26 January 2006

Trade Secrets: Environmental Technologies v Symphony

Two fascinating decisions from the Court of Appeal today: Environmental Technologies Inc (EPI) and another v Symphony Plastic Technologies Plc and another[2006] EWCA Civ 3 (26 Jan 2006) in which the Court dismissed the claimant's appeal from the decision of Mr Justice Peter Smith at [2004] EWHC 2945 (Ch) (21 Dec 2004) and Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2006] EWCA Civ 16 (26 January 2006) on shape marks. For no better reason than that Mr Justice Peter Smith used to practise in Manchester and we sometimes found ourselves against each other, I shall start with Symphony and leave the shavers for tomorrow or whenever I can next get round to them.

As I have indicated in the title, Symphony was about trade secrets. To prevent those secrets escaping beyond the Strand, both Mr Justice Peter Smith and the Court of Appeal sat in private. Both tribunals delivered judgments that were published only in part. The trial judge delivered an open portion which set his findings and a confidential one that contained his analysis. The Court of Appeal delivered just one judgment but it contains more redactions that a search for Falun Gong on a Chinese search engine. As Lord Justice Jacob feared that this editing would reduce the judgment's overall intelligibility 9paragraph [4]). His lordship never said a truer word.

For all that, the judgment is still worth reading and I think that the best bit is who has to carry the burden of proof in a breach of confidence claim. The claimants' case was that it ought to have been born by the defendants because they could raise a prima facie presumption of confidence breaching. The facts that they relied upon were as follows:
(1) The similarity of the defendants' ingredients in nature and quantities to the claimants.
(2) The fact that the defendants wanted a "seamless transition" from the claimants' product to its replacement.
(3) The fact that just over a year before the alleged analysis of the claimant's product, a Dr Whiteman, whose evidence the Judge accepted, said that at a job interview he had been asked whether he could analyse a product that was probably the claimants'.
(4) The fact that the defendants arrived at a successful formulation surprisingly quickly and without any trial and error.
(5) The fact that the defendants' witnesses were disbelieved in respect of a number of matters.

By analogy with the practice in copyright litigation that the burden of proof shifts where a claimant can show objective similarity between an original and putative copy and an opportunity for the defendant to have made a copy of the original.

Lord Justice Jacob made the point that the practice in copyright law
"is not so much a rule of law as one of rational weighing of evidence. It is simply this: if the degree of similarity between the work alleged to have been copied and the alleged piratical work is unlikely to have come about by coincidence, it is for the defendant to prove that it was. This is of course no more than an example of a shifting evidential burden."

On the facts before him his Lordship did not think the comparison the court was asked to make remotely raised an inference of copying. Lord Justice Buxton went further. He did not seem to see any point in drawing an analogy with copyright at all. There were other points but the deletions make it hard to understand them. Suffice it to say that the Court of Appeal was unimpressed.

There was another point. At trial the defendants admitted that they had failed to return confidential materials which was a clear breach of contract but it did not appear to have done any harm. The judge awarded £2 damages. The claimants sought an enquiry on the basis that the defendants had failed to return a quantity of the licensed product which fell within the definition of materials. That had not been raised at trial and in the Court's view it was far too late to raise it on appeal.

The final treat from the cookie jar is the following observation of Lord Justice Buxton in the last paragraph of the judgment:

"I for my part find it by no means straightforward to reconcile on the one hand the apparently blanket rule that any claim of breach of confidence must fail if the material in question is in the public domain (see e.g. Saltmann v Campbell Engineering (1948) 65 RPC 203 at 215.10 and Mustad v Dosen [1964] 1 WLR 109); and on the other hand the "springboard" cases, that seem to inhibit use of even public domain material if it is conveyed in circumstances that aspire to confidence: a difficulty that, with respect, is not resolved by the observations in the House of Lords in A-G v Guardian Newspapers [1990] 1 AC 109 at 285. These may be questions of considerable general importance that call for an answer in this court or, quite likely, at a higher level."

That's a judicial hint if ever I saw one. Trade marks tomorrow - shavers and if I can get round to it Antipodean UGH boots.

Bits and Pieces

The WIPO has just dropped me an email to say that Azerbaijan and Benin have signed the WIPO Copyright and Performances and Phonograms Treaties. No doubt their games software, film, recording and music industries are uncorking the champagne. Can't be bad for Hollywood or Silicon Valley either can it? For those interested in IPR and developing countries, I can't recommend too highly the excellent website Intellectual property Watch and the materials on intellectual property published by the Quaker United Nations Office in Geneva.

I should also point to a couple of posts on my other blog.

First, the magnificent Steph Aldred of Bmedi@ has published all the presentations and notes given by Janet Bray, Lucas Bateman and Ian Lewis together with my introduction and notes for the talk “Everything that a Bmedi@ Member needs to know about IP at the Outset” that we gave in Bradford on 19 Jan 2006 on her website.

Secondly, the Patent Office has published its opinion on EP(UK) 0801532 which I have already mentioned more than once in this blog. The request was made by my drinking pal Chris Hemingway of Bailey Walsh LLP who has been emboldened to make a second application (see EP0570903 Miter Saw). Bailey Walsh are soon going to corner the market for this sort of application, taking even more bread out of the mouths of patent litigators. Chris has kindly agreed to chair the next meeting of the Leeds Inventors Club which will be addressed by Dai Davis. That should be a treat for what Dai doesn't know about the topic he has chosen you could write on the back of a non-commemorative postage stamp (see "Leeds Inventors Club: You can always say Dai").

