NIPC Law

I am grateful to Dennis Crouch of the excellent American blog Patently O for attracting my attention to a wonderful new resource offered by US patent attorney James Hawes (" Website: Comprehensive Intellectual Property Law Book Reviews") . I have visited Mr Hawes's site and recommend it. More than 170 IP law and practice books are said to be reviewed on that website. They are arranged in 4 main groups "Patents", "Trade Marks", "Copyrights" and "Licensing" (all of which are subdivided) and smaller groups for trade secrets, unfair competition and anti-trust and general and miscellaneous. There are a few titles on foreign law but the only one on English law that I refer to occasionally is the "CIPA European Patents Handbook". However, there were plenty of US authors we know well on this side of the Atlantic such as Nimmer and Scott. I have bookmarked this site and it will certainly be my first port of call when I require ...

My rather cheekily entitled presentation to Manchester Law Society on basic patents which I gave at the Friends Meeting House at Mount Street on 15 February 2006 is now up on our IP/it-Update website. We did not exactly have a bumper turnout but what we lacked in numbers we certainly made up for in quality. The meeting was chaired by one of my old instructing solicitors, Tony Healy (formerly of Vaudreys but now at the Bar - the KRO Bar that is - not the Baa bar as Ilanah Simon once called my branch of the legal profession) and we had an interesting question from a young lady from Pannones. One of the chaps who had been booked for the talk and whom I had been looking forward to seeing again was another of my old clients (formerly of Keoghs and one or two other firms since) who subscribes to this blog. Like the lady solicitor in Dundee he is also pretty good at German and I am sure he would help those who want to consult the German patent office's football website . For him and ever...

This is a very old case note that I originally wrote in 1999 but it is still an important one. According to Google, I am the only person on the internet to have reported this case. Ansys Incorporated v Lim Thuan Khee and Another (1999 Mr Justice Parke 19 May). Its lesson is the need to choose proper law clauses with care and to relate them to the procedural and insolvency laws of the jurisdiction in which they will be enforced.

Europe has had a common patent office acting as agent for the governments of the nation states of Europe for well over 30 years but it has 31 different legal systems for enforcing such patents. The procedures and costs of those 31 jurisdictions differ widely. According to Annexe 1 of an Assessment published today by the European Patent Office the overall cost for each party of a patent case with a sum in dispute of €250 000 is estimated to lie at around €50 000 at first instance and €90 000 at second instance for both validity and infringement in Germany, between €50,000 and €200,000 at first instance and €40,000 and €150,000 in France, between €60,000 and €200,000 at first instance and €40,000 and €150,000 in the Netherlands and between €150,000 to €1,500,000 at first instance and €150,000 to €1,000,000 at second instance in England and Wales. At intergovernmental conferences held in Paris in 1999 and London in 2000 a working party was set up to propose an optional agreement on an ...

Coming from Manchester I could not resist mentioning the special world cup website Fußball und Technik ("Football and Technology") that has just appeared on the German Patent and Trade Marks Office website. This ought to interest Sir Robin Jacob who is (or at least was) a keen football fan. I remember that Hayley French tried to present him with a Chelsea shirt after dinner at the AGM and conference of the Britain and Ireland branch of the LES (Licensing Executives Society) which took place at Chelsea Football Club when he was installed as honorary president (or patron) of the branch a year or so ago. Sir Robin thanked her very graciously but confessed he couldn't wear it because he supported another team. The home page of the site asks "Football and technology - how do they go together?" On the introduction (" Einfuhrung ") page there is an explanation as to what this site site is about, what is inside it and developments. On the technology (" T...

The Gowers Review of Intellectual Property (already covered in this blog Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property on 5 Dec 2005) has issued a public call for evidence. The call for evidence consists of a letter from Andrew Gowers , accompanying an issues paper , which provides details of the scope of the Review and sets out a number of general and specific issues on which the Treasury would particularly like to gather evidence. There is also a response sheet .

