NIPC Law

On 5 Nov 2009 Oracle America Inc, which was then known as Sun Microsystems Inc. ( "Oracle" ), applied to Mr. Justice Kitchin for summary judgment against M-Tech Data Ltd. ( "M-Tech" ) (see Sun Microsystems Inc v M-Tech Data Ltd and another [2010] 2 CMLR 7, (2010) 33(2) IPD 33010, [2010] ETMR 13, [2009] EWHC 2992 (Pat), [2010] FSR 9). Oracle is the registered proprietor of a series of UK and Community trade marks comprising or consisting of the word "Sun" in respect of, inter alia, computers, computer hardware, computer software and computer peripherals.   M-Tech, which supplies computer hardware in what has been described as the secondary market for hardware, had purchased 64 Sun disc drives from a broker in the USA, imported them into the UK and sold them to a business called KSS Associates. Oracle contended that those disc drives were put on the market by M-Tech in the UK without its consent and thereby infringed its British and Community trade marks. ...

In my post on Lord Marland ( "Lord Marland becomes Minister for Intellectual Property"  15 Sept 2012I) I referred to The UK’s International Strategy for Intellectual Property , As there was considerably more interest in that policy document than there was in the Minister in my feedback I have decided to take a closer look at that document. In  Digital Opportunity A Review of Intellectual Property and Growth   Professor Ian Hargreaves recommended that "The UK should resolutely pursue its international interests in IP, particularly with respect to emerging economies such as China and India, based upon positions grounded in economic evidence. It should attach the highest immediate priority to achieving a unified EU patent court and EU patent system, which promises significant economic benefits to UK business. The UK should work to make the Patent Cooperation Treaty a more effective vehicle for international processing of patent applications." He amplified his thinkin...

One of the least reported changes in the recent ministerial reshuffle has been the replacement of Baroness Wilcox  as Minister for Intellectual Property by the Rt. Hon. Lord Marland .  As he is not exactly a household name I looked him up Lord Marland on Wikipedia and found that he had enjoyed a successful career in business. One of his businesses was Hunter  Boot Ltd  which he saved by transferring production from Britain to China (see "Hunter Boots owner Lord Marland looks for new prey" The Telegraph 14 Feb 2009). He had been less successful in politics  contesting Somerton and Frome for the Tories in the 2001 general election and coming second. Lady Wilcox had been rather a good minister in my view. For instance, she had backed patent reform opening the first WIPO patents symposium in London on 6 March 2012. That is one of the objectives of the IPO's international strategy (see "The UK’s International Strategy for Intellectual Property" 11 Aug 2012...

The BBC website carries an interview with Mr. Velvin Hogan , foreman of the jury in the Apple trial in California (see "Apple versus Samsung: Full interview with the jury foreman" BBC website 31 Aug 2012). . Mr. Hogan is chief technology officer at Multicast Labs, which develops video technology for the web, and he claims to have been familiar with the US patent system before the trial. This interview is fascinating for several reasons. For Mr. Hogan "one of the most decisive pieces of evidence was reading the minutes for myself of a meeting that was held at a very high level between Google executives and Samsung executives, where it was for a tablet and Google was concerned that for the sake of their operating system that the look and feel and the methodology that they [Samsung] were using to create their tablet was getting too close to what Apple was doing. And in the memo themselves - remember this was minutes - they stated that Google demanded that they back ...

Following its victory in California, Apple's shares rose by 1.88% while Samsung's fell by 7% even in Korea where Samsung won a partial victory (see "Apple seeks to ban sale of eight Samsung phones in US" BBC 27 Aug 2012). It was perhaps in anticipation of this reaction that Samsung applied for an injunction to restrain Apple "from representing to any person that the making and/or offering and/or putting on the market and/or importing and/or exporting and/or using the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers and/or stocking the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers for those purposes by the Claimant in the European Union infringes Registered Community Design 000181,607-0001" after its victory in    Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012). Judge Birss refused to make that order in Samsung Electronics (UK) Ltd v Apple Inc  (N...

As almost everyone on the planet will have heard by now, Apple Inc . won a convincing victory over Samsung Electronics Ltd . and its American subsidiaries in the US District Court for the Northern District of California on the 24 Aug 2012.  The claim was for the infringement of various US "utility" and "design patents" belonging to Apple and "dilution" and infringement of Apple's "trade dress" - causes of action that appear to be roughly equivalent to patent and registered design infringement and passing off in the UK and most other common law countries.   Samsung counterclaimed for the revocation of Apple's patents and damages and other relief for the infringement of its own patents.  As the 7th amendment to the US constitution guarantees trial by jury for claims over US$20, the claim and counterclaim came before a jury.  In its 20 page verdict that jury found for Apple on just about every issue and awarded Apple US$1,049,343,540 in da...

