28 February 2006
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 further elucidation on what is to European eyes a very exotic jurisprudence.
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 everyone else, this presentation contains the talk and handout.
One feature that I tried for the first time at this presentation was to give away a 3.5" disc with the presentation including the notes page instead of a printed handout. Printed handouts get lost and you never really follow the references. I have also inserted hypertext links into the presentation some of which lead to pages on my IP/it-Update website where there are already a lot of links - and some to the Patent Office and many other peoples' websites.
The Manchester Law Society has very very kindly contributed their proceeds from the talk to the Barristers' and Solicitors' Benevolent Associations in equal shares.
27 February 2006
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 integrated judicial system for the settlement of litigation concerning European patents. A lot of work was done including a draft agreement on the establishment of a European patent litigation system and a draft statute of a European patent court on 16 Feb 2002. Much of the steam went out of that work when it appeared that there would be a Community patent with a Community patent court. That must have been particularly galling for the Swiss whose federal patent office did much of the work on the draft agreement, statute and rules of procedure.
The European Patent Office project has revived a little today with the publication of an
Assessment of the impact of the European patent litigation agreement (EPLA) on litigation of European patents. A significant saving will be in costs. Litigation before the proposed European court will be significantly cheaper than before the Patents Court in London though it may be more expensive than proceedings before other national courts. However, it will have pan-European jurisdiction.
One of my proposals to Andrew Gowers will be British support for the EPLA and its rapid implementation.
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 ("Technik") page there is a menu leading to the history of the game, football, football field and so on. Finally on the documents ("Dokumente") there are links to the specifications of every single patent and patent application of every single aspect of the game starting with the ball itself and continuing to the stadium technology. Finally, there is an "Allgemeines" page with contacts, links and sources and vocabulary.
I am afraid the site is only in German at present and as many of you will have guessed my German is pretty rusty as it is a very long term since I was at secondary school. But I do know of a solicitor at the Dundee office of Blackadders with a first in the subject from Scotland's finest university. She reads this blog occasionally and she may well be able to assist those who wish to enquire further.
26 February 2006
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 access the internet. The application was filed in 1996 which is long before the potential of the internet was fully appreciated and years before the Blackberry was launched. The defendant counterclaimed for infringement by both RIM and one of the UK mobile telephone companies that distributes it. The significance of the litigation is that the patent in suit could have threatened the viability of the technology just as much as the NTP action in the USA.
The issues before the judge were whether the Blackberry infringed the patent and whether the patent was invalid for want of novelty, obviousness and excluded matter. There were also claims for amendment of Inpro's specification. In the end, his lordship found that the patent was invalid for want of novelty and obviousness (though not excluded matter) and hence the claim succeeded and the counterclaim failed.
It is a very long judgment - 190 paragraphs - and a complete understanding requires a full reading of the prior art. Much of it revolves around those citations but there are some issues of general application. The first is a consideration of the circumstances in which the streamlined procedure should be ordered. No doubt mindful of his decision in Merck & Co Inc v Generics (UK) Ltd  EWHC 2842 (Pat) (27 Nov 2003) Mr Justice Laddie had ordered a streamlined trial allowing for two days of argument and one of pre-reading. While not expressly criticizing that decision, Mr Justice Pumftrey made clear he disagreed with it:
"I cannot say that on the material available to Laddie J the decision to use the streamlined procedure was wrong, but I must disagree with his proposition that once a party to an action proposes the use of the streamlined procedure that procedure will be used in the absence of a convincing objection from the other. The decision to use the streamlined procedure is an objective one to be arrived at on all the material. There are no presumptions. It is not unusual in patent actions for one or (sometimes) both parties to consider that their case is both straightforward and easy to try. They are often wrong: and in any event, the dissentient must be allowed a proper opportunityWhat the judge said is all very well but, as this blog has noted (and IPAC and others have reported) many times before, the UK courts are losing work to the Continent because of the enormous expense of litigation in this country. Worse, the cost of enforcement in this country is probably one of the reasons why we lag behind the Netherlands in the European patent application stakes and are about to be overtaken by Korea in the PCT stakes. A Rolls Royce is a wonderful piece of automotive engineering but what most people need is a bus route.
proportionate to the matters at stake fairly to put its case, and that may preclude use of the streamlined procedure. Speed is highly desirable in all cases, but not at the expense of fairness. One relevant factor is the commercial importance of the patent. This patent, which is said to be infringed when any BlackBerry device downloads a webpage including images using the BlackBerry service, is commercially important to the present form of that service."
The second observation of note concerns the newed for objectivity in expert witnesses. Inpro's expert was an internationally acknowledged authority on communications technology but he appears to have presented his evidence argumentatively and with a degree of partiality. Such combativeness deprived the judge of a lot of the assistance he might otherwise have expected.
