NIPC Law

My email today brought New Year's greetings from India and Australia (which I warmly reciprocate and pass on) and a bulletin of today's stories in the New York Times . There are three stories on the law though none on intellectual property and technology. One is about the death penalty in China which is harrowing. It is a useful reminder to those of us who were disappointed by the governor of California's failure to spare Mr Tookie Williams (after he had already served a term of imprisonment that most civilized countries would regard as sufficient punishment for the crimes of which he had been convicted) that there are some parts of the world that are a great deal more bloodthirsty than the USA. Another is about the welcome drop in crime in New York. But the most entertaining is an article by Adam Liptak "So, Guy Walks Up to the Bar, and Scalia Says..." on the number of jokes cracked over the years by the various judges of the US federal supreme court. According t...

I have converted yesterday's WAV file into an MP3 file. I should like to thank Matt and James for their helpful suggestions. On listening to myself I noticed that I said that performances were protected by copyright. What I meant to say and should have said is by "rights in performances." When I get to be familiar with the technology I will use a proper script.

In 1999 I was asked to present a paper to the meeting of the Section of Business Law of the International Bar Association in Barcelona on misuse of internet access by employees. At the time there was a lot of concern about employer's potential liability for racist, sexist or otherwise offensive emails like the "Beer and Women" comparison as well as fear that the recently passed but not yet enacted Human Rights Act 1998 might prevent effective monitoring. As we were negotiating what turned out to be a rather ill advised and very short-lived merger with a London common law set, I couldn't do it myself but I did write a paper for my pupil Joanne Gretton to present. The paper contained valuable contributions from Joanne and also from my wife, Yatoni, who then practised at the employment bar. At paragraph 4 we argued that an employee's implied duty of fidelity would preclude unauthorized use of the internet, that some reasonable monitoring of such access would not n...

My second broadcast is up but I fear I have been far too ambitious. Instead of relying on the Windows "Sound Recorder" which I used yesterday for my Introduction to Intellectual Property Law which limited the recording to 60 seconds I downloaded the Audacity editing application. I spent much of today playing with it when I should have been working on an article for the Journal of Intellectual Property Law and Practice. The resulting file is 8 minutes long and took me over an hour to upload even on broadband. It does work. I have downloaded it from the Huddersfield Intellectual Property website. Anyway, I have spoken about "How the Law protects Investment in Brands" . Although it takes a bit of time to download it should be worth the wait. I have thought about what makes a brand and what sort of investment is required to create one. In my view, there's more to the topic than trade mark registration and passing off. I am not sure when I shall get round to ...

A very useful resource on the WIPO website is the WIPO Index of Patent Systems . While ostensibly "a tool to help users of patent statistics to understand the impact of differences between patent systems on the interpretation of patent statistics," it could be of enormous practical value to business. The laws of 41 countries are analysed and compared. Sadly, the UK, France, China and India are missing list but the European Patent Office is there as are the USA , Japan , Germany and South Korea and even Monaco and Libya . It should not be forgotten that the countries with the second and third highest rates of growth in PCT applications between 2003 and 2004 were from Korea and Japan respectively surpassed only by the Peoples' Republic of China (see Press Release PR/403/2005 "RECORD NUMBER OF INTERNATIONAL PATENT FILINGS IN 2004" 9 March 2005 ). In his talk to the UDRP panellists in October 2005, Dr Francis Gurry (who combines his role as head of the Arbitrati...

This may not be the most sensible for a barrister of my years to do but what the hell. I've gone on air. I have given the first of a series of talks on IP Basics. Tonight's was entitled "What is IP?" Tomorrow's which should be on www.hip.org.uk from 22:00 our time will be on "How the law protects brands". Until I am more familiar with web broadcasting all my talks will be short, simple and intermittent. Later, I hope to offer CPD training online for solicitors and the Bar online. I really would appreciate some feedback on this one.

One of the questions from the floor at the presentation by Peter Hayward and Ian Lewis on Patent Office Advisory Opinions at Leeds on 24 Nov 2005 was "Why do lawyers advise their clients to seek patents or other intellectual property rights if they know the clients will never be able to afford them?" As I was in the chair I fielded the question to Richard Kempner of Addleshaws and he in turn bundled it off to Michael Harrison , this year's president of the Chartered Institute of Patent Agents. I am bound to say that I am often asked the question "Should I apply for a Patent?" at inventors clubs and my monthly workshops in the Media Centre. I have now encapsulated the advice that I usually give in a new article on the Huddersfield Intellectual Property website "Should You apply for a Patent for Your Invention?" I appreciate that not every IP professional shares my views but then they do not always see the disappointment when I have to tell a chap who...

