NIPC Law

In the latest issue of her excellent monthly " Intellections ", Toni Tease has analysed two identical patent reform bills that were introduced simultaneously into the House of Representatives and Senate on 18 April 2007. Toni had previously forwarded me the draft legislation in a . pdf file but as US legislation is drafted in a particularly arcane way I did not grasp the full significance of the proposed changes until I read Toni's article. The bills apparently have the support of both political parties and were introduced by the chairman of an IP sub-committee in their lower house (why don't we have something like an IP committee in the House of Commons, Mountford ?) and by the chair of the Judiciary Committee in the upper house. The bill will bring US patent law closer to ours in Europe in the following respects: 1. First to File rather than First to Invent Unlike most countries US law gives the first person to invent priority rather than the first to file. I un...

I was jolted from my reverie during the UK- IP Office's IP awareness seminar at the Thackray Museum in Leeds last week while listening to Bobby Smithson justifying the existence of patent agents (oops "attorneys") by reading out claim 1 of caveman Ug's patent specification for a revolutionary prehistoric invention known as "The Wheel". Ug had had a bash at drawing up his own patent application but decided to consult a patent attorney. So far good lullaby until Bobby described a patent attorney as a sort of "specialist lawyer". "What!" I retorted. "Yes, yes" said Vivian Irish who was sitting next to me. "We advise on the law." "So do accountants, tax consultants, planning consultants and costs draftsmen" I replied. "If you why not them?" Personally, I can't see why patent agents changed the name of their profession from "patent agent " to "patent attorney ". It seems...

A meeting of counsel undertaking public access work should have taken place at 23 Essex Street this afternoon. The purpose of the meeting was to launch a new bar association to be known as PABA (Public Access Bar Association). I had been invited but was unable to attend as I was attending a reception for my old friend Dai Davis, who has recently moved firms. However, I certainly intend to join and contribute to the PABA once it is up and running. The Bar on Direct Access The rule that counsel could accept instructions or give advice only through a solicitor, patent or trade mark attorney or other professional intermediary dates back only to the 1950s. When introduced, the rule was probably in the public interest. Members of the public had less information on the law and few had any idea of how to obtain legal services. There was a sharp distinction between solicitors and counsel. Law firms were limited to 20 partners, fewer solicitors were graduates and information storage and ...

No rest for the wicked so they say. One hour after I had shambled back from Sierra Leone I had to dash off to Leeds for a meeting at Leeds Metropolitan University . While I grumbled about it at the time, I am very glad that I made the effort because what I was shown was impressive. The former Friends' Meeting House at Woodhouse Lane has been transformed into The Institute for Enterprise which will be made available to the general public as well as to staff and students of the University. The Institute has all sorts of magnificent facilities: a meeting space in the vestibule conventional class and seminar rooms a soundproof room for confidential discussion a cafe at the entrance. Every room and space has internet access and a screen for presentations. The reason for the invitation was that the University had offered to host the April Leeds Inventors' Club meeting at the Institute. We had a really entertaining talk by Tony Bryant, the University's Professor of Informatics, e...

I have just returned from 2 weeks in Sierra Leone . I had intended to visit the Administrator and Registrar-General's Department which appears to be the local intellectual property authority but the main town, Freetown, is not the easiest city to get around and I was supposed to be on holiday. Instead, I did the next best thing which was to talk to local practising and academic lawyers about intellectual property protection in their country. On paper Sierra Leone ticks most of the right boxes. It has been a member of the World Trade Organization since 23 July 1995 which is almost as long as us. Consequently, it must have been one of the first countries in the world to ratify TRIPs . It is party to the Paris Convention, the PCT, the Madrid Agreement and Protocol and the WIPO Convention but not, apparently, Berne or the UCC . According to the WIPO, the country's domestic intellectual property legislation is archaic: - patents are granted under the Patents Act of 1924, - trad...