The final point, and one IMHO greatlhy to be welcomed, was the judge's approach to excluded matter in view of such cases as CFPH  EWHC 1589, Halliburton  EWHC 1623 and Shopalotto  EWHC 2416 (Pat) (7 Nov 2005):
" It is now settled, at least at this level, that the right approach to the exclusions can be stated as follows. Taking the claims correctly construed, what does the claimed invention contribute to the art outside excluded subject matter? The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions. ..........
 I am anxious that these exclusions are not given too wide a scope. All modern industry depends upon programmed computers, and one must be astute not to defeat patents on the ground that the subject matter is excluded under Article 52 unless the invention lies in excluded subject matter as such."
This last observation is a gift for skeleton arguments. Sir Nicholas (and more especially Patent Office hearing officers) will be as sick of this dicta as they probably are of turkey butties by New Year's eve.
19 February 2006
Not a bad weekend's work I hope you agree.
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 between the URDP and Nominet DRS. More e-commerce materials will be posted over the next few days.
18 February 2006
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 that he was the son of a sole practitioner. He said that whenever he complained to his mother that his father came home late she replied that it was when he came home early that he really had to worry. Richard shared with us that he also was the son of a sole practitioner. Margaret told us how she had set up her firm and was still opening packing cases when she received instructions in her first big case. I might add that that story was one of the things that kept me going when I opened NIPC in 1997. She is witty and entertaining and well deserves her success. We had a short discussion on CPD for trade mark agents before returning to the drinks.
Two good things for northern IP practitioners:
- the first is that we will be welcoming Jeremy to Leeds on 15 June 2006; and
- the second is that we will also entertain Ilanah later in the year or perhaps the beginning of next.
17 February 2006
The patent was for a test that applied that principle. The integers of claim 1 were for (a) use in scintillation proximity test (b) of a phosphor (c) that has an emission maximum of 480nm-900nm, (d) and of a charge coupled device (e) for detecting radiation emitted by the phosphor.
"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 homogeneous assays as opposed to heterogeneous assays, which involve a separation step."
The action was for infringement of the above claim plus two other claims of the patent. The defences were anticipation, obviousness and obtaining. There was no dispute that if the patent had been valid it would have been infringed but the judge held the patent to be invalid for obviousness.
The judge took as his starting point Aldous LJ's discussion of "common general knowledge" in Beloit Technologies Inc v Valmet Paper Machinery Inc  EWCA Civ 993 (12 Feb, 1997) - a case in which he had appeared as counsel. He also reminded himself of Mr Justice Laddie's observation in Raychem Corp.'s Patents  RPC 31 at 40 that general knowledge is not limited to material which the skilled person has memorized and has at the front of his mind but also includes all that material in the field in which he is working which he knows exists, which he would refer to as a matter of course, if he cannot remember it, and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work.
Reminding himself that particular care must be taken to avoid hindsight reasoning when considering an argument that an invention is obvious in the light of common general knowledge, the judge analysed the prior art and concluded that each of the claims in issue were invalid for obviousness.
13 February 2006
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 City ((646) 797-2829) and Hong Kong (8120 3595). So Angelenos, New Yorkers and Hong Kong folk - feel free to call me up at your leisure.
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 the mediation by the end of the day. This is followed by the question "and what else?" That in turn is followed by "and what else" until the parties are left exhausted.
Usually the dispute is about money. There, the mediator's job is to bridge a divide between the lowest that the claimant will accept and the most that the defendant is willing to offer. A party's insistence that he won't settle for a penny more (or less as the case may be) opens up a wonderful opportunity to jump to the bottom line.
Much of Andrew's wisdom is on his website at http://www.andrew-fraley.com/. There is a lot of good stuff there including his "Mediation Overview", "Agreement to Mediate", "Case Preparation" notes and "Agreement".
12 February 2006
(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.
07 February 2006
Copyright, Database Rights and Rights in Performances: Copyright Tribunal and Moral Rights for Performers
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.
"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 Association of America which is the US member are located in a street in Vienna, Virginia called Gallows Road. Further info from Larry Kilman, Director of Communications, WAN, 7 rue Geoffroy St Hilaire, 75005 Paris France. T: +33 1 47 42 85 00. E: email@example.com.
PS. I have to say I feel a bit sorry for the poor old search engines in view of the bad press Google got for the deal that it made with the Chinese government. Even a censored version of the search engine is a pretty powerful info gathering tool for the Chinese public. As it showed the previous week over their refusal tamely to hand over search data, Google does at least stand up for the civil liberties and privacy of its American customers.
