The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 30 April 2008

Invitation to the Ipplewhip Party -- for IP solicitors only

The IPKat has just learned that the Intellectual Property Law Working Party (IPLWP, or "Ipplewhip" as the IPKat assumes it must be pronounced) of the Law Society for England and Wales is seeking to fill up to six vacancies, for which it invites applications for membership.

Right: After the Working Party meeting finishes, members relax and enjoy the cordiality of each others' company

According to the official announcement,

"... The IPLWP is specifically looking for intellectual property solicitors, from both private practice and industry, specialising in all aspects of IP.

Applicants should be willing to be active participants in the work of the IPLWP, and should be able to commit to four meetings a year, in central London, from 6.00pm to 8.00pm. Meetings for 2008 take place on 29 April, 23 July and 22 October.

The Law Society wishes to encourage applications from IP solicitors irrespective of gender, race, colour, age, sexual orientation or disability, and appointments will be based on merit, following an open and clear selection process".

If you are interested in applying, please contact Gareth Sykes at Constitutional Affairs, The Law Society, 113 Chancery Lane, London WC2A 1PLE -- or just email him. Closing date for applications is Tuesday, 27 May 2008.

The IPKat, who loves parties, hopes that lots of eager people will apply.

More parties here, here, here and (a favourite of lawyers) here

Around the periodicals

The May 2008 issue of Patent World (click here for contents and details) leads with a double question from engineer-turned-solicitor David Knight (Field Fisher Waterhouse): "why is it more expensive to enforce patent rights in Europe and what is being done to reduce the costs?". Optimistically, David feels that things are looking up and, in his own words, that "the costs of enforcing patent rights in the UK and Europe will continue to reduce" (this issue went to press too early to take account of the startling costs decision in RIM v Visto (noted here by the IPKat), which is fortunately not typical of the genre).

Right: the Royal Courts of Justice, London -- an effective device for the distribution of wealth ...

Another notable piece in this issue comes from Mike Thumm (Chipworks), which looks at reverse engineering -- not from the traditional point of view of working out how you can make a competitor's products but from a strategic, IP-management perspective.

The 8-times a year Sweet & Maxwell Journal of Business Law (see webpage here) is not known for its IP content, but every so often it publishes a substantial item in that area. Issues 3 and 4 have recently been published. Issue 3 has nothing on IP as such, but "Termination of a Contract by a Party in Breach", by Australian academic Wayne Courtney, covers in general terms a topic that is of keen interest to IP licensors and their licensees, for obvious reasons. Issue 4 has a major feature by two Singaporean academics, Cheng Lim Saw and Susanna H. S. Leong, "Defining Criminal Liability for Primary Acts of Copyright Infringement: the Singapore Experience". These are the same authors, the IPKat favourably recalls, who wrote a very good piece, "Copyright Infringement in a Borderless World - Does Territoriality Matter?", in the Spring 2007 issue of Oxford University Press's International Journal of Law and Information Technology.

Out of the same stable as the JBL but with a very much more frequent IP-specific content is the bimonthly collection of European Commercial Cases (see here for title details). This issue features two IP cases:

* Experience Hendrix LLC v Purple Haze Records Ltd and others (Court of Appeal, England and Wales, noted here by the IPKat), a ruling on whether the provisions of the Copyright, Designs and Patents Act 1988 applied to performances made by a performer before that Act came into force and where the performance took place in a country that was not, at the time it took place, a "qualifying performance";

* Jean-Philippe X v Universal Music and others (Cour de Cassation de Paris), a case explaining the position under French law where a producer continued to exploit the exclusive rights vested in him by a contract that was later rescinded, the contract itself being silent as to the effect of rescission.

Free speech trumps privacy, but only just, in Mosley case

The IPKat has come across a privacy case in which Max Mosley attempted to enjoin the News of the World from showing video footage of his allegedly Nazi-themed orgy with five prostitutes. The footage was posted on the News of the World’s website at the end of March. It was then voluntarily taken down on 31 March, by which time other websites had copied and posted the footage. On 3 April the News of the World gave notice that it intended to repost the footage. Mosley applied to the court for an injunction to stop this.