Threats Action Updates

I have just updated and transposed two articles that appeared on the old Kingsgate Chambers and Lancaster Buildings websites on threats actions.

The first of these used to be the home page for the "threats" section on the old Kingsgate website. The updates are the changes made to s.70 of the Patents Act 1977 by s.12 of the Patents Act 2004 and the creation of a threats action in respect of Community designs by reg. 2 of The Community Design Regulations 2005.

The other article is "Actionable Threats in Intellectual Property Litigation". I wrote the first edition on Prince Charles's 51st birthday (14 Nov 1999) which was after the Court of Appeal had given judgment in Unilever Plc v Proctor and Gamble Co [2000] FSR 433 but before Mr Justice Pumfrey had decided Kooltrade Ltd. v XTS Ltd. [2001] FSR 344. Indeed, I actually predicted the result of the main point of argument in Kooltrade, namely that the "without prejudice" privilege applies only to genuine attempts to settle litigation and is not a lucky charm. I never thought that I would be the one to make that argument 6 months later.

Also on the site is one half of a PowerPoint presentation that my friend, Susan Hall of Cobbetts LLP and I gave to the Northern Circuit Commercial Bar Association at the Midland Hotel, Manchester on 5 March 2002 entitled "Threats Actions: A Trap for the Unwary" together with my handout. As I have already indicated above, the law has changed a bit since 2002 so be careful how you choose it. Check the other articles or, better still, check with me on +44 (0)870 990 5081. I remember that Susan and I had a very good house despite the fact that David Berkeley QC, who was then Vice-Chair of the Association, chose that night for some kind of hospitality event for Merchant Chambers. We still managed to attract many of the solicitors in Manchester who know about IP, including Jonathan Moakes and Colin Hoffmann.

The other item on threats is an article I did last June for my colleague Toni Tease in the USA entitled "Consider the Implications of Foreign Laws Before Sending a Cease and Desist Letter". It is intended for US lawyers but non-IP litigators from the UK would also do well to read it. One of the few areas of the law where I probably have more experience than most of the London patent bar is threats actions and that is because most of my professional access clients are small suburban or country solicitors. Not that there is anything wrong with them I might add. Some of them could give much bigger Manchester and Leeds firms a run for their money and one such firm in Carnforth regularly sees them off. The reason that article appears on a US website is that the American courts award triple damages for wilful infringement but you have to put the defendant on notice that he is infringing your patent in order to claim such damages.

25 January 2006

Intellectual Property Barrister Required for Manchester

I am intrigued by an email from The Lawyer that has just appeared in my spam folder:

"Intellectual Property Barrister required by high profile Manchester law firm. Like to know more? Please forward your CV in complete confidence to recruitment@....... or contact ....... on ....... or ......"

It's an offer to forward my CV to whoever placed the ad. I am not applying though. If it really is a law firm that placed the ad and not a barristers' chambers trying to find a new market for its increasingly leisured middle ranking chancery/commercial tenants, I have seen too many of my friends in "major regional law firms" (if that is not an oxymoron*) who "have had their equity returned" on turning 40 to be tempted. Whoever paid for that ad, it shows remarkable optimism and some might say naivety.

Let's look at some statistics. According to the Patent Office (page 13 Patent Office Facts and Figures 2004/2005) some 1,583 patent applications were filed in NW England (Greater Manchester, Merseyside, Cheshire, Lancashire and Cumbria) compared to 3,657 from London alone and another 3,547 from the Southern Home Counties. Trade marks? 2,372 applications (two of which were mine) from the NW compared to 6,402 from London and 3,518 from the Southern Home Counties. Registered designs then? 313 from the NW, 764 from London and 559 from the Southern Home Counties.

Bearing in mind that patent, registered design and semiconductor topography claims have to be brought in London how much copyright, trade mark and unregistered design right work can there be for this new recruit? In 2004 only 1,977 claim forms were issued for the whole of the Chancery Division outside London compared to 4,533 for the Royal Courts of Justice (page 29 Judicial Statistics 2004). Patent Office hearing officers can, of course, sit anywhere but in practice most of the hearings take place in Harmsworth House.

However, the UK as a whole is losing work to the continent. IPAC reported in Appendix 2 to its November 2003 report "The Enforcement of Patent Rights" that an average of 25 patent actions go to trial in the UK each year compared to 200 to 300 in France, 500 to 600 in Germany and even 50 to 100 in the Netherlands. Bearing in mind that it can cost each side up to £1 million to fight in London compared to less than €50,000 in France, Germany and the Netherlands who can wonder. In the course of last year I had 4 clients with European patents that had been infringed here and elsewhere in Europe and one with patents infringed here and in the USA. I had to advise them all to litigate abroad even though I would have been delighted to have represented them here.

Having said all this, I do believe that there is a crying need for specialist intellectual property advice in Manchester. Birmingham has Wragge & Co, Leeds has Richard Kempner but Manchester has ................. well, a number of reasonably informed and competent litigation lawyers. I also believe that there is a future for specialist, self-employed advisors operating with low overheads and providing cost effective advice and representation for SME. That's why I set up NIPC in the first place and why I moved it closer to its market. What those SME need is a fence round the cliff. Not a private ambulance at the bottom.

* My wife has advised me not to use words like "oxymoron" in this post. My sentiment is that anyone in the market for this job will have to be familiar with far more obscure words than that - "synecdoche" and "metonymy" for instance.

