24 June 2012

Copyright: Massey v Dinamo Productions

Massey (Child) v Dinamo Productions Ltd [2012] EWPCC 27 (13 June 2012) was an unusual case in that the claimant was a minor when the claim began. He claimed £2 million for copyright infringement and appears to have acted for himself throughout the proceedings. 

The claimant's complaint was that defendant television production company had appropriated his idea for a children's TV show to be called "The Wordles" which he offered to the BBC in July 2010. The defendant also developed a script for an episode of a children's TV show that was to be called "The Wordles" but that took place in 2009.  There was no direct contact between the parties until just before the claimant brought his action.  Their only point of contact was through a third party called Kavaleer.

The defendant applied to strike out the claim on the grounds that "it is without foundation and there is no real prospect of the case succeeding."  Mr. Recorder Campbell considered the application on paper.

He acceded to the application for the following reasons:
:"1) First, the Claimant's case suffers from the two fundamental problems identified above. Even bearing in mind the need for caution at this early stage of the litigation, it seems to me that the Claimant's case is bound to fail.
2) Secondly, the Claimant has not put forward any answer to these problems (as the Claimant did in Allen) or given any reason why I should assume that its case will improve. If the Claimant had done so, then I would have been prepared to consider whether the case should go forward to a half day hearing but it does not appear that he has engaged with the Defendant's case at all. Just as appears to have happened in relation to the Claimant's own action against Kavaleer on the same subject matter, he appears to have lost interest in his litigation at a very early stage of the proceedings.
3) Thirdly, the need to be fair to the Claimant has to be balanced with the need to be fair to the Defendant. In circumstances where the Claimant has done nothing to address the major criticisms of his case which have been made by the Defendant, it is not incumbent upon the Court to fight the Claimant's case for him or to require the Defendant to incur the time and expense of preparing for trial."
Thus he struck out the claim under CPR 3.4 (2) (a).  As the claimant was not present, the recorder gave him 7 days to apply to set aside or vary his decision. He did not avail himself of that opportunity.

As always, I am happy to discuss this case with anyone who wishes to call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

20 June 2012

Patents: Smith & Nephew Plc v Convatec Technologies Inc.

In "Educating Samuel: No. 1 Added Matter" 4 Nov 2008 I explained what is meant by "added matter." There are not many cases on added matter.   One such was Smith & Nephew Plc v Convatec Technologies Inc[2012] EWHC 1602 (Pat).


The Context
This was an application by Smith & Nephew to revoke Convatec's European Patent (UK) No. 1,343,510 entitled "Light Stabilized Antimicrobial Materials" on various grounds. In the course of the proceedings Convatec conceded that the patent was invalid and applied to amend.  Smith & Nephew objected to the amendments on the ground that they constituted added matter contrary to s.76 (3) of the Patents Act 1977 of the Patents Act 1977. They also argued obviousness and insufficiency.

The Section
S.76 of the Act provides as follows:
"Amendment of applications and patents not to include added matter76.-(1) An application for a patent which -
(a) is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted, and
(b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application, as filed, or the application for the patent, as filed,
may be filed under section 8(3), 12 or 37(4) above, or as mentioned in section 15(9) above, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter.
(1A) Where, in relation to an application for a patent -
(a) a reference to an earlier relevant application has been filed as mentioned in section 15(1)(c)(ii) above; and
(b) the description filed under section 15(10)(b)(i) above discloses additional matter, that is, matter extending beyond that disclosed in the earlier relevant application,
the application shall not be allowed to proceed unless it is amended so as to exclude the additional matter.
(2) No amendment of an application for a patent shall be allowed under section 15A(6), 18(3) or 19(1) if it results in the application disclosing matter extending beyond that disclosed in the application as filed.
(3) No amendment of the specification of a patent shall be allowed under section 27(1), 73 or 75 if it -
(a) results in the specification disclosing additional matter, or
(b) extends the protection conferred by the patent.
(4) In subsection (1A) above “relevant application” has the meaning given by section 5(5) above."