According to Eady J, Mosley’s Art.8 right to privacy was in conflict with the News of the World’s Art.10 right to freedom of expression. In balancing the two, the court has to take the following into account:

i) No Convention right has, as such, precedence over another;

ii) Where conflict arises between the values safeguarded under Articles 8 and 10, an "intense focus" is necessary upon the comparative importance of the specific rights being claimed in the individual case;

iii) The Court must take into account the justification for interfering with or restricting each right;

iv) So too, the proportionality test must be applied to each

The information disclosed intrustive and demeaning to Mosley. However, the court had to consider two factors which could limit his right to privacy:

1. There was no public interest justification for revealing the edited video footage. The public was already aware of Mr Mosley’s proclivities, and the pictures embodied in the video footage were only of interest because they were “mildly salacious and provide an opportunity to have a snigger at the expense of the participants”.

Although there was a public interest in protecting the public from being misled by statements made by a claimant (in this case, the possibility that Mr Mosley was not telling the truth in denying that the S&M session has a Nazi theme), the News of the World could put the record straight without recourse to the video footage. In particular, the footage in question did not convincingly show that Mosley was lying.

2. However, there was no point in barring the News of the World from showing the material since the material was now widely available on the internet and anyone who wished to view the footage could easily do so. Either Mosley had lost his reasonable expectation of privacy because the information was so widely available, or the information has entered the public domain. In either case, the court had to avoid adopting the role of King Canute and making “vain gestures”.

The judge summarised:

I have, with some reluctance, come to the conclusion that although this material is intrusive and demeaning, and despite the fact that there is no legitimate public interest in its further publication, the granting of an order against this Respondent at the present juncture would merely be a futile gesture. Anyone who wishes to access the footage can easily do so, and there is no point in barring the News of the World from showing what is already available.

The IPKat is a tad puzzled by Eady J’s approach. Although he states that no convention right takes precedence over another, he seems to proceed on the assumption that Mosley has a prima facie right to privacy which would need to be rebutted by free speech concerns. In other words, free speech seems to be being treated almost as a defence, rather than as a right of equal importance to privacy.


The IPKat has been thoroughly enjoying reading his copy of Swindled: From Poison Sweets to Counterfeit Coffee - The Dark History of the Food Cheats, by academic-turned-food-writer Bee Wilson. If the publisher (John Murray) has a web-page with data concerning this book, the IPKat failed to find it despite the best offices of Google. However, you can buy it on the usual book-sale websites. Listeners to BBC Radio 4 will recognise this book as having been serialised some months ago.

The author sets out to describe and explain the reasons why foods are adulterated and products are counterfeited, raising some interesting philosophical questions as to when an recipe is an adulteration rather than an innovation. She also sets out, on layman-accessible style, the attempts made to legislate against food abuses and why those attempts have been so frequently unsuccessful.

Bee Wilson's thesis is that there is no better weapon against consumers being swindled by adulterated and fake foods than for them to be armed with knowledge as to what real foods taste like and as to what the effects of their various ingredients are. To this end, she advocates wider use of geographical indications and appellations that, if properly policed, give the consumer a wide degree of assurance as to the likely quality of what they eat. She likens the current regime of geographical indications to the old power exercised by the guilds in Europe in policing and maintaining the standards of their members -- an analogy that the IPKat remembers his learned and sometimes controversial friend Hugh Hansen making some years ago at the Fordham IP conference.

Trade marks and appellations listed in the Index include Basmati, Bordeaux, Bournville, Bovril, Bred-Spred, Champagne, Coca-Cola, Crosse & Blackwell, Heinz, Miracle Whip, Nestle, Pepsi, Snapple, Tilda and Unilever.

Bibliographic data: xiv + 370 pp. Hardback. £16.99. ISBN 978-7195-6916-6. Rupture factor: low.

Tuesday, 29 April 2008

UKIPO considers the Symbian effect

The UKIPO have provided further evidence as to why they feel the need to appeal against the recent Symbian judgment (IPKat commentary, including many informed contributions from readers, here), in the form of reasons for refusing an application in decision O/120/08. The application in question, published as GB2414831, related to a computerised system for recording driving test results, in which a driving examiner could record results on a portable computer by means of a menu-driven format. The Patent Office examiner had objected on the grounds that the contribution was solely in the form of either a computer program, a method for doing business or the presentation of information.

