NIPC Law

Catch up time! So much has happened. Where should I start? I've just spent a really interesting two days as a sort of speaker at large at the b.TWEEN06 new media fest at the National Photographic Museum in Bradford yesterday and today. I was there to conduct one-to-one sessions on intellectual property issues. The conference was opened by David Putnam who told a parable about a boat race between GM and Toyota. Toyota won by a mile largely because their crew had 8 men rowing and only one steering in contrast to the GM team which was the other way round. The parable continued with the US team flattening their management for the next race with the effect that there was still only one oarsman. This time the Japanese won by 2 miles. GM sacked its oarsman and distributed the research and development money saved on stock options for its directors. Lord P was followed by John Sanborn, Creative Director of eBay, Inc, who could at least appreciate a good joke at his nation's expense. He ...

The interesting point about the Privy Council's judgment in Norbrook Laboratories Ltd v. Bomac Laboratories Ltd (New Zealand) [2006] UKPC 25 (4 May 2006) is that it was expressed as a decision in contract. This is a departure (at least in emphasis) from many recent decisions on confidentiality such as Campbell v MGN Ltd [2004] UKHL 22 (6 May 2004) that have treated a duty in confidence as a freestanding equitable obligation in its own right quite independent of any contractual obligation. In Norbrook , by contrast, the claim was for breach of a confidentiality agreement. Clause 3 of an agreement by which a UK manufacturer disclosed the formula and other confidential information about one of its products to its local distributor so that it could obtain permission from the licensing authority to distribute the product in Aotearoa-New Zealand required the distributor to "maintain in confidence and not use, except as contemplated herein, any information provided by NORBROOK or i...

I am glad to say that Cordelia Lean of the Bar Council will allow 2 hours and 30 minutes CPD points to any barrister who attends our seminar at BPP Law School in Leeds on 10 May 2006. IPCEX has not yet had time to apply to the Law Society, ITMA or CIPA for CPD accreditation but I think that those professions also offer ad hoc accreditation. Check the Law Society's FAQ . We are now close to bursting point. I have to decide whether or not to look for more space in another building so I really do need to know who is coming in good time.

I am very sad to learn from Pinsent Masons' website of the death of Shelagh Gaskell. I had known Shelagh for over 20 years. Although we had lost touch some years ago I will miss her greatly. I am sure I shall not be the only lawyer to do so. She was a lovely lady but a very formidable one. The first time I met her was at Leeds University shortly after she would have joined Dibb Lupton Fawcett (as DLA Piper was known at that time). I was giving a talk on protecting semiconductor chip topograpraphies which was a burning issue before the Washington Treaty. Simon Chalton, who was then senior partner of Dibbs, brought her along and I remember that she asked me some very perceptive questions. I got to know her better at the IBA conference in Buenos Aires in 1988. There were not many Brits at that conference - HMG had not yet restored diplomatic relations with Argentina - and even fewer Northerners. Apart from Simon and Shelagh the only other delegate from the North was Dan - now Lord - B...

Free Seminar: BPP Law School, Leeds Wednesday, 10 May 2006 14:00 - 17:00 On 3 April 2006 the UK Patent Office announced a new mediation service for the resolution of intellectual property disputes. That announcement followed hard on the implementation of s.74A and s.74B of the Patents Act 1977 providing for advisory opinions on the validity and infringement of patents. These initiatives indicate determination on the part of HM government that to do something about the scandal that England and Wales is one of most expensive places in the developed world to enforce intellectual property rights . This scandal is one of the reasons why the UK trails not just the USA, Japan, Germany and France in the number of European patent applications every year but even the Netherlands. Things are about to change and if you want to learn about these changes the best opportunity is to attend a free IPCEX s eminar at BPP Law School, 2 Whitehall Quays, Leeds LS1 4HG on Wednesday 10 May 2006 at 14:0...

The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used. This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the "seagull" design resembling a lance-corporal stripe's in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of th...

Yesterday, I mentioned the Hon Mr Justice Peter Smith's secret code ( Copyright - The Da Vinci Code: ho ho! 27 Apr 2006). Well now we have the decryption - "Judge's own Da Vinci code cracked" (BBC 28 Apr 2006). His message in "Smithy code" reads "Smithy Code Jackie Fisher who are you Dreadnought." So desu . I reported yesterday that his lordship remarked that he didn't see why a judgment should not be a matter of fun. Quite so, especially after detailed assessment. But another quotation occurs to me, this time from A P Herbert: "People must not do things for fun. We are not here for fun. There is no reference to fun in any act of Parliament." On quite a different point I knew the judge when he was at the Manchester bar and even appeared against him once or twice. I don't recall anybody calling him "Smithy" then. Should I ever find myself in front of him I certainly shan't start now.