I have updated and transposed from the old Kingsgate Chambers website the overview on computer contract litigation that I first wrote in 2000 for the Old Colony House website and last updated in 2002. Most of the updates have been links. The most significant developments have been a new Technology and Construction Court Guide which came into force on 5 Oct 2005 (already noted in this blog "Computer Supply Litigation: New TCC Guide takes effect from 5 Oct") and a new version of the TeCSA (Technology and Construction Solicitors Association) Expert Witness Protocol .

I know that Mr Justice Pumfrey's judgment in Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat) (2 Feb 2006) has been picked over more times than a turkey on Boxing Day but I make no apologies for reviewing it now. First, it is an important case, particularly in view of Research in Motion's litigation in the USA (see Anne Broach and Tom Krazit " BlackBerry case: No shutoff, for now" 24 Feb 2006 ZD Net). Secondly, I am a barrister and not a journalist and just now I am very busy. This was a claim by the British subsidiary of RIM (the Canadian company that created the "Blackberry" ) for for revocation of EP (UK) 0 892 947 held by Inpro Licensing SARL ( "Inpro" ). The patent in suit proposed various ways of 'pre-treating' web pages before they are downloaded. The advantage of such pre-treating is that it cuts out a lot of the processing that is normally required by a web browser thereby making it quicker and easier to ac...

I have also updated and transposed case notes that I originally wrote in 2003 and 2005 respectively on Douglas and others v Hello! Ltd. and others. Although the Court of Appeal reversed Mr Justice Lindsay's judgment and his damages award in favour of the newspaper, it still contains useful (and hence applicable) analysis. Not a bad weekend's work I hope you agree.

I have updated and transposed the e-commerce basic information from the old IP/IT Update site. This began life as a handout for a talk that I gave in July 1999 to an organization called YIPOF (Yorkshire Intellectual Property Owners' Forum) started by my friend, Jonathan Armstrong , when he was at Keeble Hawson . This article lists the basic issues of e-commerce law and introduces the responses at UN, European and national levels, that is to say the UNCITRAL e-commerce and electronic signature model laws, the e-commerce, electronic signature and distance selling directives, the RIPA and Electronic Communications Acts 2000 and the E-commerce Regulations. I have now added the PowerPoint presentation and handout for a seminar that I did in 2002. It covers the e-commerce regulations plus data protection and domain names. The law has changed a bit since then but it is still worth reading. I am particularly proud of the domain name practical exercises which highlight the differences betw...

I had a really good day yesterday in London on Thursday. I spent the morning and early afternoon at the offices of Mischcon de Reya who are on the other side of a copyright and trade mark infringement and passing off claim. In the afternoon I met a public access client at The Crown Tavern in Clerkenwell Green. But the best part of the day was the sole practitioners and small firms' evening held in the same pub than ks to the generosity of Jeremy Phillips and Ilanah Simon . NIPC were there in force, that is to say Lois and I were there. So, too, were Kate Reid (a new specialist intellectual property firm in York which I mentioned in my post of the 9 Sep 2005 " More IP Specialists in the North "), patent agent Richard Gallafent and Human Law blogger Justin Patten . I also met Chris Rycroft of OUP whom I had missed on the launch of the JIPLP on 1 Dec 2005 and the remarkable Margaret Briffa with whom I had previously only corresponded. In his introduction Jeremy disclosed...

This case was about scintillation. The invention for which a European patent had been granted was a scintillation proximity assay. Essentially that involves a surface carrying a phosphor being contacted with a body of fluid containing a radioisotope. As Mr Justice Kitchin explained: "When some of that radioisotope becomes bound next to the surface carrying the phosphor, the radioactivity emitted by the radioisotope causes the phosphor to be excited and emit light. The amount of light produced is proportional to the quantity of radioisotope bound to the surface and can be measured by a scintillation counter. The radioactivity emitted by the radioisotope which remains in solution is absorbed by the fluid. In this way, bound radioisotope gives rise to a scintillation signal but unbound radioisotope does not, and this has the benefit that there is no need to separate the one from the other as is the case with conventional radioimmunoassays. For this reason, SPAs are known as homogeneo...

