Showing posts from 2019

Practice Direction - Pre-Action Conduct and Protocols Uodate

Jane Lambert

The Practice Direction - Pre-Action Conduct and Protocols has been updated with effect from 9 Oct 2019.  It was last updated on 29 April 2015 and I wrote about the changes in What to do about the new Practice Direction - Pre-Action Conducton 6 May 2015. I explained the importance of the Practice Direction in Pre-Action Correspondence - Not Just a Box to be ticked or a Hoop to be jumped through2 Aug 2017.

The updated Practice Direction contains the following paragraphs:

TitleNumberIntroductionPara. 1Objectives of pre-action conduct and protocolsPara. 3ProportionalityPara. 4Steps before issuing a claim at courtPara. 6ExpertsPara. 7Settlement and ADRPara. 8Stocktake and list of issuesPara. 12Compliance with this practice direction and the protocolsPara. 13LimitationPara. 17Protocols in forcePara. 18
The key provision of this Practice Direction is the first sentence of paragraph 8: "Litigation should be a last resort." The object is to resolve disputes through negotia…

Software Patents: Adobe Systems Incorporated's Application

Jane Lambert

Intellectual Property Office (Nrs C L Davies) Re Adobe Systems Inc.'s ApplicationO/549/19 19 Sept 2019

This was an appeal by Adobe Systems Incorporated against the examiner's refusal to allow its application for a patent for a method and system for recommending software actions to create an image and recommending images to demonstrate the effects of software actions to proceed to grant. The examiner objected to the application on the grounds that it was for a program for a computer and a mathematical method within the meaning of s.1 (2) (a) and (c) of the Patents Act 1977.

That subsection declares that mathematical methods and programs for computers among other things are not inventions for the purposes of the Act but that declaration is subject to the proviso that it "shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such." That phra…

Passing off - Glaxo Wellcome UK Ltd. v Sandoz Ltd.

High Court of Justice, Business and Property Courts of England and Wales, Intellectual Property List, Chancery Division (Lord Justice Arnold) Glaxo Wellcome UK Ltd and Another  v Sandoz Ltd and Others [2019] EWHC 2545 (Ch) (4 Oct 2019)

This was an action for passing off. The claimants alleged that the defendants were passing off their dry powder inhalers ("DPI") as and for the claimants' by presenting and packaging them in purple. The action came on for trial before Lord Justice Arnold in July 2019. His lordship dismissed the claim in his judgment of 4 Oct 2019.

The Claimants
The claimants, Glaxo Welcome UK Ltd. and Glaxo Group Ltd. have marketed a combination of salmeterol and fluticasone for the treatment of asthma and chronic obstructive pulmonary disease ("COPD") under the trade mark Seretide in a proprietary DPI branded Accuhaler since 1999 and in a metered dose inhaler ("MDI") branded Evohaler since 2000. Both the Seretide Accuhaler and the S…

Legal Professional Privilege: Addlesee and others v Dentons Europe LLP

Jane Lambert

Court of Appeal (Lords Justices Lewison, Floyd and Hamblin) Addlesee and others v Dentons Europe LLP [2019] EWCA Civ 1600 (2 Oct 2019)

This was an appeal against Master Clark's refusal to order disclosure of certain documents on the grounds that they were privileged.  The applicants for disclosure were investors in a Cypriot company called Anabus Holdings Ltd ("Anabus") and the respondents were Anabus's former solicitors. Anabus had been wound up though it would still have been possible to restore it to the register.  The applicants, who had lost a lot of money from investing in Anabus, had brought deceit and negligence proceedings against the solicitors. At paragraph [1] of his judgment, Lord Justice Lewison summarized the issue in this appeal as: "what happens to legal advice privilege attaching to communications between a company and its lawyers, once that company has been dissolved; and the Crown has disclaimed all interest in its former property…

The Labour Party's Proposals for Patent Reform

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Jane Lambert

It is not often that intellectual property is discussed at a party conference.  While public attention was focused on the Supreme Court's decision in R (Miller) v The Prime Minister [2019] UKSC 41, the leader of the opposition made this very interesting commitment in his speech to the Labour Party conference:

"We will redesign the system to serve public health – not private wealth – using compulsory licensing to secure generic versions of patented medicines. We’ll tell the drugs companies that if they want public research funding then they’ll have to make their drugs affordable for all. And we will create a new publicly owned generic drugs manufacturer to supply cheaper medicines to our NHS saving our health service money and saving lives. We are the party that created the NHS. Only Labour can be trusted with its future."

He made that commitment after talking about the child in the video above.  According to the Labour Party leader, t…

Unregistered Community Designs - Beverly Hills Teddy Bear Company v PMS International Group Plc

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Beverly Hills Teddy Bear Company v PMS International Group Plc[2019] EWHC 2419 (IPEC)

Art 267 of the Treaty on the Functioning of the European Union provides:

"The Court of Justice of the European Union shall have jurisdiction to give preliminary rulings concerning:
(a) the interpretation of the Treaties;
(b) the validity and interpretation of acts of the institutions, bodies, offices or agencies of the Union;
Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court to give a ruling thereon.
Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court.
If such a qu…

Blocking Injunctions - Nintendo Co Ltd v Sky UK Ltd and Others

Jane Lambert

High Court, Chancery Division (Mr Justice Arnold) Nintendo Co. Ltd. v Sky UK Ltd and others [2019] EWHC 2376 (Ch)

This was a claim by the famous consumer electronics and video games company, Nintendo Company Limited, for an order requiring Sky UK Ltd and four other internet service providers to block, or at least impede, access by their customers to four websites that advertise, distribute, offer for sale and/or sell devices that circumvent Nintendo's technical protection measures for its game consoles.

As all the target websites used Nintendo's trade marks in their advertising, Nintendo based its application in part on principles established by the Court of Appeal in Cartier International AG and others v British Sky Broadcasting Ltd and others [2017] Bus LR 1, [2016] ETMR 43, [2016] Info TLR 1, [2017] Bus LR 723, [2016] EWCA Civ 658, [2017] 1 All ER (Comm) 507, [2016] EMLR 23, [2017] 1 All ER 700, [2016] WLR(D) 389, [2017] RPC 3 and refined by the Supreme Court i…

Contracts - Volumatic v Ideas for Life

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Volumatic Ltd v Ideas for Life Ltd [2019] EWHC 2273 (IPEC) (29 Aug 2019)

This was a claim by Volumatic Ltd ("Volumatic") for specific performance of an agreement that was alleged to have neem entered by Ideas for Life Ltd. ("IFL") for the assignment of "all property rights" including certain patents in a banknote pouch for Volumatic's cash counting machines to be designed by IIFL. IFL resisted the claim on a number of grounds including whether the alleged agreement (referred to in the judgment as "the Agreement") was legally binding and, if it was, whether it could be specifically enforced.

At the case management conference, Judge Hacon had listed the following issues to be tried:

"1. Whether the Agreement (alternatively stages 2 and 3 of the Agreement) has contractual force and particularly:
(a) whether there was an intention to create legal relations;
(b) whether the ter…