The hearing officer essentially agreed with the examiner, and unsurprisingly decided to refuse the application. However, in response to persistent arguments from the applicant, he expressed a view that seems to suggest (at least to this IPKat) why Patten J got the Aerotel test wrong:

"For example, in Oneida Indian Nation [2007] EWHC 954 (Pat), Deputy Judge (as he then was) Christopher Floyd was clear (paragraphs 10-11) that the identification of a technical advance did not bring back into contention inventions which had been excluded at the third step, and the fourth step was intended merely to make sure that inventions which had passed the third step were technical in nature: an invention would not pass the third step on the strength of technical advances which fell within one of the excluded categories. This view appears to be supported by the subsequent judgments in Astron Clinica [2008] EWHC 85 (Pat) (paragraph 45) and Autonomy Corporation [2008] EWHC 146 (Pat) (paragraph 45).

However, in the recent Symbian judgment, Patten J (see paragraphs 42 and 58) held that the question of whether a claim fell within excluded matter could not be answered in isolation from the issue of whether it embodied a relevant technical contribution, and that the third and fourth steps were as a matter of law alternatives. He thought it clear from the authorities that the question whether the invention made a relevant technical contribution had to be asked because it was the determinant of whether EPC Art 52(3) (equivalent to section 1(2)) had any application, and that whether it was asked as part of the second, third or fourth Aerotel step mattered much less than whether it was asked at all.

I have to say that I find these judgments difficult to reconcile, but I do not think that I need to attempt this in the present case. I have found above that the contribution programs a device to carry out a business method without causing the computer to act in any new technical way, or solve any technical problem in the operation of the computer. Irrespective of whether, having found the invention to have failed the third Aerotel step, I need as a matter of law to go on to the fourth step, I do not think that the contribution is technical in nature." (paragraphs 20-22)
The IPKat, as he has pointed out before, thinks that the fourth step, involving that awkward word 'technical', will have to be properly dealt with (or disposed of entirely) if anyone is to stand a chance of getting a firmer idea of where the boundary of the exclusions under section 1(2) is to properly lie. Unfortunately, it seems that the Court of Appeal will be unable to help much insofar they are tied to their previous judgments. We will probably just have to deal with the uncertainty for a little while yet, unless the House of Lords (or perhaps the EPO Enlarged Board?) gets involved with this tricky issue. Alternatively, in the words of the renowned philosopher Vroomfondel, perhaps what we really want, nay demand, are rigidly defined areas of doubt and uncertainty?

Monday, 28 April 2008

Mc's Back; the day is ended

Not so McSweet

King5 reports that McDonalds is opposing a US application to register McSweet as a trade mark for pickled garnishes such as onions. The application is in the name of one
Jim McCaslin, who bought the business from a man named Leo McIntyre. McCaslin has said that McDonalds has indicated that it will allow him to use the name, as long as he drops the trade mark registration.

The IPKat can see why McDonald's might want to stop people taking advantage of its brand, but he's not convinced that going after a man called Mac, who bought his business from a man called Mac is the way to go, particularly in the light of the burger chain's reputation for seeking to "monopolise" the Mac prefix.

World IP Day

It was World Intellectual Property Day over the weekend, but since it was on a Saturday, the IPKat missed it. The IPKat reckons that if the annual IP fest is to be taken seriously, there should be some way to move it to the working week if it falls at the weekend.

The IPKat (right) missed the party

The Sabatiers cross swords over knife marks

The exotic named case of Rousselon Freres et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch), which you can read here on BAILII, was a decision of Mr Justice Warren in the Chancery Division of the High Court for England and Wales.

Rousselon applied to invalidate two UK trade marks belonging to Horwood, claiming that there was a likelihood of confusion between Horwood's later marks (right) and three of its own earlier UK trade marks (two of which are shown below, the third being the word mark SABATIER). The bones of contention were mainly goods in Class 8, which included knives, and the word 'Sabatier' -- apparently a surname. The application also covered domestic utensils in Class 21.