06 February 2006
This long running punch-up concerns the "functionality principle". Lord Justice Mummery summarised its as follows at para :
"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 enable its proprietor to protect his products from the competition of other traders' goods in a shape, which was necessary to obtain a similar technical result. Competition considerations prevail in the legislation, which implements the functionality principle. There are excluded from registration, prior to any consideration of the conventional trade mark questions of the inherent or acquired distinctiveness of a mark, signs consisting exclusively of the shape of goods, which is necessary to obtain a technical result. "
The issue has come before the courts of Sweden, France, German, Spain and Italy and, as Lord Justice Mummery observed, "The foreign judgments speak with one voice .................. that Philips' shape marks for their three-headed rotary electric shaver are invalid by reason of their functionality."
This was an appeal by Philips against Mr Justice Rimer's dismissal of a claim against Remington for infringement of its 3-head razor shape mark and its stylized 3-head device mark. The claim failed because the judge found both registrations to be invalid. The question for the court was whether the marks were invalid by reason of s. 3 (2) (b) of the Trade Marks Act 1994. That sub-section imposes a preliminary bar on the registration of functional shapes as trade marks for goods:
"A sign shall not be registered as a trade mark if it consists exclusively of-................................................
(b) the shape of goods which is necessary to obtain a technical result,"
Only if that preliminary obstacle can be overcome is it possible to consider the more familiar trade mark issues of the inherent or acquired distinctiveness of a mark.
Philips launched a number of attacks on the trial judge's judgment. It was unable to persuade the Court of Appeal in respect of the shape mark. However, the Court allowed the appeal in respect of the device mark.
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  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.
05 February 2006
- 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.
04 February 2006
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 looking across the Atlantic for social, economic, political and legal models rather than across the Channel to neighbours that are closer to us in almost every respect except language.
"non-profit educational organization dedicated to a few fundamental propositions: that American leadership is good both for America and for the world."
In that respect it is is significant that 4 of the top 5 applicants are European companies: Phillips Electronics is no. 1 with 2, 492 applications followed by Matsushita with 2,021, Siemens 1,402, Nokia, 889 and Bosch with 843. Sadly, there are no British companies in the top 50.
Although Europe as a whole appears comfortably to be outpacing the USA, North-East Asia is likely to surge ahead of us. Japan has dislodged Germany from the number 2 slot of countries of origin, but South Korea has displaced the Netherlands from 6th place and is snapping on our heels and China has displaced Italy, Canada and Australia from the 10th.
At the last domain name panellists' meeting in Geneva, Francis Gurry told us that on present trends most of the world's new technical literature will be in a North East Asian language. Technology brings economic, military and diplomatic power. Absent a cataclysm this new century is much more likely to be Chinese than American.
In the light of what happened in Tiananmen Square and Tibet, I would have regarded that prospect with alarm until about three or four years ago. I should add that I am "Americophile" - if there is such a word - having been educated at UCLA and and having made many subsequent visits to that country. Nevertheless, in view of the present federal American administration's selfishness over climate change, its obstreperousness over the International Criminal Court and its cavalier disregard of the UN Charter in the run up to the invasion of Iraq - not to mention some of the liberties that are being taken (quite literally) with Americans' human rights - I am facing the prospect of American relative decline with increasing indifference as well as resignation.
02 February 2006
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.
- 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 anybody except invention promoters anywhere in the world who are prepared to offer something to inventor members like a 20 minute patent clinic or a discount on their fees.
Membership of both classes runs from year to year and is free for the first year so it is open to all of you good people in the USA, China, India, Germany and elsewhere who are in the market for providing legal, patent agent, consultancy and other services to small businesses from the UK. If you are an inventor in Hudfdersfield, Holmfirth, Batley, Dewsbury or anywhere else in our borough or a patent agent in Timbuktu and want to join just send an email to Huddersfield Inventors.
The first event will be the second "Brass from Gumption" open day at the Huddersfield Media Centre on 17 Feb 2006 from 14:00 to 16:00. There will be a get together in the Circle Room at 14:00 where light refreshments will be provided, up to 4 free sessions with Chris Hemingway of patent agents Bailey Walsh LLP and up to 6 free patent, trade mark or registered design search slots with Leeds PatLIB librarian Ged Doonan which would normally cost over £40. Those slots are likely to go quickly so if you want to save yourself some money, call Ged or Stef on 0113 2478266 or email Huddersfield Inventors soon like yesterday.
In addition to Brass from Gumption chambers will continue to do the free IP workshops through the Business Generator between 11:00 and 13:00 on the last Friday of the month (call Call Jacquie Asquith on (01484) 483080 to book) and we will give Inventor members a 20% discount off our published rates for legal advice and drafting who come to us under the public access rules. Other discounts will be the clinics and searches offered by Leeds PatLib library in Huddersfield from time to time starting with Brass from Gumption on 17 Feb 2006.