30 November 2005

Designations of Origin: R (Northern Foods) v DEFRA

Following on rapidly from the ECJ's decision in "feta" (Germany v Commission [2005] EUECJ C-465/02 (25 Oct 2005)) which held, among other things, that there could be no such thing as "Yorkshire feta", Mr Justice Crane is being asked to consider today the notion of Melton Mowbray park pies from Leeds (see "Pork pie row heads to High Court" on today's BBC website). According to the news report the application in the Administrative Court is for judicial review of DEFRA's decision to have Melton Mowbray listed as a designation of origin for pork pies.

The basis of the application is that the proposed designation of origin takes in not just the town of Melton Mowbray but just about the whole of the East Midlands. The argument is that that a region of 1,800 square miles is much larger than the legislation intended. According to an earlier BBC report the distinguishing feature of a Melton Mowbray pork pie is its irregularity: "a real Melton Mowbray pork pie kind of collapses on itself because it's baked 'free-standing'. Apparently supermarket pies are just far too upright. That might go down well with the Competition Commission.

Apologies to readers for the limited number of posts over the last few weeks. I have been busy with other things but will catch up at the weekend.

27 November 2005

My Chance to Meet King Puss

I have just received an invitation to the launch of OUP's Journal of Intellectual Property Law on 5 Dec which is edited by none other than Jeremy Phillips of IP-Kat. Not only that but the commissioning editor is Sarah Harris. She is almost a local girl since she edited Sweet's Entertainment Law Review from Halifax for a year or so. Although entertainment law is not my first love I contributed to that journal whenever I could simply because it was good to have an IP publication in the North.

The advance access to the journal has some very interesting articles. Particularly timely, perhaps, in view of the 37 interdicts obtained from the Court of Session at the BCPC Crop Science & Technology conference in Glasgow last month is Philippe de Jong article "Patent infringements at international fairs--cross-border enforcement through Belgian summary proceedings." It looks good for JILP. I wish them every success.

26 November 2005

IP Centre of Excellence: Patent Office Opinions

The launch of the IP Centre of Excellence at BPP School on 24 Nov was a great success. In addition to our speakers, Peter Hayward (Head of Litigation at the Patent Office) and Ian Lewis of Miller Insurance, we welcomed Diana Wallis MEP (who had practised as a solicitor before she was returned to the European Parliament), Michael Harrison (President of the Chartered Institute of Patent Agents) and Richard Kempner of Addleshaws.

Peter said that there had been 4 applications for advisory opinions under s.74A of the Patents Act 1977 since the scheme was launched at the beginning of October though only 2 had appeared on the Patent Office opinions web page to date. Three out of the four applications had been brought by individuals or small companies though one had been made by Novo-Nordisk A/S. There had been some teething troubles in the first few applications. One applicant had asked for the process to be confidential which, of course, is not possible. But on the whole the process seemed to be going well. The success of the scheme had led the Patent Office to consider other ADR schemes, such as mediation, and that was something that Michael Harrison applauded.

Some additional interest was afforded by the fact that there were two other IP insurers in the room, David Freeth of HSBC Insurance Brokers and Ian Macleod of IP Insurance Services. All seemed to think that the service was worth using though none was prepared to dispense with counsel's opinion.

The other encouraging thing about the evening was that students from BPP's Leeds and Manchester campuses were in the audience. The Leeds students had put together are an excellent newsletter on IP which I hope to promote through this blog soon.

23 November 2005

Branding for the Bar?

In its white paper "The Future of Legal Services: Putting Consumers First" of 17 Oct 2005, HM government proposed legislation for "reforming the regulation and delivery of legal services, in order to put the consumer first." The obvious intention of the proposed legislation is to stimulate still further competition in all sectors of the legal services market including advocacy and specialist work such as intellectual property and technology.

Competition is a very good thing and I personally can't wait until the few remaining restrictive practices that the Office of Fair Trading criticized in its report on "Competition in the Professions" disappear, but competition works properly only if the market is informed. With a practising bar of nearly 15,000 it is hard to see how solicitors let alone the public at large who now have direct access to the Bar for most of its services can properly make a choice as to who to go to for a particular job.