The EPO has just published in this month's Official Journal an up to date list of contracting parties to every conceivable patent treaty and convention. The treaties covered include: Paris Convention Patent Co-operation Treaty Patent Law Treaty Budapest Vienna Convention on the Law of Treaties World Trade Organization European Patent Convention, Munich Act, London Agreement on art 65 et cetera. I noted two things. First, HMG is party to a relatively large number of treaties - more than the USA and many EC member states. Secondly, 16 states have now ratified Munich 2000 which means that the EPC will be amended from 31 Dec 2007 at the latest.

According to the BBC website , the Honourable Mr Justice Peter Smith has brought a touch of levity to the Da Vinci Code case - as if that case needed it (see "Copyright: "Da Vinci Code Case" - No Surprises" ). His lordship has apparently hidden his own secret code in his judgment: "Seemingly random italicised letters were included in the 71-page judgement given by Mr Justice Peter Smith, which apparently spell out a message." The learned judge is quoted as saying: "I can't discuss the judgement, but I don't see why a judgement should not be a matter of fun." Quite so! A sense of humour is a very good thing in a judge (see " Dispute Resolution: Judicial Humour from across the Pond") . A pretty good repository of it (proving that the words "American humour" are not quite an oxymoron) is "The Green Bag" . I may not agree with Mr Justice Scalia's politics but I do like his wit.

I have attempted my first animated online PowerPoint presentation. It consists of the slides and handout of a talk that I gave last week at Leeds Civic Hall on information security law. I have a full report of it in my other blog. I also intend to try some more podcasts over the May day bank holiday. Cave.

Today is world intellectual property day. According to WIPO press release 445 of 24 April 2006, member states decided to designate this day "to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe." This date was chosen because it is the anniversary of the day on which the WIPO Convention came into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day every year since its inception in 2001. Because of pressure of work nipc , have not done much to mark this date this year. Last year, we presented a lunch time event to launch the NCC's copyright deposit service and the year before I won a Dyson in the Ideas21 raffle at its do at the Melton Mowbray in Holborn. We shall certainly do something next year. For those who want to know what is happening today around the world there is a list of events on the WIP...

I attended a presentation by David Morgan of the Patent Office at the Leeds Hilton yesterday as part of the consultation on relative grounds of refusal . Having attended the very popular roadshow on software implemented inventions last year (which would have affected only a small number of people and in the event came to nothing) I expected an even bigger turnout as this proposal almost certainly will come to something and will affect thousands of SME in the North of England. I couldn't have been more wrong. There were 8 of us in the meeting room. That was, however, one more than they were able to muster for Birmingham on 20 April. The presentation did not add much to the materials on the Patent Office website. Mr Morgan outlined the present practice where the Patent Office does consider relative grounds and the OHIM practice which does not and set out the options. These are all on the consultation page of the Patent Office website. These are essentially variations on keeping the...

In case anybody is interested, today is St George's Day and Shakespeare's birthday. St George is the patron saint of England so today is our national day. Our national flag is St George's cross, that is to say a simple red cross on a white background which became the centre piece of our union flag (see Julian Wiseman " How to draw the Union Jack — accurately "). Australians, New Zealanders, Hawaiians and many other states and territories around the world have incorporated into their own flags. Possibly the licence fees on all those reproductions would make a good little earner for HM Treasury - if, Gordon is reading, I am sure a lot of barristers at the London patent bar would be happy to consider getting them in for you on a CFA. Anyway getting back to St George I was agreeably surprised to learn from the BBC yesterday that St George - who was part Turkish and part Palestinian - is highly regarded in the Muslim community. Apparently the day will be marked by a ...

As promised yesterday, I have just updated my Community Trade Marks page to take account of the new Community Trade Mark Regulations 2006 which come into effect on 29 April 2006. I have also updated my Geographical Indications page to take account of two new Council regulations, Council Regulation No 510/2006 and Council Regulation 509/2006 . The new Council regulations replace regulations 2081/92 and 2082/92. Their purpose is to comply with a recent WTO panel decision and introduce specific rules aimed at simplifying relevant registration procedures. An important change is that applications and objections from third countries may now be made directly to the Commission and eliminates the need for reciprocal and equivalent protection.