One of the most interesting contributions to the Patent Reform Group's conference at Marks & Clerk's last March was Jon Miles's presentation on "innovation patents". These are Australian utility models which stake a claim to a new invention for a fraction of the cost of a full patent. Jon has very kindly made his slides available to us. I hope that everyone had a good Christmas yesterday and having a good Boxing Day today.

All the events that chambers are running or to which we are collaborating are now gathered together on one "Events" page at http://www.hip.org.uk/events.htm . The main one for the New Year will be a half day event on IP dispute resolution. We have three star speakers: - Ignacio de Castro from the WIPO Arbitration and Mediation Centre who will speak on the arbitration, mediation and domain name dispute resolution services offered through the Centre; - Sara Ludlam who has recently joined Keeble Hawson from industry will speak of industry's needs for cost-effective but still effective dispute resolution; and - Felicity Brandwood or one of her staff from the NCC Escrow Service will speak on arbitration and ADR in escrow and other ICT disputes. The event will take place at BPP Law School at Whitehall 2Whitehall Quays, Leeds, LS1 4HG between 14:00 and 17:45 on 10 May 2006. We should prefer not to have to charge but experience teaches us that solicitors only value things if ...

S.25 (3) of the Patents Act 1977 provides: "Where any renewal fee in respect of a patent is not paid by the end of the period prescribed for payment (the 'prescribed period') the patent shall cease to have effect at the end of such day, in the final month of that period, as may be prescribed." S.25 (4) permits a patent to be restored If the renewal fee and any prescribed additional fees are paid during the period ending with the sixth month after the month in which the prescribed period ends. Should that deadline be missed an application has to be made to the Comptroller for the restoration of the patent. At the time the patent in Ahmet Mustafa Onder and Mustafa Ilhameddin Ozbay's Patent lapsed on 3 Nov 2002 a patentee had to satisfy the hearing officer that he patent took reasonable care to see that any renewal fee was paid within the prescribed period or that that fee and any prescribed additional fee were paid within the six months immediately following the e...

I have just put up two new articles on managing confidential information originally written by my wife and protecting intellectual property overseas through TRIPs . Further information is on my Invention blog . Have a nice Christmas tomorrow.

I have managed to update and upload two articles and two case notes from the old chambers site. The articles are on: - Ocular Sciences where Mr Justice Laddie rammed home the distinction between the obligation of confidence to which some employees might become subject in the course of their work and the contractual and fiduciary duty to advance his employer's interests that all employees owe to their employer ( Case Note: Ocular Sciences v Aspect Vision Care Have Faccenda's Chickens had their Chips?); and - the distinction between the duty of confidence and fiduciary duty as originally discerned by the Canadian Supreme Court in Lac Minerals Ltd. v. International Corona Resources Ltd., [1989] 2 S.C.R. 574, 1989 CanLII 34 (S.C.C.) and developed by the Privy Council in Arklow Investments Ltd and Another v. I.D. Maclean and Others (New Zealand) [1999] UKPC 51 in "How far does an Obligation of Confidence overlap with Fiduciary Duty?" All are important cases but f...

A post on my other blog which ties in with the Gowers Review which I mentioned here briefly on 5 Dec 2005 ( Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property) may go some way to explain why Europe in general and Britain in particular is lagging so far behind other countries in the patent application stakes. I review the EPO's study on the cost of patenting in " Cost of Patents: EPO tells us what most of us already knew ". Very briefly, it appears to cost £20,861.15 for a UK inventor or other applicant to get patent protection in his home market, compared to the £7,004.85 than an American would be charged and £3,731.36 that a Japanese would pay. There are lots of other useful statistics too. None of these comparisons even starts to consider the cost of enforcement which is so much higher here than in the rest of Europe as the report of the government's own advisory committee on intellectual property reported two years ag...