The law is not the only economic sector where there are a lot of players and the way that other industries respond to this situation is by branding. I do not see any reason why it should not work for my profession too. Accordingly, I have registered NIPC, the name of our chambers as a UK trade mark for
“Barrister services; legal services provided by barristers; advocacy, legal advice, drafting, arbitration and mediation services”

in class 42 as well as conferences and seminars and publications in classes 41 and 16 respectively. As my chambers are rather different from everyone else's in that I am the only one who practises intellectual property full time, we need not market everything that we do under the NIPC mark. We can brand only the services that we do best where we can be sure that they are supplied by a proven expert and that we can deliver them with absolute reliability.

I think that the easiest service to brand immediately is advice and representation in domain name disputes. I was in several of the early domain name cases in this country long before the UDRP and Nominet DRS were established. I was one of the first (if not the first) counsel in the UK to bring a case under the UDRP. I have written quite a lot on the subject and I am now a WIPO domain name dispute resolution panellist. I am pretty confident that I can deliver consistently sound, swift and cost effective advice and representation in administrative proceedings before WIPO, NAF, the Asian Domain Name Dispute Resolution Centre and other service providers in the UDRP and registry specific disputes, as well as before Nominet and all the country code schemes managed by WIPO.

If I get it right I shall brand other services as well as conferences and publications.

20 November 2005

Patents: Smith International Inc v Specialised Petroleum Services

A short but very important procedural point was decided in Smith International Inc v Specialised Petroleum Services Group Ltd. [2005] EWCA Civ 1357 (17 Nov 2005). Appeals from decisions of the Patents Court on appeals from the Patent Office continue to be governed by s.97 (3) of the Patents Act 1977 rather that by s.55 of the Access to Justice Act 1999. The significance of the point is that s.55 precludes appeals to the Court of Appeal where there has been an appeal to the High Court unless the Court of Appeal considers that
(a) the appeal would raise an important point of principle or practice, or
(b) there is some other compelling reason for the Court of Appeal to hear it.


The barrier to clear imposed by s.97 (3) is still pretty high. The applicant has to get permission to appeal from the Patents Court or Court of Appeal and permission will only be granted for decisions made under ss. 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 of the Act or where the ground of appeal is that the decision of the Patents Court was wrong in law.

18 November 2005

IP/it-Update - Case Notes on Priority and Construction of Claims

Two more old case notes form the old NIPCLAW site updated and transposed, ladies and gents: one on the EPO president's reference of 29 July 1998 on what constitutes priority for the purpose of art 4A (1) of the Paris Convention and art 87 (1) of the EPC and the other on General Clutch Corporation v Sbriggs Pty Ltd an Australian decision on the meaning of "comprising" in a patent claim. The interesting point about General Clutch is that Mr Justice Lindgren referred to dicta of Sir John Bennett, Vice-Chancellor of the County Palatine of Lancaster, in Chain Bar Mill v Wild (1939) 56 RPC 446 which reminded me that there was once a time when patent cases used to take place in the North.

Despite the brave words of the professor (whose name I have forgotten) who closed the first day of the BEX North West exhibition at the Manchester International Convention Centre that Manchester is a new city for the new economy I could not help but reflect on the extent to which times have changed. Overall it was a good show and congratulations to all concerned, but while the Patent Office and Manchester Patent Library managed to make an appearance there was only one trade mark agent, one firm of solicitors and no patent agents. There was a trace of cultural cringe. In a hypothetical chaired by Anthony Wilson and sponsored by Pannone there was a long winded and I hope improbable story about some plucky Wythenshawe motherboard manufacturers harassed by London bankers, a Chinese villain named after the founder of the modern Chinese nationalists (I hope nobody is looking for business from Taiwan) and some very speculative journalism. I walked out just before the denouement because I heard a loudspeaker announcement that drinks were on offer. Give the hypothetical a miss next year, lads.

17 November 2005

Community Patents Overview

The other thing I have done today is to transpose and upload my "Community Patent Overview" from Nov 2005 to complement my 1997 commentary on the Commission green paper on reviving the Community patent proposal.

I am now off to the Business Enterprise Exchange seminar and exhibition in Manchester which promises to be very interesting.

