NIPC Law

Despite such setbacks as the decision of the Court of Justice of the European Union on the incompatibility of the proposed European Patents Court with EU Law and the objections of the Italian and Spanish governments to an EU patent (see my case note on the CJEU's decision), the European Commission has proposed two regulations for a single European patent for the other 25 member states (see the press release "Commission proposes unitary patent protection to boost research and innovation" 1P/11/470). The first proposed regulation would be for enhanced co-operation in the area of the creation of unitary patent protection. The second would be for translation requirements. The combined effect of those regulations would reduce the cost of patenting in the participating member states (which would include the UK, Germany and France) by 80%. Under the proposals applicants could apply to the European Patent Office for a European patent that would designate all the member st...

The recommendation of the Intellectual Property Court Users' Committee that was not implemented on 1 Oct 2010 when the New Patents County Court Rules came into effect was a £500,000 limit to claims. The reason for the late implementation of that proposal is that it had a mixed reception. According to the Committee "Some approved of the Working Group’s proposal. Some thought that there should be a higher limit. Some thought that there should be a limit not on the damages or profits claimed, but on the value of the claim as a whole e.g. by reference to the annual sales, or projected sales, of products protected by the IP right (i.e. total sales made by the right owner, its licensee and/or the alleged infringer). Some thought that there should no limit." Although there was no official limit to the value of a claim that could be brought in the Patents County Court, Judge Birss QC certainly took the value of the claim into account when he transferred Alk-Abello v Meridian M...

After the party comes the bill. In this final episode of the Media CAT saga ( Media CAT v Adams No, 4 [2011] EPC 10) His Honour Judge Birss QC decided who was to pay for episodes 1 , 2 and 3 . Or, to be more accurate, whether the solicitors who brought this litigation and their principal Andrew Crossley , should pay for them under s.51 (6) of the Senior Courts Act 1981 , This sub-section provides: "In any proceedings mentioned in subsection (1), the court may disallow, or (as the case may be) order the legal or other representative concerned to meet, the whole of any wasted costs or such part of them as may be determined in accordance with rules of court." The proceedings mentioned in s.51 (1) are proceedings in the Civil Division of the Court of Appeal, the High Court and any county court. Wasted costs are defined by s.51 (7) as "any costs incurred by a party— (a) as a result of any improper, unreasonable or negligent act or omission on the part of any legal or ot...

In my article " Divided by a common language: US and UK patent law" which was published in Science, People & Politics (April to June 2011) I noted that one of the differences between US and UK patent law was that 3 5 USC 102 (b) of the US act permits an application for a US patent even where the invention has been described in a publication or application for a foreign patent that has been made in the last 12 months. In England such publication would be prior art . Right on cue a case that illustrates the point is the decision of the Court of Appeal in Merck Sharp & Dohme Corp. v Teva UK Ltd. [2011] EWCA 382. This appeal from the decision of Mr. Justice Floyd in Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat) (20 Nov 2009). [2010] FSR 17 was in respect of an application by Teva UK Ltd. ( " Teva " ) for the revocation of Merck Sharp & Dohme Corp ( "Merck" )'s European patent no. 0509752 on grounds of obviousness. T...

“Designing the Future” is the theme of this year’s World Intellectual Property Day 2011. In his message , Francis Gurry, the Director General of the WIPO, said: “Design touches every aspect of human creativity. It shapes the things we appreciate from traditional crafts to consumer electronics; from buildings and bicycles to fashion and furniture. Design has been called “intelligence made visible”. Design is where form meets function. It determines the look and feel of the products we use each day – from everyday household items to the latest tablet computers. Design marries the practical with the pleasing. It brings style to innovation.” In everyday language design can refer either to an object’s appearance or to the way it works. Thus, we speak of “fashion design” and “engine design”. The former is ornamental and the latter functional. Most countries protect ornamental design by one means or another. For example, EU member states are required by art 3 (1) of Directive 98/71...

The main point of Schütz (UK) Ltd v Werit (UK) Ltd [2011] EWCA Civ 303 (29 March 2011) was whether a patent for an intermediate bulk carrier - essentially a large plastic bottle tightly encased in a tight metal cage constructed from tubes flattened at each join - could be infringed by inserting the bottle into a cage constructed from differently connected members. The relevant claim was as follows: "Pallet container for the transporting and storing of liquids, having a flat pallet, an exchangeable inner container made of plastic material with an upper, closable filler opening and a lower emptying device and also, surrounding the inner container, one outer sleeve which consists of vertical and horizontal lattice bars made of metal which support the plastic inner container filled with liquid ..." There was nothing special about the pallet or the bottle. The photo shown above is not a picture of the patented invention but of the prior art. Lord Justice Jacob inser...