In opposition proceedings before the Registry, the hearing officer said, at para.68:

"The words JUDGE and STELLAR do not "hang together" with SABATIER to make a meaningful whole, and even less so when presented in the logo form in which they have been registered. To my mind the positioning and difference in the style of font used and the "star" curve around the "S" suggests that SABATIER is a separate element. As far as I am aware, the words JUDGE and STELLAR are not descriptive of the goods, and by their relative positioning and size are the dominant, distinctive element. The corresponding graphical representations (judge's head and star) serve to emphasize the words but also contribute to the overall visual impact. However, these elements do not overwhelm SABATIER. The question is as put by Geoffrey Hobbs QC in his decision sitting as the Appointed Person in Raleigh International Trade Mark, [2001] RPC 202 is whether the later mark "captures the distinctiveness of the opponents' mark".
Rousselon appealed, arguing (among other things) that the hearing officer had erred in principle in holding that there was no likelihood of confusion, having essentially accepted that the word 'Sabatier' retained an independent distinctive role in Horwood's trade marks.

Warren J allowed the appeal. In his view

* "the actual test ... remains whether, because of similarity of marks, there is a likelihood of confusion. ... It does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment whether the earlier mark does have such a role is ... something which has to be decided before answering the question whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question "Is there a likelihood of confusion" with the answer "Yes, if there is a likelihood of confusion" when the answer should be "Yes, if the earlier mark retains an independent distinctive role".

* in this case, the word 'Sabatier' retained an independent distinctive role in Horwood's trade marks. Although the hearing officer had not stated that as a conclusion, it was, in the circumstances, a conclusion which he must have considered to be correct. Accordingly, it was not possible to maintain that there was no likelihood of confusion between Rousselon's 'Sabatier' mark and Horwood's marks;

* this being so, the hearing officer had erred in principle. His error was a significant one which vitiated the basis on which he had formed the view which he had. The court would substitute its own decision to the effect that the applications made under s 47(2) of the Act succeeded so far as the registration in respect of class 8 was concerned.

The IPKat, who remained confused by the marks right through the judgment and hopes he's got them the right way round in this note, laments the over-intellectualisation of the test of likelihood of confusion of composite marks in the wake of the ECJ's decision in Case C-120/04 Medion v Thomson Multimedia (noted by the IPKat here). This judgment ran to over 100 paragraphs and requires a good deal of effort to follow. No wonder hearing officers run into trouble. Merpel says, but how will consumers know whether they are likely to be confused or not if they don't have a lawyer to tell them?

Friday, 25 April 2008

My GP, or is that MyGP?

I received the following email from someone calling themselves "Kappa". The subject matter caused my whiskers to twitch, and I thought I would pass it on to my readers:

"Dear Tufty

I believe that you have frequently been known to get your teeth and claws into applicants and Examiners at the UKIPO when your sharp eyes observe some pretentious IP claim that deserves to be torn to shreds [Tufty comment: see here for an example]... With your perception you might have thought that Section 3 of the Trade Marks Act 1994 was going fine when Application 2444542 for the VILLAGE VET for veterinary services was properly refused earlier this year, and perhaps safeguarding the general interests of animal doctors around the country might be closer to your heart, but you should still be shocked, I feel, to learn that application 2447125 for MyGP for, yes, medical services (probably merely for humans, but who can be sure), has been accepted and published for opposition. Now, not being young in years myself, I regret to say that I do have to make regular visits to myGP (did you notice the missing space). That is to say the doctor in the local village where I am registered. MyGP is a friendly chap and offers a range of medical services, including a dentist on the premises, as may frequently be found in GP practices across the country. When I forget the number of myGP, I expect I may have to call 118 118 and ask them for myGP's telephone number. I won't be wanting ADP Dental Company in Reigate, I can assure you. And I can't imagine anyone else outside Reigate would either.