Patents: Lemelson in the News Again

On 11 Nov 2005 I posted an article on my nipc Invention blog on the Lemelson Center at The Smithsonian in Washington. The centre was made possible by a gift from a charity set up by the late Jerome H. Lemelson who was one of the most prolific inventors in the USA and an example to independent inventors everywhere.

I am indebted yet again to Dennis Crouch who has brought to my attention some litigation involving one of Mr Lemeslson's patents ("Court invalidates more Lemelson Claims"). The Court of Appeals for the Federal Circuit had already dismissed an appeal from the District Court invalidating several of Mr Lemelson's claims because of unwarranted delays in prosecution which had somehow managed to extend the term of one of Mr Lemelson's patents for years (see Mr Crouch's commentary of 9 Sep 2005). In its response for a request for a rehearing the appeal court extended its censure of the claims in the patent in suit to all the claims of all associated patents (see the amended judgment of 16 Nov 2005).

Sometimes it makes sense to take "no" for an answer.

16 November 2005

Patents: Respective Jurisdiction of National Courts and the EPO - ITP SA v Technip Offshore UK Ltd

An interesting case from Scotland on the relationship between national courts and the Boards of Appeal of the European Patent Office was reported yesterday. It came just as I was transposing my case note on the Court of Appeal's judgment in Boston Scientific Limited and Another v Julio C Palmaz and Others [2000] EWCA Civ 83 (20 March 2000) where much the same point had arisen.

In ITP SA v Technip Offshore UK Ltd [2005] ScotCS CSIH_76 (15 Nov 2005) the "pursuer" (what the Scots call a claimant and what we used to call a plaintiff and the Americans and some other folk still do) brought proceedings for the infringement of a European patent. The defenders ("defendants") counterclaimed for revocation of the patent. The "proof" (trial to you and me) lasted three weeks (shades of the trial in Buchananan v Alba Diagnostics where they appear to have conducted experiments in the well of the court). The claim was heard by Lord Nimmo Smith who held on 26 Aug 2005 that the patent was valid and infringed.

While all this was going on in Edinburgh, the defenders had already started opposition proceedings in the European Patent Office and although these failed in the Opposition Division the defenders eventually succeeded before the Board of Appeal. The effect of the successful opposition was, of course, to render the patent void ab initio which meant that the defenders had to be "assoilzied" (lovely word isn't it - I believe it means "exonerated"). At the appeal hearing in Edinburgh, the pursuers argued that the decision in Munich violated their rights under the European Convention of Human Rights but the Inner House (the Lord President, Lord Macfadyen and Sir David Edward, Q.C) wouldn't buy it (see their "opinion" (judgment" of 23 Nov 2004)). As the Lord President pointed out at para [28]
"even if the application were held to be both admissible and well-founded, this would not, of itself, have any effect on the revocation of the pursuers' European patent. The ECHR cannot require the European Patent office to reinstate the pursuers' patent. It might, at most, award monetary compensation for loss of the patent. Whether, and with what effect, any measures might subsequently be introduced to enable the decision of a Board of Appeal to be reviewed cannot, at this stage, be more than a matter for speculation."

Now a three week trial must have cost quite a lot of money and the pursuers argued that having won all the way in Scotland they should be allowed to keep the "expenses" (costs) of the Scottish proceedings. The defenders countered not unreasonably that they had won at the end of the day. The matter came on again before the First Division of the Inner House of the Court of Session and their lordships found again for the defenders. The Lord President put the position very bluntly:

The revocation of the patent by the Board of Appeal provided the defenders with a conclusive answer to the pursuers' action and an unanswerable basis for their counterclaim. In the ordinary course the expenses of the proceedings are awarded in favour of the successful party. Is there any reason why there should be any other result? The pursuers rely on the fact that they were entirely successful before the Lord Ordinary. However, this is not a true situation of divided success. The defenders reclaimed against the merits of the decision of the Lord Ordinary in a number of respects. The grounds of appeal which they tabled for this purpose were not abandoned but, in the unusual circumstances which had occurred, withdrawn and superseded by a new ground founding on the decision of the Board of Appeal. In these circumstances the court is not in a position to say whether the decision of the Lord Ordinary would have been affirmed or reversed. The pursuers chose to raise the action against the defenders - mainly, it seems, with a view to recovering an account of profits - at a time when they knew that the defenders were insisting on challenging the validity of the patent. There is no question of their having been misled by the defenders into raising the action. They took the risk that the action might come to grief if the proceedings in the European Patent Office went against them, as is illustrated by their unsuccessful attempt to obtain the discharge of the proof." (my italics)