This was a claim for infringement of a European patent for a surgical coagulation device, that is to say a device for directing an argon beam onto an area of tissue to induce coagulation. The action was brought against a German manufacturer of medical equipment, a Japanese optical equipment manufacturer and their respective UK distributors. Much of the battle focused on the handle by which the device was manipulated. The interest for those not directly involved in the case lies in the application of the Protocol on Interpretation of art 69 EPC. Mr Justice Pumfrey adopted with approval the approach of Mr Roger Wyand QC in Mayne v. Pharmacia [2005] EWCA Civ 137: "(a) The first, overarching principle, is that contained in Art.69 [of the European Patent Convention] itself . . . (b) Article 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to...

As a mediator and arbitrator I should welcome the following amplification to PD-Protocols : "The courts increasingly take the view that litigation should be a last resort, and that claims should not be issued prematurely when a settlement is still likely. Therefore, the parties should consider whether some form of alternative dispute resolution procedure would be more suitable than litigation, and if so, endeavour to agree which form to adopt. The Legal Services Commission has published a booklet on ‘Alternatives to Court’, CLS Direct information leaflet 23 ( www.clsdirect.org.uk/legalhelp/leaflet23.jsp ), which lists a number of organisations that provide alternative dispute resolution services. The parties may be required by the Court to provide evidence that alternative means of dispute resolution were considered." My problem is that mediation can add an unwelcome extra layer of costs into the already expensive process. That probably explains why only 3% of CEDR's cas...

Mr Justice Etherton's judgment in Attheraces Ltd and another v British Horse Racing Board and another [2005] EWHC 3015 (Ch) (21 Dec 2005) appeared on the BAILII website just as I was updating and transposing two older case notes on the Antitrust/IP Interface. Old Case Notes The first of those two old case notes was the Commission's decision in the IFPI Simulcasting Exemption . Since the exemption was for a very short period and it was granted under Reg 17 which has now been repealed it is largely of historical importance. The second case note , the Court of Appeal's decision in Intel Corporation v Via Technologies Inc. and others [2002] EWCA Civ 1905 (20 Dec 2002) is very much of current interest. It is an example of a Euro-defence that does work in contrast to Sportswear Company Spa and another v Ghattaura (t/a "Gs3") [2005] EWHC 2087 (Ch) (3 Oct 2005 which did not and which I mentioned here in "Euro Defences: Another one bites the Dust" on 6 Oct ...

I have written a new article on common law restraints of trade and linked it to existing case notes that we wrote some time ago on: - Emersub XXXVI Inc and Another v Wheatley (1999) 14 July 1998 Queen's Bench Division: Wright J; - International Consulting Services (UK) Ltd v Hart [2000] IRLR 227 ; and - Prosoft Resources Ltd. v Griffiths [1999] ScotCS 96 13 Apr 1999 (Lord Maclean) . Emmersub does not appear ever to have been reported which is a pity as it is an interesting case that illustrates what should happen where an employee is also the vendor of a business.

London patent agent Richard Gallafent has alerted subscribers to Ideas 21 newsgroup IPR Talk to the draft The Artist's Resale Right Regulations 2006 . The page has been up since 15 Dec and readers of this blog may remember my post of 17 Dec 2005 " Copyright: Resale Right Directive to be implemented in New Year" where I also mentioned them. Gallafent makes an interesting point in his post to IPR Talk: "It's supposed to benefit Artists and their dependants/successors, but surely all that will now happen is that the galleries will insist on their artists never owning the paintings they hope to sell, i.e. the contract with the gallery will specify that the latter owns the canvas or whatever and the resulting work, agreeing to try and sell it against a commission to the artist of a substantial proportion of the price they get, retaining what used to be their modest commission. The work will never attract resale rights in such a case, thus relieving the Gallery of an...

I have written and uploaded a brand new new article on the technology transfer block exemption which came into force on 1 May 2004 and is due to remain in place for 10 years. This new block exemption repeals and replaces the previous technology transfer block exemption (Regulation (EC) No 240/96). This is the first of the new style post Reg 17 block exemptions. Unlike the previous ones it does not serve as a model contract with "white" permitted clauses. It does, however, have a list of what used to be called "black" clauses save that they are now called "hardcore" and "excluded" restrictions. As I said in yesterday's post on the modernization regulation, much of the point of a block exemption has been removed with the abolition of the requirement to notify and the power of national competition authorities as well as the Commission to revoke an exemption. While on the subject of competition law, there are two interesting new additions to D...

As I promised yesterday, I have written my article on Reg 1/2003 and uploaded it to my IP/it Update website . I also recommend Matthew Gream's as well. He has kindly added the links to a presentation in pdf and attachment in his comments to my post on the last update to this website.