Competition: Microsoft Settlement Possibility

I am grateful to ZDNet for this tidbit of information. According to the report Microsoft has offered to license some of its Windows Server source code to rivals in response to a statement of objections served by the Commission at the end of last year. The nub of the objection is that Microsoft has not complied with the Commission's order of 24 March 2004 to disclose to competitors within 120 days, the interfaces required for their competing products to be able to operate on Windows. Unless the order is annulled by the Court of First Instance or a settlement is reached with the Commission, Microsoft faces the prospect of a daily fine. Incidentally, a daily fine ("astreinte") is the sanction by which injunctions are enforced in civil law jurisdictions.

Copyright: Nova Productions Ltd v Mazooma Games Ltd

A good old fashioned copyright case came on for trial before Mr Justice Kitchin last month (Nova Productions Ltd v Mazooma Games Ltd and others [2006] EWHC 24 (Ch) (20 Jan 2006). The subject of the litigation was two coin operated video games. The issues in the case were whether the following copyrights had been infringed:
(1) Artistic copyright in bitmap graphics and the frames generated and displayed to users;
(2) Literary works, being design notes and the program to implement the game;
(3) A dramatic work embodied in the game itself; and
(4) Film copyright.

Since the claim focused on allegations of infringement of artistic copyright the judge analysed in some detail the House of Lords' judgment in Designer Guild Limited v. Russell Williams (Textiles) Limited ([2000] UKHL 58 (23 Nov 2000). From that case, he drew the following principles:
(1) Although the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant's work. Consequently. the overall appearance of the defendant's work may therefore be very different from the copyright work while nevertheless infringing.
(2) Accordingly, the next step in such an action is to identify those features of the defendant's design which the claimant alleges have been copied from the copyright work. Those similarities form the foundation upon which the court will proceed to consider whether or not there has been copying. In arriving at its conclusion the court will consider the similarities and differences between the works and whether or not the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than coincidence. Similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas. If the similarities are such as to raise an inference of copying the burden passes to the defendant to establish that, despite the similarities, they did not result from copying.
(3) Once copying is established then the question arises whether what has been taken constitutes all or a substantial part of the copyright work. At this point the only issue is whether or not the features which have been taken represent a substantial part of the copyright work. A visual comparison of the two designs to see the extent to which they may differ in appearance is unnecessary and liable to mislead.
(4) In assessing whether or not a substantial part has been taken it is important not to deal with the copied features piece-meal. Rather, it is the cumulative effect of the copied features which is important. The court must consider whether, taken as a whole, they constitute a substantial part of the copyright work.
Applying these principles in detail, his lordship found that there had not been copying and the claim failed.

19 January 2006

Two hundred and fifty not out - but some Stories don't go Away

My first post to this blog was "Porridge for Patent Infringement" on the Commission's proposal for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a proposal for a Council framework decision to strengthen the criminal law framework to combat intellectual property offences. Despite the appalling damage that this measure could do to European research and the chorus of disapproval from such people as Ross Andersaon of Cambridge this proposal has not been dropped. Indeed the decision of the European Court in C-176/03 Commission v Council which took limited the discretion of member states in implementing enforcement legislation has possibly stregthened its hand. The Commission's proposal is one of several bits of adopted and pending Community legislation to be affected and possibly modified by Commission v Council (see The Communicaiton from the Commission to the Council and Parliament on the implications of the Court’s judgment of 13 September 2005 (Case C-176/03 Commission v Council),

18 January 2006

Digitization: Conflict between Rights Owners and the Public?

Yesterday, the Leeds branch of the Licensing Executives Society enjoyed a masterly presentation by Andrew Finfer on Technology Transfer and Competition Law. One of the issues that our chair, Liz Ward, raised in Q & A was the compatibility of restrictions regularly imposed by the recording industry with UK and EC competition law. Her point was that these restrictions were hobbling the development of an online market in digital products. In his answer, Andrew said that similar arguments were made in respect of the distribution of consumer electronics.

I waded in with the suggestion that the two markets were quite different in that consumer electronics had to be made and stored whereas any numbers of a perfect copies of a game, film or sound recording can be disseminated anywhere in the world within seconds. I added that if the film, video and games software industries imposed tight controls over the dissemination of their products it could be because they needed it. When I was starting out at the bar pirates had to make and store discs and tapes which meant that there were warehouses that could be targeted with search orders (Anton Pillers as we called them then) or consignments detained at the ports. That's no longer the case with digitization.

After I got back from the meeting I found a very interesting article on the BBC website entitled "Fears raised over digital rights". The article highlighted a campaign by the National Consumer Council and its associates in the BEUC and USA over digital rights. There seem to be the seeds of conflict there albeit that nobody will say so in terms - at least not yet. As Andrew said at the beginning of his talk yesterday, the aim of both competition policy and intellectual property law is to promote consumer welfare.

17 January 2006

Mea Culpa: Well known Marks and Arms

I made an error in yesterday's post on the protection of the pope's coat of arms. I described the arms as a well-known mark. That's not the law. Mea culpa, mea maxima culpa.

An anonymous reader has pointed out that art 6bis Paris Convention protects well known marks and art 6ter state emblems, official hallmarks, and emblems of intergovernmental organizations. That happens sometimes when you try to inflate a story on a generally news flat day into news.

If I may be a bit impertinent in revenge, Anonymous counsels us not to confuse statutory provisions. The Paris convention is of course a treaty not a statute. But your point is well taken and thanks.