One item of business transacted at the special Council meeting in Berlin to celebrate the 50th anniversary of the Treaty of Rome that appears to have been overlooked in the furore over the revival of the constitutional treaty and the arrest of one of our naval units by Iranian forces is the adoption of the Community patent regulation . This regulation, which comes into force at midnight, will empower the European Patent Office to grant a Community wide European patent in addition to the nationally designated patents that it grants at present. "This is a day I never thought I would ever see", said Ron Marchant . "It's a bit like Gerry Adams sitting down with Ian Paisley. But that happened last Monday and so has this momentous decision to adopt the regulation. There have been so many false dawns starting with the Community Patent Convention which was unfortunately never ratified and it is good to see something come of it at last. It will of course mean a lot less ...

Paragraph 7.9 (2) of PD63 requires claimants in the Patents Court to file a Reading Guide for the judge not less than 4 days before trial. Such Reading Guide must set out the issues, the parts of the documents that need to be read on each issue and the most convenient order that they should be read; identifying relevant passages in text books and cases, if appropriate. Paragraph 11 of the Patent Court Guide adds that parties should endeavour to produce a composite document setting forth the matters alleged to form part of the common general knowledge and, where they disagree, what that disagreement is. According to Richard Miller QC, Mr Justice Pumfrey has complained that pre-reading estimates in patent cases are often unrealistic and therefore unhelpful. Practitioners have been reminded that the estimate should allow time for the judge to read the patent, the prior art, the expert's reports and evidence of fact, skeleton arguments, and any other key documents. A further allowance...

William New has reported in Intellectual Property Watch that the WIPO Provisional Committee on Proposals related to a WIPO Development Agenda ( "PCDA" ) has reached broad agreement on 40 issues at their latest meeting which took place between 19 and 23 Feb 2007. Those issues include technical assistance, technology transfer, information and communication technologies and enforcement. A final meeting of the PCDA is expected in June 2007.

One of the advantages of registering my .eu domain name with indom.fr is that I receive a very good newsletter called " DomainesInfo" on domain names and internet governance from a French perspective. Today's lead story, for instance, is "A quoi sert l'ombudsman de l'ICANN ?" or What's the Point of an Ombudsman for ICANN by Stéphane Van Gelder. Setting out his stall Monsieur VG asserts "The Anglo Saxons have a mediation culture. In business they have set up an official to carry out such function. The ombudsman is the mediator whose job is to try to defuse potential crises. But does ICANN really have a need for such an official." All good stuff for folk like me for whom Neoconservativism is only slightly less objectionable than Fascism or Stalinism who think that Servan-Schreiber had a point though I am not really sure that I appreciate the argument. There is an English page on the website but not everything seems to get translated. Als...

Patent Office hearing officers have added three new decisions to the ones I mentioned in "Patents: The Macrossan Aftermath" on 15 Feb 2007. All dismissals, I'm afraid. In NEC Corporation's Application Mr Bartlett found on 16 Feb 2007 that the technical contribution of a system for processing email according to content and source for mobile phones consisted entirely of excluded matter and was thus unpatentable. Mr Marchant came to a similar conclusion in Start-Global Limited which concerned a computer based project management system for use in civil engineering construction projects on 22 Feb 2007. We don't yet have a transcript to Mr Barford's decision in Arbitron Inc of 21 Feb 2007 but the case summary indicates that the invention determined the popularity of websites, broadcasting channels etc according to such criteria as audience demographics. Surprise, surprise. All excluded matter. Bearing in mind that our economy is now services based and that manuf...

In England and Wales and a number of other countries costs (that is to say, lawyers' fees and expenses) follow the event. Another way of putting it is that the loser pays. Not every country in the world has such a rule. In the USA, for instance, it is the exception rather than the rule for a court to order an unsuccessful party to pay the successful party's costs though jurisdiction to make such an order does exist under a number of statutes and juries are said to take legal fees into account when awarding damages. But in England the loser pays and we are unlikely to change that rule anytime soon because it works to the advantage of the state and other big and powerful interests. I think the rule is very unfair but then that may be because I advise a lot of little chaps from places like Oswaldtwistle and Heckmondwike who as often as not have borrowed up to the hilt and mortgaged their grannies to float their software houses, design studios or other businesses . Anyway, when yo...