Yesterday I downloaded and installed Skype VOIP software and tested it out with calls to friends in North Carolina, Sierra Leone and my fille manquee in Thamesmead. It all worked pretty well, especially the call to Freetown. I was connected in seconds. My wife's family comes from those parts so we make quite a few calls to that country There have been times when I have had to wait hours for BT to get through. When I have got through there has been an echo on the line. This time, the reception was as clear as a bell. Best of all was the tariff. I paid €0.02 per minute for the USA and €0.28 for Freetown including Luxembourg VAT. If my US and Freetown friends had already downloaded Skype software it would have cost us nothing. For a few euro more one can get a local telephone number and voice mail in any one of several countries which relay the call to one's PC if connected to the internet or to voice mail or any other number if not. I took lines in LA ((213) 985-3546), New York...

I spent a very interesting day at Halliwells' offices in Manchester today listening to Andrew Fraley on time limited mediation. My father, who was a schoolmaster, often remarked that the best teacher training manual that he had ever read was Nicolò Machiavelli's "Prince" . After hearing Andrew, I have to conclude that mediation is pretty Machiavellian as well. Andrew's rates for what he calls a "Mediated Settlement Conference" are £495.00 + VAT per party. These can last anything from 40 minutes to 6 hours. He walked us through a typical mediation from the moment he arrives at the reception of the venue genially wishing everyone who comes in "good morning" to the time he draws up heads of agreement. He keeps formal joint sessions to a minimum, rarely reads papers and concentrates entirely on the process of dispute resolution at the expense of the content of a dispute. He begins the process by asking the parties what they want to achieve from t...

I have updated and transposed IP and Development which serves as an introduction to such topics as medicines licensing and traditional knowledge which have already been discussed in previous posts: (1) Intellectual Property shouldn't be just for the Rich and Powerful Part II (2) Needled in Geneva (3) This and That The article links to a number of other good sites including IP Watch , QUNO and the Commission on IP Rights .

Copyright Tribunal I have just transposed and updated an article I first wrote in July 2002 on the Copyright Tribunal putting some links through to my pages on database rights and rights in performances . Moral Rights for Performers On the subject of rights in performances, The Performances (Moral Rights, etc.) Regulations 2006 which I first discussed in Moral Rights for Performers: Draft Regs on Patent Office Website on 21 Oct 2005 came into force on 1 Feb 2006. Reg 6 of these regulations introduces new ss. 205C to 205N into Part II of the Copyright Designs and Patents Act 1988 providing for a right to be identified as a performer on condition of assertion and a right to object to derogatory treatment which are enforceable by civil action. More on these regulations later.

Some of my readers on this blog may be interested in an article on US patent insurance on the US subscription service IP360 which I have mentioned on Invention (my blog for inventors). As I say in that post, it is interesting that Americans feel the need for patent insurance at all given that some US lawyers will accept instructions on a contingency fee, costs rarely follow the event, the absence of threats actions, the doctrine of equivalents, the fact that one does not usually have to publish applications and many other things.

There may not be a post tomorrow because I shall be off to York Races all day. Not for the horses mind but for the annual exhibition and conferences known as "Venturefest". Many of my chums will be there, law firms Denison Till, Langleys, Keeble Hawson and Harrowell Shaftoe, patent agents Novagraaf and Murgitroyd, West Yorkshire Ventures, Business Link West Yorkshire and NESTA and our very own Nadio Granata of Huddersfield who will be giving one of the talks. Last year was fantastic. This year should be good too.

My thanks to Baker & McKenzie for bringing this news to my attention. A press release by the World Association of Newspapers dated 31 Jan 2006 announces that: " A task force of global and European publishers organizations, led by the World Association of Newspapers, has agreed to work together to examine the options open to publishers to assert their rights to recognition and recompense, and to ultimately improve the relationships between content creators/producers and news aggregators and search engines." This is not as yet a threat of litigation though the press release specifically refers to the possibility of "copyright enforcement and brand infringement" and mutters darkly about "Napsterization’ of content" („Napsterisierung“ in the German version). At least part of the campaign will be political. The press release states that the Association seeks meetings with Charlie McCreevy and Viviane Reding. Ominously, the offices of the Newspaper Associati...

