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Showing posts from 2008

Practice: Motor Industry - Parallels with the Legal System

The University of Southern California held a conference at San Diego earlier this month on Leading Legal Innovation. It seems to have attracted some distinguished academics and a sprinkling of practising lawyers though, sadly, none from the UK so far as I can see.   
Susan Block has reported on what seems to have been one of the more interesting conference papers which was presented by Prof. Stephen Burbank of Pennsylvania Law School in yesterday's AMLaw Daily, "The Innovation Agenda: Are Lawyers Stuck in GM's Tire Tracks?". According to the report Prof. Burbank drew interesting parallels between the structures and attitudes of the US motor industry and legal professions. As we all know US car markers have problems as indeed do car makers everywhere including the UK.
Can parallels be drawn here? There are certainly similarities. Parts of our legal profession have done very well over the last few years so why fix it?   I think the answer to that is provided by Professor…

Software Patents: New Guidance from the IPO

On 8 Dec 2008 Sean Dennehey signed a new practice note on the patenmtability of computer programs to take account of the CA's decision in Symbian. The main changes relate to:what constitutes a technical contribution for the purpose of determing whether a program is patentable; and
clarificaiton of the exclusions in s.1 of the Patents Act 1977.Technical Contribution The Intellectual Property Office had previously recognized inventions that either solve technical problems external to a computer or solve "a technical problem within the computer" as potentially patentable inventions. The sea change of Symbian is that  "improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer runnin…

Company Names: Not Quite the Real Thing

The new Company Names Tribunal, which I mentioned in my announcement of our chambers new fixed fee service on 10 November, has just published its first three decisions. They are:The Coca-Cola Company v Coke Cola Limited
Zurich Insurance Company v Zurich Financial Special Risk Limited, and
Zurich Insurance Company v Zurich Financial Special Risk Limited.
None of the respondents defended the applications and the adjudicators found for the applicants in all three cases. Costs of £700 were awarded (£400 for the issue fee and £300 for the statement of case). Our fee for settling a statement of case is £300 + VAT.
Merry Christmas!

Practice: Desmond Browne: 'The Bar is not for me'

On the very day that Rio Tinto announced 14,000 redundancies, Sony another 8,000, Mercedes short term working and Woolworths finally gave up the ghost The Independent published an extract of a speech by Dersmond Browne (the Chairperson-Elect of the English and Welsh bar) entitled 'The Bar is not for me' – words no one should say to themselves"  Giving Browne as much credit as one can, it was good that he bemoaned the under-representation of black, minority, ethnic barristers in the self-employed bar, on the bench and in silk. I've just become a member of a minority group (and quite a vulnerable one at that) and appreciate his concern. The problem is that the only way to change that balance without a purge of those already there would be to recruit more barristers. At a time when every other industry in the world is cutting capacity ours must be the only one that is actually talking about expanding it.   That, of course, is ridiculous.
Let there be no mistake, if the ba…

NIPC Mediation: New Specialist IP Dispute Resolution Service

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When I trained to become a mediator in 2000, mediation was regarded as the answer to lengthy delays and rocketing costs in the civil justice system but it has recently begun to acquire a bad name. The process has become expensive with the result that it sometimes hinders rather than facilitates a just resolution of a result.

One of the things I was told during my training that a good mediator can settle any kind of dispute irrespective of the subject matter of the dispute. Much the sort of guff as used to be spouted by generations of Rumpoles on advocacy. The notion of the all rounder able to turn his or her hand to any kind of case was never true of advocacy and I very much doubt that it is true of mediation.
I have often felt the need for a specialist mediation service with panellists who understand licensing and know how to value intellectual assets as well as being familiar with IP law and practice.   Of course, no single practitioner is likely to have all those skills.   Patent cou…

Trade Marks and Passing Off: Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch) (9 Dec 2008)

When I worked for VISA in 1984 I believe I had lunch at the Hotel Cipriani in Venice. I can't remember a vast amount about it other than that one had to take a boat trip. The food was OK though it can't have been all that outstanding because I can't remember what I ate. By contrast, I can remember every morsel of a meal at The Auberge de l'Il in Alsace. Having said that I have always been a bit down on Venice (Sorry Jan Morris) for various reasons. Not least the proclivity of the local dustmen to clatter their bins at about 3 AM and carry on a conversation at the top of their voices every day without fail when I had to get up early to do a day's work.

Anyway the owners of the Hotel Cipriani have just won an action against the owners of the Cipriani London for trade mark infringement and passing off (Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others[2008] EWHC 3032 (Ch) (9 Dec 2008). Not the least remarkable feature of this case is that the …

My Memories of Sir Hugh Laddie

I was on my way to a conference when I heard of Sir Hugh's death and could manage only a short announcement. But, I had to say more because I was really sorry to learn of his death. I can't say I knew him at all well but I did see enough of him to like and respect him. Here's why.
VISA Trade Mark Application I first met Hugh Laddie in 1983 when I was legal advisor to VISA International for Europe, the Middle East and Africa.  My employer had instructed Lloyd Wise (now part of Marks & Clerk) to apply to register VISA as a trade mark for travellers cheques and payment cards. In those days, trade marks could be registered in the UK for goods but not services (see Aristoc v Rysta [1945]RPC65). In the USA it was possible to register "service marks" for services but service marks were unknown here. The examiner smelt a rat and refused the application on the grounds that our application was tantamount to an application to register a trade mark for a service. We appeal…

Sir Hugh Laddie

I, together with the rest of the Patent Bar, have just learned from Richard Miller QC that Sir Hugh Laddie died on Saturday and was buried yesterday.   
I feel this personally because it was he who first steered me towards the IP Bar 26 years ago. He was always very fair to me both at the Bar and the High Court bench. 
I shall be adding my own tribute later but in the meantime I should like to refer readers to Jeremy Phillips's post on IPKat.   
I send my sincere sympathy to his family, friends and connections.