According to Al-Jazeera a leaked copy of the Hargreaves Report has recommended the break up and partial privatization of the Intellectual Property Office . If the report is implemented, patent registration for the United Kingdom is to be abolished altogether on the ground that there is already a perfectly adequate service operated for the UK by the European Patent Office in Munich; in line with the trend towards localism, trade mark and design registration are to be franchised to 12 local registries for East of England, East Midlands, London, North East England, Northern Ireland, North West England, Scotland, South East England, South West England, Wales, West Midlands and Yorkshire and the Humber which will be offered to competitive tender; and It is understood that an enquiry for the search service has already been received from India and the outreach service will be put out to competitive tender. Neither Dr Vince Cable, the Secretary of State for Business, Innovation & Skills,...

I n the Hedgehog Golf Company Ltd v Hauser [2011] EWHC 689 (Ch) (23 March 2011), Mr. Justice Newey granted the claimant Hedgehog a perpetual injunction from properly disclosing confidential information. in interlocutory proceedings "confidential information" had been defined as "confidential information relating to patent number 1625827 and all other research activities, inventions, secret processes, designs, formulae and product lines". Now patents and confidentiality are opposites - like oil and water, north and south, chalk and cheese, Lancashire and Yorkshire, cat and dog and so on. If you have invented a new product or process you can either "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" in the hope of obtaining a 20 year monopoly known as a patent , or you can keep mum and rely on the law of confidence to prevent anyone to whom you may have disclosed ...

L ord Justice Jacob will retire from the Court of Appeal to take up the Hugh Laddie Chair at University College London (see "Sir Robin Jacob to lead IP Law at UCL" ). In accordance with tradition, valedictory speeches will be offered in the Lord Chief Justice's Court at 09:45 tomorrow, 21 March 2011. He was not one of my easiest tribunals but he was one that I respected more than most. A very powerful intellect, one of our best jurists, I wish him well. I invite all my readers who can reach London easily tomorrow morning to attend his valedictory if they possibly can. I invite everybody to contribute to fund the Institute of Brand and Innovation Law.

There are two new judgments from the Patents County Court on BAILII (British and Irish Legal Information Institute): Deakin and Another (t/a Faith Image Source) v Card Rax Ltd and Others [2011] EWPCC 3 (1 Feb 2011) and National Guild Of Removers & Storers Ltd v Jones and Another ( t/as ATR Removals) [2011] EWPCC 4 (9 Feb 2011). Deakin Deakin was the trial of an action and counterclaim for damages for breach of contract with incidental copyright issues that had been brought under the old CPR Part 63 and Part 63 Practice Direction relating to designs for greetings cards. gift wrap paper and other stationery. There was a re-re amended particulars of claim and two amended defences which gave rise to 65 issues. The trial had taken place before His Honour Judge Fysh QC over 10 days of May, June and July 2010 and judgment was delivered on 1 Feb 2011. National Guild National Guild, by contrast, was an inquiry as to damages for trade mark infringement very similar to the s...

I mentioned this litigation on the 12 and 21 Dec 2010 . In my latter case note I reported that the judge had found claims by Media CAT Ltd. against 27 defendants and listed them to come on before him on 17 January 2011. I advised those defendants to take legal advice and if possible appear by counsel and that is precisely what most of them did. Shortly before the 17 the claimant's solicitor tried to discontinue the claims against the defendants and vacate the hearing making clear that he intended to reissue the proceedings. The judge appears to have raised of his own motion the question whether the court's permission would be required for discontinuance and asked whether any step could be taken in the litigation without the consent of the copyright owner. The defendants' counsel indicated that they would be seeking wasted costs against the claimant's solicitors. The only thing that saved those solicitors from being ordered to show cause there and then was that their c...

This was Mr Justice Henderson's judgment in the trial of an action between two Gibraltar based online gambling concerns. The claimant in 32Red Plc v WHG (International) Ltd and others [2011] EWHC 62 (Ch) (21 Jan 2011) had sued for infringement of Community trade mark 2814424 and British trade mark 2509861 . The defendants had counterclaimed for invalidation of those registrations. The signs to which the claimants objected were the words "32vegas.com", "32vegas" and "32v" and three devices incorporating the numeral 32. In a rather long judgment, His Lordship identified the following issues and considered them in the following order: whether the CTM been infringed under art 9 (1) (b) of the CTM regulation? whether it had been infringed under art 9 (1) (c); whether the CTM registration was invalid; whether the British trade mark registration was invalid; and whether the British mark had been infringed. Mr. Justice Henderson found that the ...