Hard not to agree with that. Nowadays, the Scots like the rest of us have the option of an opinion by Peter Hayward of the Patent Office on validity and infringement for £200. They can actually hear how the system works from the man himself if they travel to BPP Law School in Leeds on 24 Nov 2005. That's also the day we the new 24 hours licensing regime comes into effect in England and Wales.

More New Stuff: Biotechnology

I have today revised and uploaded my article on The Patents Regulations 2000 which implemented the Biotechnology Inventions Directive (Directive 98/44/EC) in the UK. I have also re-edited Alex's excellent article "Shedding Biotechnology's Bad Name". I have also put some new case notes and articles on practice to my own and chambers' websites including direct links to some of our PowerPoint presentations over the last year.

Talking of personal websites, Alex now has his own at http://www.coralhouse.co.uk/.

I have also made a few changes to Lois and Alex's personal pages on the chambers' website.

Updating websites is a bit like painting the Forth bridge. Does anybody ever get any work from their website or blogs for that matter?

14 November 2005

Nigeria: Anti-spam Measures

Another interesting post that I flagged while on jury service was a seminar in Nigeria on economic crime under the auspices of that country's Economic and Financial Crimes Commission. It was brought to my attention by a newsletter from my broadband service provider Zen Internet for which many thanks.

Much of the focus of this seminar was on what the Nigerians call "419 fraud" after s.419 of their Penal Code. This is "advanced fee" fraud that has been going on to my knowledge a lot longer than the internet. I used to marvel that people posing as "Chief This" or "Dr That" in the "Ministry of Something or Other" in Lagos or somewhere kept much better tack of my changes of chambers address when I moved from Manchester to London and then back to Manchester again than my solicitors or even the Bar Council. The first time I got a fraudulent request to open a bank account, I called the police only to be told by the very bored detective that he could paper the whole of Scotland Yard with these epistles. There is a rather amusing story of the biter being bit on the BBC website from last year "Turning the tables on Nigeria's e-mail conmen".

There are some good presentations on the Commission's website. The slides of a paper by Suresh Ramasubramanian, Manager, Antispam Operations, Outblaze Limited, Hong Kong are particularly interesting. The slides can be downloaded from the download centre.

As a friend of West Africa (my wife is of Sierra Leonean origin as indeed is Lois), I sometimes worry about the negative and obvious deterrent to foreign investment of stories like this. I have to emphasize that there are a lot of positive things about Nigeria and its neighbours. The excellent online collection of statutes, law reports and other materials from Nigeria Law which I mentioned in this blog in Nigerian Copyright Law a few weeks ago is just one example in our area.

Patents - Excluded Matter: Re Crawford's Patent Application

This is another post CFPH and Halliburton decision on "excluded matter" which took place while I was on jury service. In Crawford [2005] EWHC 2417 (Patent) (4 Nov 2005) Mr Justice Kitchin dismissed an appeal from Mr Jones's decision of 8 June 2004 upholding the examiner's objections to an application for a patent for a display for indicating whether a bus is available to pick up passengers or not, on the ground that the claimed invention was "no more than a method of doing business or the presentation of information" and did not make the technical contribution required to make an otherwise excluded invention patentable.

His lordship reviewed s.1 (1) and (2) of the Patents Act 1977 as well as Fujitsu Limited's Application [1997] RPC 608, Halliburton Energy Services v Smith [2005] EWHC 1623 (Pat) and CFPH's Applications [2005] EWHC 1589 (Pat). He did not detect any difference in substance between CFPH, Halliburton and Fujitsu. At the heart of all those decisions is the consistent principle that an inventor must make a contribution to the art (that is to say the invention must be new and not obvious) and that contribution must be of a technical nature (susceptible of industrial application and not within one of the areas excluded by both statute and the European Patent Convention.