Community Patents: Maybe the Last Chance to get it Through

In a press release issued yesterday, the European Commission announced a public consultation on patent policy in Europe, more specifically on "how to create an EU-wide system of protection can best take account of stakeholders' needs". This consultation covers not just the Community patent but other ways in which the patent system could be improved in Europe. It will also cover steps that can be taken in the short term to protect the rights of inventors, investors in their technology, bankers, lenders and other short term funders, other players in the market and, most important of all, the general public.

A consultation questionnaire can be downloaded from the Commission website. It is very straightforward and not a particularly long document. It has to be returned to the Commission not later than 31 March 2006.

We really do need to do something about patent reform in the continent as a whole. Otherwise it won't be just call centres that end up in India or jeans and consumer electricals manufacturing in China but just about everything except perhaps personal services like car washing or serving chips. There is no reason why patent libraries, financial services or, indeed, patent agents, intellectual property solicitors or even intellectual property law teaching can't be supplied offshore. Globalization is everybody's problem and opportunity which means that we all have to do something about protecting our investments in branding, design, technology and the arts.

I have been rabbiting on for years about the cost of IP enforcement and patent protection in Europe and in particular in the UK. The last time I broached the subject here was just before Christmas in "Why the Country that pioneered the Industrial Revolution is falling behind everyone" which highlighted the EPO Study on the Cost of Patenting and the IPAC report on Enforcement of Patent Rights.

This consultation needs the widest possible publicity and I shall be bringing it to the attention of the North-East branch of the LES in Leeds tonight when we hear Patrick Cantrill's talk on the technology transfer block exemption, at Leeds Inventors Club tomorrow when we have the brains trust, at Bmedi@ on Wednesday and in the Huddersfield, Manchester, Sheffield and Liverpool clubs as and when we set them up.

16 January 2006

Paris Convention: Official Emblems

According to the Patent Office, the WIPO has requested protection for the new pope's coat of arms and seals under art 6ter of the Paris Convention in that they constitute the state emblems of the the Vatican. There is a delicious irony there in that the WIPO is based in Geneva which was John Calvin's home town.

The Patent Office also claims that the new arms and seals may be inspected on the WIPO website. I did have a look but all I could find were representations of the previous pope's.

One of my first posts was on clergymen registering trade marks "Hallelujah! More Entertainment from across the Atlantic" 24 Aug 2005. Even though Mr Falwell was relying on common law trade marks which suggests that he must have some sort of reputation and goodwill it is not quite the same thing as protection under the Paris Convention. Is it.

Revised 17 Jan 2005 thanks to the comment from "Anonymous" below.

Patents: First Opinion on Validity

Patent Office examiner, Rebecca Villis, published her opinion on validity in
EP(UK) 1351732 NOVO-NORDISK A/S today. It is the first to be issued by the Patent Office under the ss. 74A and 74B of the Patents Act 1977 as amended.


I have read the application and summarized it in Patents: Opinions on Validity and Infringement on 14 Dec 2005. The examiner has found that the first and second claims were not new and were obvious but all the rest of the claims were new and not obvious over the documents submitted by the requester, Robert Lind.

The opinion is open to further review under s.74B at the request of the proprietor.

15 January 2006

Geographical Indications: Commission proposes New Regulation

A "geographical indication" is a sign assuring consumers that produce comes from, or has been processed in a particular region renowned for the quality of such produce. Familiar examples include Champagne, Scotch whisky and Parma ham. "Geographical indications" are also known as indications of source or appellations of origin. In this country, geographical indications are protected by the law of passing off (see my case note on William Grant & Sons Ltd. and others v Glen Catrine Bonded Warehouse Limited and Others, registration of collective and certification marks under the Trade Marks Act 1994 and Council Regs No 2081/92 and 1493/1999. It is in respect of this special legislation that changes have been proposed.

According to the Commission, "more than 700 names, designating inter alia over 150 cheeses, 160 meat and meat-based products, 150 fresh or processed fruits or vegetables and 80 types of
olive oil, have been registered in this context." Unfortunately, that regime has been held to be incompatible with art 3 (1) TRIPs:

"Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection (3) of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the
Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS."

The Commission's proposal is in response to the WTO Dispute Settlement Board's finding of incompatibility. The main differences appear to be that the requirement for "reciprocity and equivalence" under the present legislation will be deleted and third country nationals will be allowed to submit applications as well as objections directly without involving their governments.
Furthermore, the registration procedure will be simplified. A single document for applications containing all the necessary data for registration, information and inspection will be produced. For all that, it still seems a long winded process.

14 January 2006

Disclosure: Prince Charles v Associated Newspapers

CPR 31.22 (2) permits the court "to make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public." Such orders are very rarely made because, as Lord Dunfermline put it in Scott v Scott:
"Publicity is the very soul of justice. It is the keenest spur to exertion, and the surest of all guards against improbity. It keeps the judge himself, while trying, under trial."

However, the discretion is there and an example of its exercise is provided by Mr Justice Kitchin's judgment in Prince of Wales v Associated Newspapers Ltd. [2006] EWHC 11 (Ch) (13 Jan 2006). This is a claim in which HRH is suing the publisher of the Mail of Sunday for breach of confidence and copyright infringement in respect of a journal that he kept of the visit that he made to Hong Kong at about the time of the handover to the Peoples' Republic found their way into the hands of the defendant publisher.