Nearly 10 years ago I wrote a case note on Ocular Sciences v Aspect Vision Care [1997] RPC 289 entitled "Have Faccenda's Chickens had their Chips?" I chose that title because the CA had appeared to draw a distinction in Faccenda Chickens v Fowler [1984] ICR 589 between "trade secrets" the disclosure or use of which could be restrained without a restrictive covenant and other confidential information that could not. Drawing the line between the two was never very satisfactory and in Ocular Sciences Sir Hugh seemed to offer a better test. He started from the premises that an employee is entitled to deploy his skill and expertise for any employer though an employer may restrain unauthorized use or disclosure of his confidential information like anyone else. He acknowledged that it is public policy that an employee should use and put at the disposal of new employers all his acquired skill and knowledge no matter where he acquired it or whether it was secret ...

Not for the first time I am indebted to my distinguished colleague Toni Tease of Billings, Montana for providing material for a post. Toni publishes an excellent monthly newsletter on IP called Intellections. This month's issue discusses The Security and Accountability For Every Port Act (SAFE Port Act). Interestingly her article is entitled "Montana's Senator Baucus Supports Allocating Resources for Increased Intellectual Property Protection." Nice to have a local politician interested in IP. I get the impression that my MP couldn't care less, I can't even get Auntie Kali to answer an invitation to address the Huddersfield Inventors Club . Getting back to the point, SAFE provides US Customs with sufficient resources to protect IPR at the borders. Toni's Senator would have gone even further by establishing an Intellectual Property Rights Enforcement Division within the customs service. That division would have collaborated with overseas governm...

We had a really good day in Huddersfield and Bradford last Thursday. P articularly in Huddersfield. All the inventors we saw there were young. Two were from the University. We obviously can't identify those ideas or inventions were but they ranged from household gadgets to some very wizzy electronics. Can't be much wrong with a country that generates all that, I thought, despite all the disincentives to innovation our political masters have imposed over the last 9 years and 10 months. IP clinics take place in Huddersfield and Bradford on the third Thursday of every February, April, June and October. They consist of a patent librarian to do the searches, a patent agent, a business advisor and me. I am also available in Bradford every third Thursday between 15:00 and 17:00 and Huddersfield every last Friday between 11:00 and 13:00. If you want to book an appointment call Jacquie Asquith in Huddersfield on +44 (01484) 483080 and Shabana Kauser in Bradford on +44 (01274) 841300.

Not long after the Court of Appeal's decision in Aerote l Ltd. v Telco Holdings Ltd and Others (Macrossan) [2005] EWCA Civ 1371 (27 Oct 2006) the Patent Office published a practice notice on patentable subject matter which replaced a whole series of previous notices on the topic going back to 1999 and modified others on games and business method patents. Paragraph 5 of that notice propounded the 4 step test that the the Court had approved in Macrossan : (1) properly construe the claim, (2) identify the actual contribution, (3) ask whether it falls solely within the excluded subject matter and (4) check whether the actual or alleged contribution is actually technical in nature. Since the Court of Appeal's decision and subsequent practice notice there has been a wealth of excluded matter hearings in the Patent Office in which that test has been applied: 11 Dec 2006 John Lahiri Khan 11 Dec 2006 Rockwell Firstpoint Contact 29 Dec 2006 Nintendo 8 Jan 2007 Consolidated Global Fun U...