The Proposed Amendments
The patent was for methods of making a wound dressing which uses silver as an antimicrobial agent and which is photostable. Between paragraphs [6] and [8], His Honour Judge Birss QC described the invention as follows:
"Background
6. Wound dressings have advanced over the years and in the 1990s wound dressings were developed which were intended to keep the wound surface moist. One method of achieving this aim was to use materials which formed a gel. One class of gelling wound dressing used alginate materials. Another kind used carboxymethyl cellulose (CMC).
7. Infection is a problem associated with wounds and consequently there is a need to both prevent and treat infection resulting from wounds. Antimicrobial agents can be used topically to achieve this result. A dry wound environment was not conducive to bacterial, fungal or viral growth. However, as gel dressings became more popular the problem of bacterial growth became more apparent. One antimicrobial agent known for many years is silver. Silver has a number of advantages for topical application including low toxicity. However there is a practical problem associated with the use of silver in wound dressings. It is light stability. This sensitivity is well known. For example the light sensitive nature of silver salts was used in photography for many years.
8. The patent relates to a method of preparing a light stabilized antimicrobial material for use in wound dressings and medical devices. Essentially the method is one whereby a wound dressing material can be made which comprises silver as an antimicrobial agent but which is stable in the presence of light."
Convatec proposed to amend claim 1 of the patent as show in red:
"1. A method of preparing a light stabilized antimicrobial material, characterised in that the method comprises the steps of:
(a) preparing a solution comprising an organic solvent and a source of silver in a quantity sufficient to provide a desired silver concentration in said material;
(b) subjecting a material which includes gel-forming fibres containing one or more hydrophilic, amphoteric or anionic polymers to said solution for a time sufficient to incorporate said desired silver concentration into said polymer, wherein said polymer comprises a polysaccharide or modified polysaccharide, a polyvinylpyrrolidone, a polyvinyl alcohol, a polyvinyl ether, a polyurethane, a polyacrylate, a polyacrylamide, collagen, or gelatin or mixtures thereof; and
(c) subjecting said polymer, during or after step (b) to one or more agents selected from the group consisting of ammonium salts, thiosulphates, chlorides and peroxides which facilitate the binding of said silver on said polymer, the agent being present in a concentration between 1% and 25% of the total volume of treatment, which material is substantially photostable upon drying, but which will dissociate to release said silver upon rehydration of said material."
The Case Law
In "Educating Samuel" I referred to two cases, European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192 (19 March 2008) [2008] EWCA Civ 192 and Vector Corporation v Glatt Air Techniques Inc  [2008] RPC 10, [2008] Bus LR D101, [2007] EWCA Civ 805. At paragraph [12] of the European Central Bank case, Lord Justice Jacob had said:
"12. Kitchin J summarised the legal principles for the application of this rule in a manner which was not challenged and which we accept is correct:
'[96] The test for added matter was explained by Aldous J in Bonzel v Intervention Ltd [1991] R.P.C. 553 at 574:
'(a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(b) To do the same in respect of the patent as granted.
(c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.
The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.'
[97] A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed.
[98] Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.
[99] Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.
[100] Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV's Patent [2001] R.P.C. 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.
[101] Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.
[102] Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification."
Judge Birss QC noted at paragraph [57] that the passage above focused on comparing the application to the granted patent because it is concerned with added matter as a ground of invalidity. He added that the same approach applies in relation to post grant amendments save that the patent as proposed to be amended must be compared with the application as filed.

In Vector, the other case to which I referred in "Educating Samuel", discussed an objection to amendment known as "intermediate generalization" which can arise when the patentee proposes to delete words from a claim. As the Court of Appeal put it at paragraph [9] of their judgment in that case:
"A particular, and sometimes subtle, form of extended subject matter (what our Act calls "additional matter") is what goes by the jargon term "intermediate generalisation". Pumfrey J described this in Palmaz's European Patents [1999] RPC 47, 71 as follows:
'If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called 'intermediate generalisation.'"
Finally, Judge Birss QC reminded himself at paragraph [59] that it is important to distinguish between the disclosure of subject matter and the scope of the claim. This point arose in AC Edwards v Acme Signs [1992] RPC 131 and was recently reaffirmed in Gedeon Richter v Bayer Pharma [2012] EWCA Civ 235 (see paragraph 17).