The judge decided to make an order under this rule for the following reasons:
(1) The documents in issue were closely related to the very subject matter which the prince was seeking to protect by means of this action and which were at least arguably confidential.
(2) The order is to last only until the disposal of Prince Charles's summary judgment application which is due to come on within a month or so.
(3) The order should make it easier to hold the trial in public.
It will be interesting to see how often this case is referred to in future.

13 January 2006

Bmedi@ Third Thursday 19 Jan 2006 - "IP for BM-all that a Bmedi@ Member or its Client needs to know about Intellectual Property at the Outset"

According to Bmedi@ Superwoman Steph Aldred we have "a good list of attendance" for the talk on intellectual property in branding and design that Lucas Bateman, Janet Bray, Ian Lewis and I intend to give between 17:30 and 20:00 next Thursday evening at the Bradford Business and Innovation Centre, but I am sure that if you call her on +44 (0)1274 841326 and talk to her very nicely or email her on Stephanie@bmedia.org.uk she might just see her way to letting you in.

If you join Bmedi@ which costs only £50 per year + VAT you can get in for nothing. If not, Steph will charge you £15 and considering that she will throw in all the pizza you can eat and all the wine you can quaff as well as hear pearls of wisdom from my guests that is pretty good value.

If you want to know of any of the other events in which we are involved, click on to the "Events" page of the Huddersfield Intellectual Property website at http://www.hip.org.uk/events.htm.

12 January 2006

Legal History: the Russian Flu Pandemic brought us Carlill - what will the Birds bring?

Today's New Scientist contains a fascinating article on the first case I ever read, Carlill v Carbolic Smoke Ball Co.[1893] 1 QB 256. Indeed, it is probably one of the first cases anybody anywhere in the common law world reads because it was one of the few English cases my US students at McGeorge had ever heard of though they would insist on pronouncing the "v" as "versus". I managed to teach them a few others like the "snail in the bottle case" though they could never see the funny side of R v Collins [1973] QB 100.

The point of the New Scientist article is that it was not just any old flu against which the Carbolic Smoke Ball promised protection but a real killer rather like Spanish flu in 1918 or perhaps (Heaven forbid) avian flu in the not too distant future. According to the New Scientist

"Whole cities came to a standstill. London was especially hard hit. As the flu reached each annual peak, normal life stopped. The postal service ground to a halt, trains stopped running, banks closed. Even courts stopped sitting for lack of judges."
It indicates the horror that Lord Esher MR had in mind when he said in Ungar v Sugg (1892) 9 RPC 113 that "a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent." I had always regarded that dicta as a bit of hyperbole because nobody until now has lost whole families to influenza in my lifetime but of course in the early 1890s people were losing whole families to the bug. Even the heir to the throne, Prince Albert Victor, perished in the pandemic.

The smoke ball must have been the wonder drug, the lifesaver, the only panacea against a life threatening infection. That's why a solicitor's wife was prepared to inhale this stuff and it explains why her husband was sufficiently incensed to take the action all the way to the Court of Appeal. I can't think of any legal history made by the 1918 pandemic and certainly nothing to compare to Carlill springs to mind out of the Asian and Hong Kong flu epidemics that occurred in my lifetime. But I can certainly envisage some scraps over generic antivirals arising out of bird flu.

11 January 2006

Local IP Lawyers: "No longer Lumbered"

Apologies to Jason Lumber, but I needed a snappy headline. Paul Sanderson and Martyn Fish who used to share Harrison Goddard Foote's offices in Leeds have just changed their name to HGF-Law from Sanderson Lumber. All of us at NIPC, and particularly Lois and I who have shared the odd glass of sake with Paul, would like to wish them every success with their re-branding. They are a good firm of IP specialists and always on our list when we have to refer public access clients to an authorized litigator outside London.

Paul and Martyn's re-branding follows Blair & Co's change of name to Marks & Clerk's Solicitors. It will be interesting to see whether there will be any more law firms marketing themselves as patent agents' legal departments. I can think of lots of bods in Manchester and Leeds who would like to do likewise.

Finally, I should make clear that Jason is not in fact "Lumbered". He is very much in the thick of things particularly on the trade mark side at Harrison Goddard Foote. Indeed I spoke to him for the name of a contact just before Christmas when my American colleague was looking for a good local patent agent.

Leeds Inventors Club: 18 Jan 2005


There should be a super brainstorming session in the Patent Collection on the top floor at Leeds Central Library next Wednesday. I shall be in the chair (possibly in both senses for those who care to cross the road for a bevvy afterwards) and on the panel will be David Robertson Brown of Gumption (featured left) and a patent agent appointed to represent this year's CIPA president Michael Harrison.

David is a remarkably gifted chap. He has produced a fantastic CD called "Eternally Free" in which he has recorded poems read by his wife Geri (a very talented and accomplished actor) set to music by Far Pavilions composer Philip Henderson.

However, his main business is project management for new high tech companies. In that capacity he brings his engineering knowledge and military training gained from years of service in the RAF into play. Customers include Business Link for whom he has worked for many years.

What he doesn't know about business plans, funding (particularly Eurodosh) and the people who matter in the North of England probably isn't worth knowing.

We don't yet know who will deputize for Michael next Wednesday, but Leeds has no shortage of good patent and trade mark agents and many of them come to our investors' club.

Finally, Sue (the PATLib librarian in Sheffield) and I are working hard on a South Yorkshire inventors' club to launch in the Spring.

Patents: HMG's Ratification of Patent Law Treaty

The reason why last night's post was so short was that I could not get access to the WIPO website to link to the info on the Patent Law Treaty. Now I can and readers will see that it is essentially a procedural treaty to make it easier and hopefully cheaper to plough through the national or regional requirements. That ought to make it easier and cheaper for the little chaps of this world who come to people like me.