The reason everything is in red and gold is that today is the Chinese New Year and those are the colours for celebration. I should like to wish all my readers - especially those from China - a very happy New Year. As I have mentioned several times my chambers are very interested in China and we have recently published our Mandarin brochure . That brochure was put together by Wei Huang who represents us in that increasingly important market. Wei and her husband Ron Jones have put together a really good workshop on Chinese IP law in Chongqing in south west China between 10 and 18 Nov 2007. The Workshop will take place at the Chongqing Marriott Hotel and speakers include academics from Southwestern University Law School, local IP professionals and a judge of the local patents court. The event is hosted by the Chongqing Municipal Intellectual Property Bureau. The workshop is intended to give UK and European patent agents and lawyers a deeper understanding of how to collaborate with Chine...

Jeremy Phillips in Liverpool, 6 Feb 2007 The photograph above was taken just before Jeremy's talk on Five Live Issues in Intellectual Property Law to IPCEX and the Liverpool Inventors' Club on 6 Feb 2007. Jeremy needs no introduction. The lady to my right is Ruth Grodner , Patent Librarian of Liverpool Central Library who runs the Liverpool Inventors' Club and the man to the left of Jeremy is Michael Sandys of Kirwans, the solicitors who hosted the event. Dates for your Diary . Kirwans' marketing manager has very kindly found some more speakers. The provisional programme is as follows: 26 Feb John Lambert “Crane, Paper, Scissors, Stone” (Planning for IPR enforcement) 26 Mar Eden Bio-Design CEO, Dr Crawford Brown [either March or May TBC] 30 Apr Andrew Moss DSG Accountants Financial monitoring and research and development 21 May Eden Bio-Design CEO, Dr Crawford Brown [either March or May TBC] 25 Jun – Michael Sandys and Michelle Stewart or Catherine Lo [topic to be an...

Three new Orders in Council were made on 14 Feb 2007 adding to the list of countries for whose citizens and residents copyright and performers' right protection is extended and updating the list of "convention countries" for the purposes of the Patents Act 1977 and Registered Designs Act 1949 . The Copyright and Performances (Application to Other Countries) Order 2007(SI 2007 No 273) revokes The Copyright and Performances (Application to Other Countries) Order 2006 with effect from 6 Apr 2007. The only material difference between this order and the previous one appears to be that copyright protection now extends to nationals and residents of Samoa which is very interesting given that the Supreme Court of Western Samoa held that there was no such thing as copyright in that country in Fauolo v Gray [1997] WSSC 1; CP 364 1995 as recently as 5 Aug 1997 (see also my case note on that decision which I published nearly 9 years ago). Clearly the Samoan legislature acted prom...

Dennis Crouch has published an excellent article on American patent applications data in Patently-O. Dennis has analysed 10,000 of the most recent patents "to see what's going on with pendency and other issues." He found the average time from filing to grant in the case of applications that were not based on a previous US filing to have been 3 years and 4 months and the average time from filing to grant in the case of applications based on a prior US filing to have been 2 years and 11 months. Applications based on foreign filings seemed to take the same amount of time regardless whether they were based on a previous filing or not. It is interesting to compare the US Patent and Trademark Office's performance with that of our own . Some comparable data is available from "Facts and Figures 2004-2005" and some performance data can be checked from the Patent Office's Annual Report and Accounts for 2005 and 2006 . Judging by the table on page 58 of the Annua...

A report by Tove Iren S. Gerhardsen in today's Intellectual Property Watch on Novartis's challenge to Indian patent legislation on the ground that it doers not comply with TRIPs is reminiscent of the challenge by the Pharmaceutical Manufacturers Association of South Africa to South Africa's compulsory licensing laws. That challenge was abandoned at the door of the court as a result of co-ordinated political pressure around the world and there are signs of similar pressure building up on Novartis. Significantly, much of that pressure is coming from South Africa. A press release of the Ecumenical Advocacy Alliance quotes Archbishop Desmond Tutu: ""People, not profits, must be at the centre of patent law for medicines." Although the case revolves around a cancer drug it does have a bearing on aids in that countries in Sub-Saharan Africa with no pharmaceutical industry of their own rely on imports of generic drugs from India and that these would be at risk were ...