Two new statutory instruments will require practitioners' attention from 29 April 2006: (1) The Community Trade Mark Regulations 2006 (SI: 2006 No. 1027); and (2) The Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006 No. 1028). The first of these replace the Community Trade Mark Regulations 1996 (SI 1996/1908) and will require me to update my article on the Community trade mark pretty soon. The new regulations are a bit longer. The main changes so far as I can see are that they accommodate the EC's accession to the Madrid Protocol and the designation of the Manchester, Leeds and other chancery county courts as Community trade mark courts in reg 12 (2) ("ye gods" I hear many metropolitans - and not just metropolitans - sigh). The enforcmement regulations are much more significant in that they implement the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual pr...

In my post of 6 Oct 2005 " Euro Defences: Another one bites the Dust ", I noted Mr Justice Warren's decision in Sportswear Company Spa and another v Ghattaura [2005] EWHC 2087 (Ch) (3 Oct 2005) in which the judge struck out a Euro defence. The defendants appealed that decision and I must now report that the Court of Appeal has allowed the appeal (see Sportswear SpA and another v Stonestyle Ltd [2006] EWCA Civ 380 (11 April 2006). As I have already set out the issues in my earlier post, it is enough for me to summarize the reasoning of the Court of Appeal. Lord Justice Lloyd said at paragraph [71]: "it seems to me that the judge was wrong to conclude that the defence was bound to fail, on the basis that there was no arguable case of an adequate nexus between the anti-competitive agreement alleged, on the one hand, and the issue whether the Respondents have legitimate reasons to oppose further distribution." Lord Justices Longmore and Waller agreed. The tragedy ...

In case anyone has been wondering why I have not added anything to the blog since 8 April 2006 it is because I have been working on my chambers website . I have added a lot of new material and integrated it with the IP/IT Update , Huddersfield Intellectual Property and Huddersfield , Liverpool and Sheffield Inventors' sites . It is less a vanity site (if indeed it ever was) and more of a portal to a range of resources in intellectual property aimed primarily at SME and their professional advisors in Northern England and North Wales. Two new sub-webs which took most of the time is the indexing and uploading of many of the slides and notes of the presentations and also many of the newsletters, guidance notes and other publications that these chambers have published since 1996. Presentations are indexed by date , speaker and topic and publications by date and type . It is amazing how much we have done over the last 9 years and we have left out most of the Y2K, EMU and Woolf stuf...

Having been called by a TV station from Seattle at the start of this trial because a local journalist believed that one of us was in it, we could hardly ignore Baigent and Another v The Random House Group Ltd [2006] EWHC 719 (Ch) (7 April 2006). Had the claimants succeeded the case would have been sensational. In the event, Mr Justice Peter Smith's judgment reached what was probably the right answer though he made somewhat heavy weather of it on the way. The basic issue is summarized conveniently at para 140 of his judgment: "the claim is for infringement of copyright in a literary work HBHG [ "The Holy Blood and The Holy Grail" ] by the writing of another literary work DVC [ "The Da Vinci Code" ]. The claim is about applying existing established principles of UK copyright law to the facts as they have emerged. The claim is of non-textual infringement in literary work. It is conceded that such a claim is unusual and because of its nature presents a greater...

The excellent presentation that Miles Rees of the Patent Office to Sheffield Inventors' Club on Monday has now been uploaded to the Club's website together with a lot of other information including the names and contact details of 8 new service provider members . Miles didn't get round to make the announcement trailed to him on Saturday . However, it looks as though his management were serious. He complained to me today that he had been asked questions about the Patents Court move to Wales by his senior management and the setting up of a special Intellectual Property Division or Chamber of the new UK Supreme Court on the lines of the proposed IP Chamber to the ECJ should the Community patent ever get off the ground (see "Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent "). Perhaps we have stumbled on something that is really going to happen. Remember you read it here first.

Simon Hart B Com LLB (Uni of Qld) The decision of Mr Justice Mann in the Macrossan case [2006] EWHC 705 (Ch) handed down on 3rd April 2006, appears to have significant implications for software patenting in the UK. The case concerned the patentability of an automated method of producing the documents necessary to incorporate a company. The system has been deployed on the internet since May 2003 at www.ukcorporator.co.uk. A Patent Office Hearing Officer had rejected the patent application in March 2005, relying on all three of the commonly raised exclusions in the context of software patents, namely, - the mental act exclusion, - the computer program exclusion and - the business method exclusion. Mr Macrossan sought to counter all three exclusions and also raised an allegation of ‘apprehended bias’ against the Patent Office Hearing Officer. The bias allegation was based upon an alleged secret submission made to the Hearing Officer by the Patent Office examiner and was also based upon ...