Recent changes to the Patent Rules by the Regulatory Reform (Patents) Order 2004 and Patents (Amendment) Rules 2004 mean that we don't actually have to do anything more to implement this treaty by the date it comes into force.

There are now a completely updated consolidation of the Patent Rules 2000 on the Patent Office website. Anybody who wants to know about any of this stuff on any of those points, feel free to call me on +44 (0)870 990 5081/

Domain Name System: Internationalized Domain Names - more trouble brewing?

Last October I referred to the debate over whether the domain name system should continue to be overseen by a licensee of the US Commerce Department in "Viviane Reding: Internet Governance - the European Perspective". That issue appears to have died down but if an article by Monika Ermert in today's Intellectual Property Watch "Who Shall Own .China or .Arabia? Internet IP Questions On The Rise" is right we may soon have a much bigger one involving players who have far less in common with the US government than the EC or its member states.

The new battleground will be over internationalized domain names, that is to say domain names in languages other than English or rather those that are not written in Latin script. According to Monila Ermert the Chinese domain name authority has already set up a Chinese .com domain outside the existing structures and there are signs that other authorities and domain name authorities from Arabic speaking countries have already set up Arab character root servers. Up to now, the development of the domain name system has not really been a cause of international friction but Ms Ermert quotes an Indian government spokesman's call for intergovernmental negotiations like the trade talks.
“In two, three years time I will be seeing countries negotiating over who should be taking the first right over a particular name or how do you give the priority to a particular resource that has been created on the multilingual environment.”
Not all of those issues will be between Americans and the rest of the world. Disputes between language groups that share similar characters could arise.

10 January 2006

Patents: HMG ratifies Patent Law Treaty

The UK has become the 13th state to ratify the Patent Law Treaty. It will come into force on 22 March 2006.

09 January 2006

Patents: Kim Lesley Ridgeway

Back to work for the hearing officers today. The first decision of the New Year is a decision of Bruce Westerman on a hearing that took place before him on 16 Dec 2005.

The applicant, Kim Ridgeway, had applied for a patent for a rather neat teaching device which reminds me of a slide rule. Indeed, as a St Andrean I have to say that I am also reminded of Napier's bones. According to the drawing in Mr Westerman's decision, the invention consists of two or more rods each divided into a number of blocks or chunks rather like a chocolate bar. One of the rods is fixed and the other is movable. The chunks on one of the rods are numbered while those on the other are plain. When the movable rod is lined up against the fix rod it is possible to demonstrate simple adding, taking away, multiplication and division.

Apparently the device has attracted a lot of interest and rightly so, but, unfortunately, there is one whole heap of prior art. Identifying the claimed invention as "the plurality of rods, as there specified, all providing “segments” defined by indented channels extending across the width of the upper surface of the rods, the alignment rods being suitable to align and register with the index rod", Mr Westerman found that there were at least two documents that showed delineated by blocks. The
use of grooves or channels to demarcate areas on a scale or ruler was in Mr Westerman's view "so commonplace that to utilize this in the known arrangements performing the same function is clearly obvious". Finally, a Japanese document appeared to show the use of alignable rods and grooves in a very similar context. In the light of these disclosures, the hearing officer came to the conclusion that the claimed invention was obvious. Not the combined efforts of applicant and her husband, the examiner or hearing officer could tease out an inventive step.


The examiner had also objected that the invention was also excluded under s. 1 (2) (b) of the Patents Act 1977 as an "aesthetic creation" or s. 1 (2) (d) as "the presentation of information". The hearing officer did not buy that one.

This invention sounds a wonderful teaching aid if not a toy. It deserves to do well. I doubt that it needs a patent. I wish Mrs Ridgeway good luck with it.

08 January 2006

Traditional Knowledge: India digitizes Folk Remedies

One of the most interesting areas of intellectual property but one in which rarely comes before a UK intellectual property practitioner is "traditional knowledge". This is the law that protects a bundle of resources such as collective knowledge of the medicinal properties of plants and trees, folk tales and genetic materials. These resources are undoubtedly of scientific and literary value but they are difficult to fit into the IP system. For those who need to know more of the topic, there are some excellent articles on the WIPO and Quaker UN Office websites.

The reason I mention this today is to alert readers to an article by John Lancaster entitled "India Digitizes Age-Old Wisdom" in the Washington Post. The story discusses an ambitious project to record the vast store of observations and remedies on computer, partly to protect them form exploitation. but also to give them to science. But for the fact that I have to beetle off to my local meeting house at 10:30 am I would have written more on that story and I hope to return to the theme soon.

07 January 2006

Patents and Trade Marks: Perils of not Using a Filing Watch Service

I mention this cautionary tale partly because I have just written the chapter on sensible precautions for my book on Enforcement (the manuscript of which should have been with the publisher a week ago) and partly to celebrate Leeds Patent Library's new website "Business and Patents" since Leeds Patent Information Unit provides a filing watch service. This is an entirely fictitious case but it is based on the facts of two real ones in which I have had to advertise.