The hearing officer appeared to have followed that approach and applied the correct principles. The only advances in the art which were said to be new and inventive were the nature of the information to be displayed on the outside of a bus and the method of operating a bus in exit mode. These were not, individually or collectively, of a technical nature. The information to be displayed is the presentation of information. The method of operating a bus in exit mode is a method of doing business.

More New Stuff: Computer Contracts

I have uploaded pages on computer contracts and computer supply disputes on to our chambers website. More to follow over the next few days.

Chambers Website: New Stuff

I have been busy with the Chambers website this weekend. In addition to the "Arbitration Overview" to accompany the litigation pages that I mentioned yesterday, I have put up a calendar of all the events in which I am speaking or otherwise involved between now and the end of February 2006.

I have also put up the PowerPoint slides for one of the talks I gave at Bradford Chamber of Commerce on 4 March 2005 as well as an afternoon seminar that Lois Cole-Wilson and I gave to Langleys in York on 7 Jan 2005.

I am aiming to upload the best of NIPC's presentations since we started in 1997.

On Saturday, I said that Lois was our IP crime expert. The presentation that she gave to Langleys was on that subject.

13 November 2005

‘All You Are Ever Likely to Need to Know About Patents So long As You Stay In Manchester’

Manchester Law Society
Friends Meeting House
6 Mount Street
Manchester
M2 5NS

Wednesday 15 Feb 2006
17:30 - 19:00
£50.00 + VAT for members £75.00 + VAT for others
Advanced Seminar: ‘All You Are Ever Likely to Need to Know About Patents So long As You Stay In Manchester’
I know this is a cheeky title for a talk to the eminent lawyers of our second city but it is one way to get an audience. I gave a similar talk to the same group a few years ago and they have invited me back.

This time I shall be trying something new. I have divided the talk into the four topics upon which I am most frequently consulted, namely:
o The best way of protecting a client’s investment in R & D;
o Disputes between joint inventors and others seeking rights in same invention;
o Infringement and revocation disputes;
o Commercialisation.

I will deal with each topic in a Socratic manner. For instance, on the best way to protect investment I will come up with three hypothetical new products or processes, two obvious and one border line (business method with excluded method but with enough to clear the obvious thresholds) and we will discuss.

Similarly, the discussion on infringement and revocation disputes will not be confined to CPR Part 63 and the Patents Court Guide (though they will indeed be covered) but will address choice of forum, funding and the Patent Office's new advisory opinions service.

I am pulling out all the stops for this one so you will get a really, really, good talk. Call Donna Brown on +44 (0161) 819 1927 or email her on DonnaBrown@manchesterlawsociety.org.uk to book your place.

Chambers Website Update

I have just uploaded the following pages to our chambers website:
- Advocacy: Intellectual Property;
-Chancery Business
- Litigation Overview
- Interim Injunctions
- Search Orders
- Freezing Injunctions

- Security for Costs.

12 November 2005

Enforcement: So you want to sue someone

I have just uploaded on our other blog the first draft of the text of an information leaflet that I intend to give to all clients (or their solicitors and patent agents) who tell me they want to institute proceedings. I also intend to put it on the Huddersfield and some of the other inventors' websites.

I have been at the Bar for many years and the usual outcome to litigation is that one or both of the parties run out of cash or more likely interest. Some blame their lawyers for not pointing out what is involved. They can't say that of me in future.

IP Crime

Having just finished jury service, I thought I might say a word on IP crime. This is area of law that I don't practise but it is one that my tenant, Lois Cole-Wilson, does.

States that are members of the World Trade Organization are required by art 61 of TRIPs to provide for criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale. Remedies must include imprisonment and fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies are to include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may, but are not bound, to provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.

On 30 Jan 2003, the EC Commission proposed criminalizing all serious IPR infringements in a directive on measures and procedures to ensure the enforcement of intellectual property rights but that was opposed by various member states, including the UK, and did not appear in the legislation actually adopted (Directive 2004/48/EC). Not to be deterred, the Commission has reintroduced the possibility again in a proposal for a directive on criminal measures aimed at
ensuring the enforcement of intellectual property rights
(see "Porridge for Patent Infringement?" 22 Aug 2005). This proposal does not appear to enjoy anything like universal support (see "Porridge for Patent Infringement No 2" 19 Oct 2005).