Application of these Principles
Following Bonzel, the judge decided what was disclosed by the application as filed. Next, he considered what would be disclosed by the patent as amended and in that context he addressed Smith & Nephew's specific objection of intermediate generalization. He then made the comparison and concluded at paragraph [99] that there was no added matter:
"The question is whether the amendments give rise to added matter. In step (b) the amended claim refers to 'a material which includes gel-forming fibres containing one or more hydrophilic, amphoteric or anionic polymers … wherein said polymer comprises a polysaccharide (etc.)'. In my judgment all this discloses is a material which has within it gel forming fibres, those gel forming fibres containing within them polymers which satisfy both lists of properties. That is disclosed in the application as filed."

Obviousness
On obviousness the judge directed himself as follows:
101  Section 3 of the 1977 Act provides that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art by virtue of s2(2) of the 1977 Act. A structured approach to the assessment of obviousness was set out by the Court of Appeal in Windsurfing International Inc v Tabur Marine [1985] RPC 59 and was adjusted somewhat by Jacob LJ in Pozzoli v BDMO [2007] EWCA Civ 588, [2007] FSR 37. It is:
(1) (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
102  In Conor v Angiotech [2008] UKHL 49, [2008] RPC 28 the House of Lords considered the issue of obviousness. There Lord Hoffmann (with whom the others of their lordships agreed) approved the following statement of Kitchin J made in Generics v Lundbeck [2007] RPC 32:
'The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.'
103. Since Kreidl was published in 1946 and the patent in this case was filed in 2001, the question of the age of a piece of prior art arises. In the joint judgment of Kitchin LJ and Sir Robin Jacob given inGedeon Richter v Bayer (supra) at paragraph 61, their lordships observed that it was trite law that dates matter when considering obviousness and that the older a piece of prior art said to render a patent obvious, the harder it is to show obviousness. I understand their lordships to mean that the point of law is that dates matter. The observation about it being harder to show obviousness over an old citation is a reflection of long experience in patent cases and common sense. It is not a legal principle. Mr Mellor reminded me of the fuller analysis of this point in Brugger v Medicaid [1996] RPC 635 at 653-655. He also reminded me of the conclusion on this point in Terrell (17th Ed.) which attempts to sum up Brugger as follows "In short there may be many reasons why something was not done before, and one cannot simply conclude that everything that is not anticipated is not obvious". I will bear this in mind."
Earlier in his judgment. Judge Birss QC has identified the skilled addressee and such persons common general knowledge. He summarized the inventive concept at paragraph [105]
"as teaching that if the skilled person follows the steps of the method as claimed fairly the result will be a product which satisfies these criteria. By "fairly" I mean the skilled person has to approach the matter with a will to make it work. The significance of this is that it means that if it is obvious to employ conditions which fall within the method steps with a view to making a light stable antimicrobial dressing, the claim will be invalid. There is no need to go on and separately consider whether those steps would in fact produce a photostable dressing because the patent's teaching is that that is what will happen."
He then compared the claims as amended to two earlier patents relied upon by Smith & Nephew and found that the patent as amended would involve an inventive step and would thus be valid.

