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Showing posts from 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 Mowb…

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.

IP Centre of Excellence: Patent Office Opinions

The launch of the IP Centre of Excellenceat BPP School on 24 Nov wasa 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 …

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 …

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 deci…

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 cha…

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…

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 Diagnosticswhere 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 t…

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?

Nigeria: Anti-spam Measures

Another interesting post that I flagged while on jury servicewas 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…

Patents - Excluded Matter: Re Crawford's Patent Application

This is another post CFPHand 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 de…

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.

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

Image
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 bord…

Chambers Website Update

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 …

Trade Marks: Registry Works Manual

Copyright: US Copyright Infringement Bill

According toan article byAnne 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 l…

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 adaptat…

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 in…