Practice: UK Patent Office changes its Name, Logo and Website. Again!

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What we had called the Patent Office for over 150 years has just got a new website, a new logo and even a new name.   My first impression was that the new logo (sorry “device mark” if It has been registered) looked like the flag of Barbados (see below).  "Inspired" by the flag as one of my clients who was defending a passing off case once said. 
But having compared the two close by I think that the logo is an extraordinarily honest piece of work. The little blobs must be pound coins and the bigger blobs £2 coins representing money going down the plughole.
You see the similarity to the new logo? A good allegory of intellectual property perhaps.Or indeed the money spent on a new website not long after the last makeover and 18 months after the last quite unnecessary name change.According to Sean Dennehey:
"A lot of work has gone into refreshing the website. We hope that businesses small and large, new and longstanding will find it much easier to get the information and guidan…

Practice: A2B Day

I have just returned from the first two sessions of the Bar Council's Access to the Bar Day at Inner Temple. 
The first was on public access and the second on licensed access. I wanted to attend the last session which was "targeted at members of the Bar and the Judiciary" (and the only one to carry CPD points) but it began nearly 4 hours after the end of the previous session. It was bad enough hanging around the conference room that Inner Temple rather grandiosely call "the Parliament Chamber" for more than an hour between the public access and licensed access sessions.  I found those gaps very annoying.   Having set off at an unearthly hour to make the 10:00 session I did not relish a 4 hour drive from Luton through the night after the end of the last session.   And I have work to do just like every other barrister. I am sure that the Bar Council would have attracted a much bigger audience had it staged the second session immediately after the first, and the th…

Patents: Court Guide

When I reviewd the new Patent Court Guide on 6 NovI pointed out that it did not have a specimen order.    That has now been corrected and the complete guide appears in its full glory at http://www.hmcourts-service.gov.uk/cms/files/Patents_Court_Guide_as_revised_on_18_November_2008.pdf.   However, the old one is still on the Courts Service website. So beware.

Software Patents: Talks on Symbian

Colin Birss QC is giving a talk for the AIPPI at Allen & Overy on Symbian entitled "Symbian: Where do we stand now?" on 4 Dec.  It should be good.   I have heard Colin speak before. The cost is only £20 and if I can find time to get to London I shall be there.
For those who can't make that event, NIPC Training is also discussing Symbian and linking it with Bilski at Liverpool on 5 Feb 2009 (see "Software Protection after Symbian and Bilski" on www.nipc-training.co.uk.  I shall be speaking as will Robin Bartle of WP Thompson. Kirwans have also promised a speaker and we have invited contributions from the IP Office, Intellect and the NCC. You can register an interest by completing the on-line form.
Symbian is a very important case.   You can read my post on the case below.

Space: Meet a Spaceman in Bradford

Former Soviet spaceman, Col. Akexander Volkov, and the head of ballistics for the Soviet space programme, Dr. Alexander Martynov, will be at the WOW Academy in Bradford between 12:00 and 15:00 on 11 Dec 2008.
The timetable is as follows: 12:00 – Guests start arriving 12:30 – Buffet lunch 13:30 – An audience with Cosmonaut 14.30 – Q&A 15:00 – Tea & Coffee
Ticktes from  l.southeran@bradfordcollege.ac.uk Tel 01274 436103

Moderation Policy

Someone called "Planet" contributed a comment to my blog in Mandarin.   I have not yet got round to learning that language (a project for retirement perhaps) but I ran it through Google translate and it came out as "Evidence of Limitations".   
The comment occurred in a request for contributions to a re-launched Northern Intellectual Property Review.   Possibly the author was offering a contribution on whatever limitation period exists in the jurisdiction in which he or she had in mind. Something to do with the limitation period expiring before the application had proceeded to grant as in Lucas v CAV Ltd.[1986] 1 WLR 462 perhaps?   Alternatively, he or she was making a gratuitous observation about some other feature of the blog.
If the former I should be glad to consider such an article but the contribution has to be in standard English. That is to say the orthography that applies in most of the Commonwealth rather than the North American dialect of our language. Tha…

Northern Intellectual Property Review

Between 1997 and 2001 we published a number of newsletters which won a lot of praise.   They even earned me and my tenants a few free lunches with the likes of Hobson Audley (now Faegre & Benson), Wragge & Co and Allen & Overy. We played around with several titles but the one that stuck was the Northern Intellectual Property Review. That reflected the focus on IP, technology, media and entertainment issues affecting mainly small businesses outside London.
Although it was successful professionally it was a disaster financially and I had to abandon it when we merged with Kingsgate.   
Since then Web 2.0 publishing technology has been developed which reduces considerably the cost of low volume print runs and of course many subscribers will now accept publications over the Internet in pdf format.  I have done some more research and costings and believe that with the help of other IP practitioners I can revive the journal.   I am therefore looking for material to publish. 
Since m…

Patents: Software Protection after Symbian and Bilski

Possibly the most important intellectual property decision of this year from the point of view of British business will be the Court of Appeal's decision in Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (8 Oct 2008). In that judgment the CA affirmed Mr. Justice  Patten's decision to allow an appeal from the hearing officer, Mrs. Chalmers, who had upheld the examiner's objection that an application for a patent for  "a method of accessing data in a computing device and, in particular to a method of accessing data held in a dynamic link library in the computing device. The present invention also relates to a computing device controlled by the method" was excluded from patentability by s.1 (2) of the Patents Act 1977 on the ground that it related to a computer program "as such" (see Symbian Ltd. 30 July 2007). 

Why Symbian is important The commercial significance of the CA's decision is that it opens the way for patents for at least som…