This was an appeal against the following judgments of Mr Justice Floyd: Nokia GmbH v Ipcom GmbH & Co KG [2009] EWHC 3482 (Pat) (18 Jan 2010) ("the main judgment"); [2009] EWHC 3034 (Pat) (20 Nov 2009) ("the first amendment judgment"); and [2010] EWHC 789 (Pat) (31 March 2009) ("the second amendment judgment"). The litigation concerned two patents which the trial judge described as follows: "The two patents relate to cellular mobile phone technology. Broadly speaking, the first of the patents, European Patent (UK) No. 540 808 ("808"), is concerned with the way in which the mobile phone synchronises itself with the transmissions it receives from the base station. The second of the patents, European Patent (UK) No. 1 186 189 ("189"), is concerned with management of the right of the mobile phone to connect to the network." In the appeal, Lord Justice Jacob referred to 808 as the "synch patent" and 189 as the "...

I should first like to wish my readers a happy New Year. Good riddance to the old one which was awful. After the emergency budget in June virtually every SME in England seemed to go to earth. The explanation is not hard to fathom. Litigation is funded largely on tick. So, too, is new product design and development. With the banks rebuilding their balance sheets and making only the payments that they really have to make, such as bonuses to their executives and traders, frivolous matters such as branding and innovation just have to wait. A sign of the times is that Judge Birss's spanking new intellectual property court is posting reports of decisions on paper like the Media CAT cases or case management conferences such as Westwood v Knight. The first case of 2011 is much more exciting. A summary judgment application would you believe. In Fitco Inc. v Haugh [2011] EWPCC 1 (6 Jan 2011) a former director of a company that had made its peace with the claimants, was sued for join...

I am grateful to Mr John Rogers for bringing Media CAT Ltd. v Billington [2010] EWPCC 18 (17 Dec 2010) to my attention. It appears that Judge Birss QC and his clerk reviewed all the cases in his list and found 13 more that had been brought by Media CAT in September and October plus another 14 in November. All involve similar issues to the cases I mentioned in my case note of 12 Dec 2010. Many of them consist only of a claim form and particulars of claim . At least one defendant seems not to be without a response pack. The judge has listed all those cases for directions at a hearing to take place on 17 Jan 2011 of his own motion under CPR 3.3 (1) and (4). II should be interested to know what Media CAT's solicitors have to say about it. The Bar provides pro bono advice and representation through the Bar Pro Bono Unit . Anyone affected should have a word with his local CAB, law centre or MP first. I am sure most IP chambers would be glad to take referrals from the Unit. We certa...

An interesting little domain name case that is curious in several respects: first, that it was brought in the courts at all rather than before an administrative panel appointed by one of the UDRP (Uniform Domain Name Dispute Resolution Policy) dispute resolution service providers ; secondly, that it was brought in England when none of the parties appears to have anything to do with England, thirdly, that it was brought in the Technology and Construction Court which is part of the Queen’s Bench Division rather than the Chancery Division or even the Patents County Court; and fourthly, the claimant’s cause of action. The Facts In Lifestyle Management Ltd. v Frater [2010] EWHC 3258 (TCC) (10 Dec 2010) the claimants were companies registered in Kenya and the British Virgin Islands while the defendant was in Scotland. The claimants have a website at www.offshorelsm.com which indicates that they provide services “for the international investor and the professional expatriate”. Their tradi...

I n Media C.A.T. Ltd. v A and others [2010] EWPCC 17, His Honour Judge Birss QC had 8 requests for judgment. The particulars of claim in each case alleged that: "The defendant, someone authorised by him to use his internet connection, or someone who gained access to the defendant's internet connection due to the router to that connections having no or no adequate security was at all material times a user of the peer-to-peer file sharing software known as BitTorrent 6.1.2 which allows the user to share digital media content files on a network with other users." The relief sought in the requests for judgment included "a permanent injunction pursuant to the inherent jurisdiction of the Court; ordering the defendant to take reasonable steps to safeguard their internet connection being used, either through the defendant's personal computer and/or third parties taking advantage of the defendant's unsecured wireless connection to repeat the infringement of the clai...