On 26 Jan 2006 the CA gave judgment in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and another [2006] EWCA Civ 16 (26 Jan 2006). This long running punch-up concerns the "functionality principle". Lord Justice Mummery summarised its as follows at para [5]: "The principle ensures that shape marks, like other trade marks, are indicators of the origin or source of the goods in question. They do not enlarge the scope of trade mark protection to cover technical solutions for the goods themselves. Other forms of intellectual property, such as patents, designs and copyright, are available for the protection of particular rights of defined scope and limited duration in specified aspects of the goods themselves. If trade marks were allowed to confer rights in technical solutions for the goods themselves, legitimate competition in the relevant market for the goods would be impaired. A shape mark registered in breach of the functionality principle would ena...

I have updated and transposed two articles which used to be on the old Kingsgate blog. The first is on Enforcement . I first wrote that page in 2002 and the main changes have been the expansion of paragraph 4 of PD-Protocols and Michael Skrein's excellent Code of Practice for Pre-Action Conduct in IP Disputes. I refer to it every time I settle a letter of claim or indeed letter of response and can't understand why more practitioners don't do likewise. The other article is my old case note on Canon Kabushiki Kaisha v Green Cartridge Co. (Hong Kong) Ltd [1997] UKPC 19 (30 April, 1997) which more or less put the lid on the British Leyland defence. It is still an important case. I know there are several important decisions of the CA and Chancery Division including one patent case to be discussed. I will get round to them. I am just rushed off my feet right now working round the clock.

As most of you know I run another blog for inventors and other members of the public called nipc Invention. Recent articles on that blog that may be of interest to readers on this include: Huddersfield Inventors: New Inventor and Service Provider Members : we have had many enquiries over the last few days including local success story Varyflush and Nadio Granata's PNG Marketing IP Insurance : Two more Insurers Identified - two more brokers to add to those identified in IP Insurance on 3 Sept 2005; and Forthcoming Events : a selection of some exciting IP events in the North of England in February presented by my chambers or by inventors' clubs or other groups in which members of my chambers are involved.

I have found time to update and transpose two more old case notes: namely Biotrading & Financing OY v Biohit Ltd , a case on Euro defences, and Butterfly Music Srl v Carosello Edizioni Musicali e Discografiche Srl , a case on the effect of the Term Directive on accrued rights.

I have updated and transposed the " Assignment" and " Copyright Conventions " pages from the old IP/it Update website. I have also linked those pages through to my articles on TRIPs and Paris which were already up there. This resource is coming on nicely.

There is a think tank in America called " The Project for the New American Century ". Its website states that it is a "non-profit educational organization dedicated to a few fundamental propositions: that American leadership is good both for America and for the world." Whether or not American leadership is a good thing is not a topic for discussion on this blog, but, if the phenomenal growth in PCT activity of Japan, South Korea and China is anything to go by, the discussion will be otiose. Although the USA is still the top country of origin for PCT applications with 45,111, the percentage increase in the number of applications since the previous year was only 3.8% compared to 4.0% for Germany, 6.6% for France, 24.3% for Japan, 33.6% for South Korea and a whopping 43.7% for China. The only major industrial country to have done worse than the USA is the UK with a percentage increase of only 1.5%. I should not be surprised if that is in no small part the result of loo...

The reason why this blog has been quiet over the last few days is that I have been working on the website for HI. HI stands for Huddersfield Inventors and is a club for businesses and individuals with bright ideas in the metropolitan borough of Kirklees. The strapline for HI is "... exploiting bright ideas from Huddersfield" and we hope to do that through: Events like talks, workshops, clinics, exhibitions and brainstorming sessions, Providing a venue for inventors to meet funding bodies, lenders, investors and others, and Negotiating concessions and discounts from those who provide services to inventors. There are two classes of membership: - inventors in Kirklees (the people for whom this club is founded and who I hope will eventually take over management from me and run it for themselves in the way that the Blackburn , Croydon and Wessex run their clubs); and service providers such as patent agents, lawyers, funding agencies, universities, IP insurers and just about a...