On 5 Jan 2012 I reported the Richard Hooper had been appointed to carry out a feasibility study on a digital copyright exchange and his call for evidence (see "Copyright: Hooper Calls for Evidence"  ). Richard Hooper has now published his report:  Copyright works: Streamlining copyright licensing for the digital age . In his report, he said that the creative industries had responded constructively to Professor Hargreaves's report and were busy streamlining copyright licensing for the digital age. He expected such streamlining to reinforce the lead enjoyed that the British creative industries already enjoy in the distribution of digitized content. However, more could be done and his main suggestion was "the creation of a not-for-profit, industry led Copyright Hub based in the UK that links interoperably and scalably to the growing national and international network of private and public sector digital copyright exchanges, r...

Olympics association rights and the London Olympics Association rights are often referred to as intellectual property rights but as their purpose is to raise revenue from corporate sponsorship and broadcasting they have rather more in common with the monopolies peddled by James I in his attempt to govern without Parliament.   The sale of such monopolies was bitterly resented and was arguably one of the underlying causes of the Civil War which led eventually to the execution of Charles I in 1649 (the scene of which is depicted in the well-known woodcut above).   It is ironic that the king was put to death at Whitehall Palace, not far from where scantily clad young women have been prancing around a sandpit patting a ball over a net.   Happily, nobody is likely to lose his head nowadays but there is plenty of resentment against the modern equivalent (see Andreas Whittam Smith  "In our race to win the Games, we lost our dignity"  Independent 26 July 2012...

Massey (Child) v Dinamo Productions Ltd [2012] EWPCC 27 (13 June 2012) was an unusual case in that  the claimant was a minor when the claim began. He claimed £2 million for copyright infringement and appears to have acted for himself throughout the proceedings.  The claimant's complaint was that defendant television production company had appropriated his idea for a children's TV show to be called "The Wordles" which he offered to the BBC in July 2010. The defendant also developed a script for an episode of a children's TV show that was to be called "The Wordles" but that took place in 2009.  There was no direct contact between the parties until just before the claimant brought his action.  Their only point of contact was through a third party called Kavaleer. The defendant applied to strike out the claim on the grounds that  "it is without foundation and there is no real prospect of the case succeeding."  Mr. Recorder Campbell consider...

In   " Educating Samuel: No. 1 Added Matter "  4 Nov 2008 IP Northwest, I explained what is meant by "added matter." There are not many cases on added matter.   One such was   Smith & Nephew Plc v Convatec Technologies Inc .  [2012] EWHC 1602 (Pat). The Context This was an application by Smith & Nephew to revoke Convatec's  European Patent (UK) No. 1,343,510 entitled "Light Stabilized Antimicrobial Materials" on various grounds. In the course of the proceedings Convatec conceded that the patent was invalid and applied to amend.  Smith & Nephew objected to the amendments on the ground that they constituted added matter contrary to s.76 (3) of the Patents Act 1977 . They also argued obviousness and insufficiency. The Section S.76 of the Act provides as follows: " Amendment of applications and patents not to include added matter 76.-(1) An application for a patent which - (a) is made in respect of matter disclosed in an earlier ap...

S.13 of the Patents Act 2004 inserted two new sections into the Patents Act 1977 . S.74A provides as follows: " 74 A Opinions as to validity or infringement (1) The proprietor of a patent or any other person may request the comptroller to issue an opinion— (a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; (b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied. (2) Subsection (1) above applies even if the patent has expired or has been surrendered. (3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so— (a) in such circumstances as may be prescribed, or (b) if for any reason he considers it inappropriate in all the circumstances to do so. (4) An opinion under this section shall not be binding for any purposes. (5) An opinion under this section shall be prepared by ...

One the most surprising and in many ways depressing passages of the IPO's publication "From ideas to growth: Helping SMEs get value from their intellectual property" (April 2012) is the statement on page 17 that only 13 mediations have been conducted by the IPO in the past 5 years, and just one in the past year.  Because the usage is so low the IPO is thinking of discontinuing the service altogether unless it can be adapted.   The IPO has requested feedback on perceived awareness levels and how, if the service does continue, the IPO might increase its visibility. The IPO's mediation service is extraordinarily good value.   A full day mediation in Newport facilitated by a CEDR (Centre for Effective Dispute Resolution)  trained mediator with specialist knowledge and experience of intellectual property including accommodation costs £750.  The same mediator will come to the IPO's London premises for just another £250.   So why ...

In Case T-336/08 Chocoladefabriken Lindt & Sprüngli v OHIM (shape of a chocolate rabbit with a red ribbon)  [2010]  EUECJ T-336/08, the General Court  dismissed Lindt & Sprunglli's action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 June 2008 (Case R 1332/2005-4) concerning its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red ribbon as a Community trade mark on the ground that the applications are devoid of distinctive character within the meaning of art 7 (1) (b) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark). The manufacturer appealed against that decision to the Court of Justice of the European Union essentially on the ground that there was no evidence for the conclusion that the "t...