In the mid-1980s, a small furniture manufacturer from High Wycombe designed a chair which it marketed to a number of local education authorities in the North of England as “The Wilkes” in tribute to John Wilkes, the famous radical politician who had represented the borough in the House of Commons in the 18th century. The company never saw the need to register the sign as a trade mark. The local authorities had been in the habit of placing repeat orders for the chair nearly every year until 2004 when they dried up inexplicably. Thinking that there might be a funding problem the company waited to see what would happen the next year. No orders came in 2005 so the managing director decided to investigate. He contacted the procurement officer and was told that the local authority had a new anti-counterfeiting policy that required it to buy “only genuine goods”.

The managing director was bemused by that response and pointed out that his company had designed “The Wilkes” 20 years earlier. They had copyright in the chairs and the brand and still had the drawings to prove it. They had sold hundreds of “Wilkes” chairs to that particular customer and others in the area. Anyone else making the product must be “breaching their copyright” and “stealing their brand”. The procurement officer agreed that he had personally authorized the purchase of Wilkes chairs for over 20 years. Nevertheless, he was adamant that he could not buy any more from that source. He had received been told by the authority’s solicitor that those were not genuine Wilkes chairs and that he was not to purchase any more. The managing director asked who had supplied the authority in 2004 and 2005. He was given the name of a large distributor of educational equipment.

The managing director obtained the distributor’s catalogue and saw that one of the products was imported from a company called Wilke Meubelen GmbH & Co. of Baden Baden. He asked his solicitors to investigate. They found that the German company had applied to register WILKE as a British trade mark in class 20 and that the application has been granted because nobody had opposed the grant. More recently, the German company had also applied to register the word WILKE as a Community trade mark in various other classes relating to educational equipment.

The managing director asked how they could do that in view of the fact that his company owned the copyright in the chair and brand and still had the drawings and catalogues to prove it. Not being quite sure of the answer, the solicitors consulted patent counsel who had told them that
(1) It had ceased to be an infringement of copyright to make an article from a design drawing since the Copyright, Designs and Patents Act 1988
came into force on 1 August 1999.
(2) The effect of the provision excepting the manufacture of an article from copyright had been suspended for 10 years but that period had expired on 31 July 1999
and there was no longer any protection for the company’s designs.
(3) It had never been possible to claim literary copyright in a one word trade mark.
(4) It might have been possible to prevent the application for the trade mark by making representations under s.38 (3) of the Trade Marks Act 1994 at virtually nil risk.
(4) That moment had now passed and all that could be done at this stage was to apply to the Trade Marks Registry or the court for a declaration of invalidity or perhaps counterclaim for such a declaration in any trade mark infringement proceedings that the German company might launch against them but the prospects of success of such a claim or counterclaim were uncertain.
(5) Though it lay outsider his instructions, counsel reminded his instructing solicitors of the risk of a threats action under either s.21
of the Trade Marks Act or s.253 of the Copyright Designs and Patents Act 1988.
To add insult to injury, counsel presented a hefty fee note for his advice and the solicitors an even bigger bill of costs.

The managing director asked how he could have found out about the German company’s application. He was told that all applications are published in the Trade Marks Journal
which is now available on the internet and that there are a number of filing watch services that check the Journal and databases around the world for a modest fee. He was not entirely mollified by gratuitous observations from his graduate trainee about saving ships for a halfpenny worth of tar.

Leeds City Library Business and Patents section offers a very inexpensive filing watch service for patents. Customers are charged by the page for any relevant specification which usually works out a few pounds a month. Stef Stephenson, who runs the patent library with Ged Doonan, told me on Thursday that she intends to offer trade mark and later perhaps design registration searches at the same rate. Another good service is, of course, the British Library's "Currentscan" which I mentioned on Monday.



05 January 2006

Pussy Galore

Most readers of this blog are likely also to read IPKat but, in case there are any who may have missed this post, Prof. Jeremy Phillips has invited IP specialists in small practices to a talk and reception in London on 16 Feb 2006. It sounds very promising and I hope to be there, professional commitments and the state of the roads and railways permitting. I thoroughly recommend it.

If anyone is wondering why this post is entitled "Pussy Galore", Jeremy Phillips and Ilanah Simons seem to have a thing about cats. I'm no ailurophile but stories like today's "Pet Subject for Copyright" and "The Stamp of Authority" a couple of days ago are very entertaining.

Italian Patent Office Fees: Don't think Gordon will go for this one

This time last month I noted the appointment of Andrew Gowers to review the UK’s intellectual property framework and to report to the Chancellor of the Exchequer by the Autumn ("Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property"). Hard that it may be to believe, there is an advanced country in the EC that does even worse than the UK in the European patent application stakes. That country is, of course, Italy which managed 3,998 European patent applications in 2004 compared to the UK's 4,791 (see EPO Statistics for 2004).

Signor Bruno's opposite number in Italy also appears to have had a think and his solution is to abolish Patent Office fees for Italian design, utility model and patent applications (see s.351 and s.352 of the Italian Finance Act 2006). Now this decision has caused quite a flutter. I first learned of it earlier this week from my good friend Linda Oakley (see "La Dolce Vita for patents and Designs") and I actually took notice of it when I saw it on the IPR Helpdesk. It would certain please Mr James Dyson who has twice complained that renewal fees infringe his rights under the European Convention of Human Rights (see bio on the Dyson website).

However, I have to say that I am not persuaded that getting rid of renewal fees would be a good thing. It would remove the incentive for licences of right under s.46 (3) (d) of the Patents Act 1977 which encourages some good patents to be worked and would remove the incentive for patentees to abandon bad ones altogether. Also, as the EPO research showed, patent office fees are only a fraction of the total cost. Professional fees, translations etc cost far more.