Insufficiency
The judge dealt with this point shortly between paragraphs [198] and [201]:

"Smith & Nephew's pleaded case is:
[Gibbins] discloses light stabilized antimicrobial materials which turn a purple (or purplish) colour, discolouring more quickly particularly at higher concentrations of silver. To the extent that such materials disclosed in [Gibbins] are said not be "substantially photostable" within the meaning of the Patent, then the Patent does not describe (a) what this requirement means; (b) how a skilled person knows whether or not a particular method meets this requirement and/or (c) how the method is to be performed in order to achieve a result which meets this requirement.
199. Smith & Nephew referred to Prof Kennedy's view that a material which had purple specks when dry would not fall within the definition in the patent. It argued that if a material that is purple with specks when dry, i.e. at the end of the manufacturing process, is not a material which has undergone a controlled colour change within the meaning of the patent then the patent must be insufficient. I do not have to resolve that question because I have found that Example 24 (the material that is purple with specks when dry) is within the claim.
200 The fact that I am not satisfied that as written, Gibbins discloses that all the samples in Example 25 were photostable materials within claim 1, has no bearing on insufficiency. It does not show any ambiguity about the definition.
 201  There is nothing before me to suggest that the skilled person would not know what "substantially photostable" in the patent means. Nor is there anything to suggest that the skilled person would have difficulty knowing whether any given method fell within the claim or determining how to perform a method in a way which meets the criterion. I reject the insufficiency argument."
Conclusion
The judge concluded that the patent as amended would be valid and allowed those amendments. In this note, I have not gone into any detail on the facts or specific points of construction because it would have made this already long post even longer. I have therefore concentrated on the points of law which are not exactly easy in themselves.  I am conscious that there are many points which may require amplification or clarification. If anyone wants to discuss this case with me - or indeed the concepts of added matter, obviousness or insufficiency - he or she should call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

14 June 2012

Patents: Consultation on IPO Opinions

S.13 of the Patents Act 2004 inserted two new sections into the Patents Act 1977..

S.74A provides as follows:
74 A Opinions as to validity or infringement
(1)    The proprietor of a patent or any other person may request the comptroller to issue an opinion—
(a)    as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b)    as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied.
(2)     Subsection (1) above applies even if the patent has expired or has been surrendered.
(3)     The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a)      in such circumstances as may be prescribed, or
(b)      if for any reason he considers it inappropriate in all the circumstances to do so.
(4)     An opinion under this section shall not be binding for any purposes.
(5)      An opinion under this section shall be prepared by an examiner.
(6)       In relation to a decision of the comptroller whether to issue an opinion under this section—
(a)     for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b)    no appeal shall lie at the instance of any other person."
S.74B provides for a review of an opinion issued under s.74A:
"74B    Reviews of opinions under section 74A
(1)     Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2)    The rules may, in particular—
(a)    prescribe the circumstances in which, and the period within which, an application may be made;
(b)    provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c)    make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed purposes as if they were proceedings under section 61(1)(c) or (e), 71(1) or 72(1)(a) above;
(d)    provide for there to be a right of appeal against a decision made on a review only in prescribed cases.”
The idea was dreamt up by Sean Dennehey and Peter Hayward during consultations on the proposed Patents bill in the Patent Office (as the IPO was then called) in 2003.   Early proposals for the bill had suggested the removal of the words "by agreement with each other" from s.61 (3) of the Patents Act 1977 and the introduction of US style re-examination. The idea of removing the requirement of consent for the Comptroller to try patent infringement cases was quietly dropped after a howl of protest from vested interests in London but the "re-examination" proposal survived.   At a meeting before Ron Marchant, Sir Robin Jacob, Fiona Clarke and other IP practitioners (including me) in August 2003, patent agent Richard Gallafent made the case for re-examination and Peter and Sean made the case for examiners' opinions.   After we heard their presentations we debated the rival proposals.   Sir Robin doused Richard Gallafent's presentation with gallons of cold water damning re-examination as nothing more than revocation by another name but he conceded that examiners' opinions "might just work".  And so they were introduced into the Bill and eventually became law.

After the 2004 Act was passed I gave a lot of publicity to examiners' opinions chairing a meeting at BPP Law School in Leeds which was attended by our MEP Diana Wallis and Michael Harrison who was then head honcho at the Chartered Institute of Patent Agents (see "IP Centre of Excellence: Patent Office Opinions" 26 Nov 2005) and I blogged about the first two cases one of which came from Leeds 
"Patents: Opinions on Validity and Infringement" 14 Dec 2005).