The DTI's Innovation Report "Competing in the Global Economy: The Innovation Challenge" proposed greater co-ordination between the Patent Office, police, local authorities and others in combating counterfeiting and piracy with the result that an IP Crime Group has established which has published a National IP Crime Strategy.

One of the the things that appears to have resulted from the strategy is a useful list of IP offences on the Patent Office website "At a Glance 'Guide to Offences'". These are enforced primarily by local authority trading standards officers who by and large do not have enormous resources. Further information on the topic is at Trading Standards Central.

Anyone wanting to learn more of this subject should call Lois on +44 (07901) 835701 or email her on Loisekcw@aol.com

10 November 2005

Copyright: US Copyright Infringement Bill

According to an article by Anne Broach "Justice Dept. pushes stiffer anti-piracy laws" published in today's ZD Net News, the US government is pressing for substantial amendments to US copyright law which would increase criminal penalties for piracy, expand criminal prosecutors' powers and introduce a new offence of attempting to infringe a copyright. I have looked at the bill and it seems to me that it does nothing more than carry into effect the US government's obligations under art 61 TRIPs. It certainly does not go anything like as far as the EC Commission has proposed for us (see "Porridge for Patent Infringement" 22 Aug 2005).

Patent Agents: Mutant Ninja Defences

A patent point of sorts came before Mr Justice Peter Smith today. In Finecard International Ltd (t/a the Ninja Corporation) v Urquhart Dyke & Lord [2005] EWHC 2481 (Ch) (10 Nov 2005) The claim was a negligence action against a firm of patent agents but it required his lordship to construe s.33 and s.68 of the Patents Act 1977.

The issue arose as follows. The claimant company had been granted an exclusive licence for a patent on 1 July 1997 which it registered on 9 Dec 1998. On 9 Sept 1999 it was granted a new licence for the same patent which was backdated to 1 July 1997. It instructed its patent agents to register the new licence on 12 Jan 2000 but they did not actually do so until 2 July 2001. In the meantime, the claimant brought proceedings against various defendants for infringement of that patent which were successful. However, because the second licence was registered late the claimant was refused damages for infringement for the period between 9 Sept 1999 (when the second licence superseded the first) and 2 July 2001 (when that licence was actually registered). Mr Justice Peter Smith noted that the claimant alleged that this delay in registration had cost it nearly £1.32 million.

The reason that damages were refused for the period between 9 Sept 1998 and 2 July 2001 was that s.68 of the 1977 Act provides:
"Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, the court or the comptroller shall not award him damages or order that he be given an account of the profits in respect of such a subsequent infringement occurring before the transaction, instrument or event is registered unless:
(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter."

Accordingly, the claimant sought the lost £1.32 million from its patent agents.

Part of the patent agents' defence was that the claimant fell outside s.68 because it did not become an exclusive licensee upon the execution of the second licence. It merely got a more extensive licence. The hearing before Mr Justice Peter Smith was an application for summary judgment on that part of the defence under CPR Part 24.

The defendants resisted the application on a number of interesting grounds. One argument was that the second licence did not automatically destroy retroactively any of the rights under the first agreement in the law of New York which governed that agreement. That argument did not cut a lot of ice with the learned judge. He accepted the claimant's argument that the point was irrelevant because the defendants' retainer was to shield the claimant from any risk of liability. In any case, the defence had to fail because the only contract that could have given the claimant title to sue at the material time was the 1999 agreement. Accordingly, he struck out the defence.

09 November 2005

Copyright: US Supreme Court declines to review Krause v Titleserve Inc.

I was released from jury service yesterday. Having caught up with some urgent business that just could not wait I can now begin to resume normal blogging. The most interesting news item that took my fancy is a report by Anne Broche of ZD Net that the US Supreme Court will not review the Second Circuit's decision in Krause v Titleserve Inc. and others.