Nevertheless, it will be interesting to see whether Italy moves up the applications league or whether it will continue to languish behind the Netherlands, Switzerland and the UK.

04 January 2006

Joint Ventures: Lambert Model Agreements

In his report on Business-University Collaboration, Richard Lambert (who is no relation) recommended among other things a series of model agreements to govern research between business and universities. In the light of Cyprotex Discovery Ltd v University of Sheffield [2004] EWCA Civ 380 (1 April 2004) there can be no doubt that something of that kind is needed. Accordingly a working party was set up to draft these precedents and I actually attended one of its meetings at the Chartered Institute of Arbitrators as one of the representatives of the Institute.

Those precedents are now on the DTI website together with guidance notes and a nifty little tool to help parties decide which agreement is closest to their needs. The agreements covered by the working party are as follows:

Agreement 1: Sponsor has non-exclusive rights to use in specified field/territory; no sub-licences.
University keeps IP.


Agreement 2: Sponsor may negotiate further licence to some or all University IP University keeps IP.

Agreement 3: Sponsor may negotiate for an assignment of some University IP. University keeps IP.

Agreement 4: University has right to use for non-commercial purposes. Sponsor gets IP.

Agreement 5: Contract research: no publication by University without Sponsor's permission.
Sponsor gets IP.


I have read through these briefly and they seem to be pretty well drawn. They could be used for other types of joint venture agreements such as where a software house and its customer develop some new applications.

The working party thought that it would be helpful to publish the following precedents which should appear shortly:

- sample patent and know-how licence
- sample patent assignment
- sample non-disclosure agreement
- sample materials transfer agreement
- sample consultancy agreement
- sample confidentiality notice
- sample equipment loan agreement
- Russell Group studentship agreement
- consortium agreement.


If anyone was wondering, the "Russell Group" is an association of 19 university principals who met at the Hotel Russell in 1994. They include Oxford, Cambridge, Manchester, Imperial and the LSE but not St Andrews whose alumni include one King of England (James I) and another in training (Prince William), Durham, QMC, Brunel, Strathclyde, Aberdeen or York. Their website is at http://www.russellgroup.ac.uk/index1.html if anyone wants to check it out.

03 January 2006

IPR Enforcement: Filing Watch and Private Dicks

I've just uploaded "Guarding your IPR" onto my personal website. This mentions the British Library's "Currentscan" service and some info on private investigators who can be relied upon including, in particular, Rosy Amsel who works in Manchester not far from our old chambers address. Rosy is a very entertaining companion as well as a good PI.

If anyone knows of any others I should be glad to include them. I should be particularly pleased to list any private investigators based outside the UK who are recommended by an established IP lawyer, patent or trade mark agent.

China: Patent Terms

Folk like me who are interested in China may be interested to know that the EPO has a vocabulary of terms used in patenting. If you are interested the Mandarin for patent it is:


zhuānlì.

US Patent IP Litigation Trends

According to the US news service IP Law there has been a 14% increase in IP litigation in the USA over the past year thanks largely to a great increase in the number of claims by the entertainment industry. That has more than offset a drop in patent litigation.

The increase in copyright litigation is not surprising. The news and entertainments industries are the sectors of the economy most under threat from the new digital technology. Part of the threat springs from the ease with which almost any number of perfect copies of audio and sound recordings and other publications can be disseminated almost immediately around the world with much reduced risk of detection and interception. Very different from the days when I first came to the Bar when a warehouse could be Anton Pillered or a container impounded. That is the reason for the WIPO Copyright Treaty, the Digital Millennium Copyright Act and the Copyright and Related Rights Directive.

The other threat comes from the fact that the new technology enables anyone to be a journalist through blogs or even broadcaster through audio and video podcasting. Tough times for the press and media barons! Maybe they will find out how it feels to be a lawyer nowadays.

02 January 2006

New Blog: UK Inventor

Some of you will be aware that I have had the odd set to with Gary Holloway on IPR Talk until its immoderate little moderator peevishly rejected one of my posts on IP in Huddersfield and has so far refused to grovel in apology.

Anyway I learned today that Gary is a Yorkshireman. On one of his rare visits to the best county in the UK he called in to my chambers to say wish me a happy New Year.

During his visit he mentioned that he had started his own blog called "UK Inventor". I have just had a butcher's hook (as they say in the Smoke) and very good it is too. The best bits are three posts on why the UK is trailing the other industrial countries in patent applications. Gary makes the point some really good charts. What worries me is not so much that we are dropping behind Europe but that we about to be overtaken by China and Korea (see "RECORD NUMBER OF INTERNATIONAL PATENT FILINGS IN 2004" WIPO press release 9 March 2005). I've set my news aggregator to pick up Gary's feed and I shall link to it when I get a chance.

01 January 2006

Copyright: Happy New Year for Artists

Today is the day that the Resale Rights Directive (Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art OJ L 272 , 13.10.2001 P. 32 - 36) is supposed to be implemented (see art 12 (1)). Draft implementing legislation for the UK together with an explanatory memorandum are on the Office for Public Sector Information website.

As it is sometimes instructive to compare UK legislation with that of other English speaking member states I checked the Irish government website. All I could find was an announcement by Michael Ahern, Minister for Trade and Commerce, dated 1 Aug 2005 announcing an intention to bring forward plans for new implementing legislation. Those plans seem to be well hidden.

Other posts on this subject are "Copyright: Resale Rights Directive Implementation" of 21 Dec and Copyright: Resale Right Directive to be implemented in New Year of 17 Dec 2005.