used to check abuse of intellectual property monopolies.
Relevant Post: "Always consider the UDRP first" 31 Aug 2005
Mr Schwimmer's post links to recent correspondence between the complainant in-house legal advisor and the Executive Director of the Stanford Law School Centre for the Internet and Society.
A letter from a member of the complainant legal department argues that: his employer's registered trade marks and copyrights had been infringed and that it had been induced to supply its packaging by a representation that such packaging would be used for wrapping parcels.
The law school's website shows that the complainant had caused the young man's website to be removed from the internet by a notice under the US federal Digital Millennium Copyright Act. He seems to have consulted Stanford Law School which made representations that resulted in the site's restoration. It appears from the last paragraph of the complainant letter that the complainant alleged trade mark infringement and conversion which falls outside the scope of that Act. It was conceded that that notice had been misconceived.
Could anything like this happen here? Having practised IP in the North of England for the last 20 years I would have to say that it probably could. People can be just as cussed on this side of the Atlantic as they can over there. Indeed, a large company might actually have a better chance of intimidating its opponent because costs (lawyers' fees) follow the event in this country while an award of attorneys' fees is exceptional in the USA. The young man would probably have been entitled to legal aid up to April 2000 but that entitlement was abolished by Sched. 2 to the Access to Justice Act 1999. This is where law schools like Stanford perform a valuable public service. We have FRU here. BPP law school has a pro bono scheme. But we could certainly learn something from the Americans in this regard.
However, were someone in the furniture maker's shoes to hold his nerve, it is hard to see how any of the complainant's arguments would succeed here. None of the first 3 sub-sections of s.10 of the Trade Marks Act 1994 applies. Even if copyright can subsist in "packaging" (as opposed to artwork for packaging) there has been no reproduction. An attempt to re-assert title to the packaging on grounds of misrepresentation or breach of a provision of the standard conditions would not be entertained for a moment. The best case I could think of would be in passing off. Even there, the complainant would probably struggle.
One important difference between our law and that of the Americans' is that we have threats actions and they do not. At least one American company, Prince Sports, learned about s.21 of the Trade Marks Act 1994 the hard way. I've done my bit to bring threats actions to the attention of Americans in my article "Consider the Implications of Foreign Laws Before Sending a Cease and Desist Letter" which appears on a US colleague's website.
Here are the first lot of Pedrick links. There will be plenty of others.
BBC "A patently absurd invention?" 25 Oct 2002
Tim Jackson "Patently Absurd!" Pedrick Page 17 Dec 2000
Mary Bellis "Arthur Paul Pedrick"
This blog is the best place for RSS feeds for the NIPC websites.
23 August 2005
DG Competition: http://europa.eu.int/comm/competition/index_en.html
To take advantage of RSS and XML technology you will need a news aggregator. They are available from various sites. Many are free and most of those that are not cost only a few US dollars. My personal favourite is "Attensa for Outlook" which directs news items into one's Outlook e-mail program. A beta version of the program is available free of charge from http://www.attensa.com/.
The USPTO feed is available not from the Office itself but from Rethink(IP), a collaboration between Messieurs Matthew Buchanan, Stephen Nipper and Douglas Sorocco. They have put together separate feeds for patent, trade mark and general news, the Official Gazette and Federal Register (US federal secondary legislation).
I am glad to say the EPO does its own feeds as does the WIPO.
"Public unware of RSS" Gavin Clarke Channel Register 24 Aug 2005
It goes without saying that such a draconian remedy can easily be abused. Since the early 1990s the courts have imposed stringent safeguards on the grant and execution of such orders. One of those safeguards is to require the order to be executed by an experienced solicitor who is not connected with any of the parties called "a supervising solicitor". As search orders are usually required at very short notice, it is not always easy to find an experienced litigator near the premises that are to be searched who has done (or at least seen) the job before. For that reason, NIPC has maintained since 1999 a "Supervising Solicitor Panel" of solicitors whom we believe to be reliable.
So far, we have most of the North of England and a large part of East Anglia covered but we would like some contacts for London, South East England, the West Country, the Midlands and South Wales. Any experienced litigator in those areas who wants to come onto the panel should call our chambers manager Toni Wilson on 0870 990 5081 or email her at firstname.lastname@example.org. He or she should provide a short CV setting out in particular his or her experience of search or Anton Piller orders. It can be profitable. Members of these chambers have been instructed in cases in which at least two members of our panel were selected and we know of at least one other case in which one of our panellists was chosen even though one of us was not briefed. We look forward to hearing from you.
'Angie' hits wrong note with Rolling Stones' David Smith 21 Aug 2005
'Rolling Stones gather no Dross' Jamie Wilson 23 Aug 2005
22 August 2005
The reason for the title is that the Patent Office has invited comments on 18 August 2005 on a proposal by the European Commission for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a framework decision to strengthen the criminal law framework to combat intellectual property offences. Art 3 of the Proposal would require member states to
"ensure that all intentional infringements of an intellectual property right on a ommercial cale, and attempting, aiding or abetting and inciting such infringements, are treated as criminal offences."
It would appear that the proposed requirement would apply not just to bootlegging, counterfeiting and piracy that are already criminal offences in the UK and elsewhere, but also to unregistered design right, registered design and patent infringement. Indeed, there is no obvious reason why it should not also apply to breaches of confidence which would further complicate an area of the law already complicated by the Human Rights Act 1998. Since the proposal was first published on 19 July 2005 it has already been discussed by Urs Gasser and others in the USA. The early comments from across the Atlantic are not particularly encouraging.
This is the second attempt by someone in the Commission to criminalize any kind of intellectual property infringement in little over two years. The previous proposal of 30 January 2003 (Proposal for a Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights) contained a similar provision. Art 20 (1) of the proposed directive would have required member sates to
"ensure that all serious infringements of an intellectual property right, as well as attempts at, participation in and instigation of such infringements, are treated as a criminal offence. An infringement is considered serious if it is intentional and committed for commercial purposes"
That article was dropped from the text that was adopted by the Council (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 196/16 2.6.2004). In submissions that I drafted on behalf of the Chartered Institute of Arbitrators to the previous Patent Office consultation on I pointed out some of the legal and practical difficulties of extending criminal liability beyond counterfeiting and piracy.
While extending criminal sanctions to patent and other types of intellectual property infringement would be very popular with many of the small business people and individual inventors who consult me, there are two substantial objections. The first is that criminal liability requires both a mens rea (blameworthy mind) as well as an actus reus (blameworthy act). The problem with intellectual property infringement is that it is possible to believe quite honestly and reasonably that a patent claim or other right is not valid or that on the true construction of the claim that it has not been infringed. Secondly, one of the reasons for criminalizing counterfeiting and piracy is to protect consumers from fake goods. That does not always apply to other types of intellectual property infringements. Medicines for poor people in Africa are one example that springs to mind. There are lots of practical difficulties such as who would enforce this legislation in the UK, whether juries and magistrates would have patience with the issues, the possibilities of circumventing art 27 of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ L 12 , 16/1/2001 1 - 23) and much, much more.
The Patent Office has invited responses to Jeff Watson by 26 September 2005. I hope that there will be quite a lively debate.