One of the arguments that won the debate in August 2003 was that judges and hearing officers would award indemnity or off the scale costs against litigants who brought or continued proceedings after an adverse-opinion.   I tested that in Wragg v Donnelly  BL O/280/10 when I asked Mr Elbro for off-the scale costs on the grounds that the claimant had already had two opinions go against him. The hearing officer refused my request at paragraph [57]:
"The purpose of the opinions service is to provide a way, short of full litigation, for parties to get an impartial view of the dispute between them. In many cases, this will be sufficient for the parties to be able to come to a resolution. But in those cases where it is not possible, a party should not be punished for wishing to have the matter fully explored in a way which is simply not possible under the opinions service, with its procedural restrictions such as lack of cross-examination."
The IPO is now reviewing the opinions service with a view to extending it (see Consultation on the Patent Opinion Service, IPO 12 June 2012). The proposals are as follows:
  • "First, we propose to expand the questions relating to validity that can be the subject of an opinion to align them more closely with the grounds upon which a person can request revocation of a patent.
  • Second, we propose to expand the service to offer opinions as to whether a Supplementary Protection Certificate (“SPC”) is valid or is infringed.
  • Third, we propose to give the IPO the power to initiate revocation action against a patent that an opinion concludes is invalid.
  • Fourth we propose to implement the above proposals by amendment to the primary legislation to provide the IPO with a more general power to issue an opinion on the basis of questions set out in secondary legislation."
The consultation document contains a list of questions to which responses are required by 4 Sep 2012.  

04 June 2012

The End of Mediation?

One the most surprising and in many ways depressing passages of the IPO's publication "From ideas to growth: Helping SMEs get value from their intellectual property" (April 2012) is the statement on page 17 that only 13 mediations have been conducted by the IPO in the past 5 years, and just one in the past year.  Because the usage is so low the IPO is thinking of discontinuing the service altogether unless it can be adapted.   The IPO has requested feedback on perceived awareness levels and how, if the service does continue, the IPO might increase its visibility.

The IPO's mediation service is extraordinarily good value.   A full day mediation in Newport facilitated by a CEDR (Centre for Effective Dispute Resolution) trained mediator with specialist knowledge and experience of intellectual property including accommodation costs £750.  The same mediator will come to the IPO's London premises for just another £250.   So why is the service used so little?

Not because the IPO's service is rubbish.   I have used it as counsel and found it satisfactory (see "Practice: Mediation in the IPO" 2 Oct 2009).   Is the work going elsewhere?   Probably not.   The Arbitration and Mediation Centre has managed only 270 arbitrations and mediations since 1994 (WIPO Caseload Summary),   CEDR Solve's Intellectual Property page is very modest.   Is intellectual property inherently unsuitable for mediation?  Well I have resolved such disputes satisfactorily as you can see from the case studies on my website, namely a computer supply dispute and a trade mark opposition.

I think there are a number of explanations for the low take up of the IPO's mediation service.   First, commercial and litigation solicitors tell me that they are getting far less intellectual property work nowadays.   Getting rid of employees and getting out of commitments such as shareholders; agreements and partnerships seem to be the matters upon which my contacts in northern commercial law firms are consulted most frequently.   Secondly, with the new Patents County Court rules the risks and costs of litigation have come down (see my article on the "New Patents County Court Rules" 31 Oct 2010). Thirdly, there are other forms of ADR such as examiners' opinions on patent validity and infringement and domain name dispute resolution services which appeal more to patent and trade mark attorneys and specialist solicitors.   Fourthly, there are urban myths in this area of practice such as intellectual property insurance is useless, references to the Comptroller under s.61 (3) of the  Patents Act 1977 or, indeed, that there are no specialist intellectual property counsel outside London which lead to bad advice.   Fifthly, mediation is getting a bad name because it an extra expense resorted to by the party with the longer pocket to force concessions from the weaker party.

If anyone wants to discuss these matters please call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.