In that case the Court of Appeals for the Second Circuit dismissed a computer programmer's claim against his former employers for infringement of copyright for circumventing a software lock. The case turned on the construction of s.117 (a) of the US Copyright act (17 U.S.C. § 117(a) which provides that notwithstanding the provisions of s.106 (which generally provides, inter alia, that copying of a protected work infringes copyright), it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner.

Very briefly, the claimant complained that the defendant company had altered 8 programs he had written for that company over many years. The claimant had placed locks on the code and stipulated that the defendant could run but not alter the programs without his consent. The defendant's employees unscrambled the locks in order to fix bugs and to perform other "routine" functions. The question was whether they were entitled to do so under the s.117 (a) exception. The court found for the company at first instance and that decision was confirmed on appeal.

The Court of Appeals' judgment is an exhaustive analysis of that exception. Appeal does not lie to the federal Supreme Court as of right in most instances. It is in any cases more like a review by the Administrative Court than an appeal to the House of Lords. The decision not to hear the case does not necessarily close the avenue for further consideration of the issue of law for all time but it is likely that the Second Circuit's judgment will remain in force for some time.

03 November 2005

Patents: Damages for Infringement of Partially Valid Patents

Case Note: Unilin Beheer BV v Berry Floor NV (No. 2) [2005] EWCA Civ 1292 (3 Nov 2005)

The reason why you have not heard from me since Sunday is that I have been doing jury service in Bradford. Consequently, I have had to spend time that I would usually give to this blog on paperwork and urgent correspondence to make sure that I still have a practice when I finish.

As the ancient exemption from jury service of the legal profession was abolished by s.321 of the Criminal Justice Act 2003, which would have been a Home Office Bill at the time that Mr David Blunkett MP was Home Secretary, I was not quite so sorry for him yesterday as I might otherwise have been. However, I may have been unjust to Mr Blunkett because a google search revealed that the proposal to abolish our exemption came from Lord Justice Auld in his Review of the Criminal Courts of England and Wales. Although I have been put to a lot of inconvenience and expense as a result of sitting on this jury I have gained insight into an area of the administration of justice that I would otherwise have ignored. I have to add that the advocacy of the young counsel who represented both sides today was impressive and I was very proud of my profession.

Changing the subject, the Court of Appeal has just delivered judgment in Unilin Beheer BV v Berry Floor NV (No. 2) [2005] EWCA Civ 1292 (3 Nov 2005). This was an appeal from David Young QC sitting as a judge of the Patents County Court. In Unilin Beheer BV v Berry Floor NV (No. 1) [2004] EWCA Civ 1021 (30 July 2004) the Court of Appeal affirmed Judge Fysh QC's judgment that two out of 21 claims of a patent that had been amended before the commencement of proceedings were valid and infringed. Upon an inquiry as to damages following the appeal, the defendants argued that the patentee was not entitled to damages because it had failed to prove that its patent had been framed with reasonable skill and knowledge.

The defendants relied on s.63 (2) of the Patents Act 1977 which provides:
"Where in any such proceedings it is found that a patent is only partially valid, the court or the comptroller shall not grant relief by way of damages, costs or expenses, except where the [plaintiff] claimant or pursuer proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court or the comptroller may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court or the comptroller as to costs or expenses and as to the date from which damages should be reckoned."
The deputy judge had rejected their submission and the Court of Appeal upheld him. On the trial on liability, the judge had found that some parts of the specification were redundant and ought to have been removed and that the failure to remove them betokened lack of reasonable skill but those parts were not the parts that had to be amended.

Counsel for the defendants had argued that:
(1) a patentee who has amended his patent should be regarded as the grantee of an indulgence;
(2) if before amendment, he committed the past sin of framing the specification without reasonable skill and knowledge, he must be punished for that sin by depriving him of damage; and
(3) this punishment must be visited on him even though the fact that the patent needed amendment was not his fault.
Lord Justice Jacob rejected that submission as "medieval". He added, however, that on any view any absence of skill and knowledge was irrelevant because the passages criticized by the judge did not relate to claims that had been found to be valid and infringed.

Referring to Codex v Racal-Milgo [1983] RPC 369 his lordship noted that s.63 (2) did not apply to accounts of profits. He queried whether the section was compatible with the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights). In his view, it was "probably time these provisions were reconsidered."