"GP" is an absolutely commonplace abbreviation for "General Practitioner" or shorthand for everyone's local medical doctor, or provider of medical services. I know that grammatic perfectionists will point out that MyGP lacks the space which should appear in the written word, but does anyone say "My-space-GP"? and anyway, wouldn't that risk another infringement of Myspace these days? Personally, I cannot understand how the Hearing Officer was ever persuaded to allow this application - did he get a free MRI scan - I think his head needs scanning for sure - it seems to me this application offends every line of Sections 3(1)(a)(b)(c) and (d) and there is no indication of any argument of distinctiveness having been acquired though use - surely this is one example, where it just never ever could acquire distinctiveness or recognition as a trade mark? No ordinary person is ever going to take a reference to "MyGP" as being anything else than a reference to the person's local doctor. Please would you get your claws out and scratch an appropriate part of the UKIPO anatomy!

In case you think your village vet is safe, you might also check out UK 2467643 - we know that nature may be red in tooth and claw, but having the same descriptive mark in red or black doesn't seem to justify registration to me..."
Perhaps an astute reader would be so kind as to suggest: i) how this mark could have survived getting through the examination procedure (and a hearing, according to the register) on absolute grounds, ii) why the mark should not now be opposed, iii) whether it has anything to do with this website, and iv) if anyone plans to do anything about it. Any suggestions or comments are very welcome.

Filament Fred hits town

If your dislike of light-bulb cliches is as powerful as the IPKat's, you will be more than disappointed that the UK Intellectual Property Office (UK-IPO) Annual Review 2007 stars a character called Filament Fred ("I have a long thin body and a bulb for a head"). The Review is however a striking blend of dramatic graphic effects, highly positive news and clearly portrayed facts and figures on the performance of the Office during a year of political and organisational turbulence.

Note for trade mark nerds and potential infringers: the trade mark search facility on the UK-IPO website contains no reference to any application having been made to register "Filament Fred" as a trade mark.

Forthcoming events -- and a special offer

Not everyone has noticed, so the IPKat is taking a moment to draw the attention of his readers to a change in the way his blog deals with forthcoming events. In the past, each event the Kats got wind of was announced by way of a posting, with a little introductory text and some links. This had the advantage that each event was given plenty of publicity when it was announced, but the drawback that, within a couple of days, more recent chronological postings hid these notices from view.

To remedy this, the IPKat has utilised the sidebar at the left hand side of the web page. Under the heading "Looking for fun? If not, you can always try one of these ...", immediately under the IPKat's self-portrait, you will see a list of IP events. The Kats suggest that anyone who gets his posts by email circular only may want to check this column every so often to see what's on.

One event that has recently been added is Intellectual Asset Management magazine's IP Business Congress, on 25 and 26 June 2008. This is quite a pricey event, held at the Grand Hotel Krasnapolsky in Amsterdam -- but readers of the IPKat and IP Finance weblogs are entitled to a 15% discount. For further details click to IP Finance here. The IPKat hopes to provide more discounts and special offers for his readers, so watch this space -- or at least check the sidebar regularly!

Latest JIPLP

Way ahead of schedule, the May 2008 issue of the Journal of Intellectual Property Law (JIPLP), published monthly by Oxford University Press, has emerged to greet the springtime daylight. In the Editorial, "Good stuff, shame about the bad press", IPKat team blogger Jeremy writes about the very negative write-ups that IP gets these days. After a mention of the Intellectual Property Institute's project to examine IP as a "tainted brand" he says:

"At the time of writing, the IPI project is still very much in the category of ‘work in progress’. The preliminary findings are, as one might expect, that the use of terminology such as ‘piracy’, ‘troll’, ‘theft’, ‘freedom’, and ‘access’ both colour and are coloured by the attitudes taken or learned by those who use them. However, the extent and nature of their use is now being made clear. Few readers of this journal would assume, in the absence of clear evidence, that disciplines such as Gender Studies invoke IP issues the way they do. For example patent rights, by limiting the ability of the mother in the developing country to gain access to necessary seed, is a ‘male’ impingement on her role in feeding her children. Or try this: the technology-rich developed country performs the active masculine role, whereas the technology-deficient developing country fulfils the female role of the passive recipient.

The preliminary study also shows how the pro- and anti-IP lobbies employ the same vocabularies against one other, in different spheres. Thus, the copyright and entertainment industries accuse those who take and use their products of piracy—precisely the same term which is used in the context of bio-piracy, the alleged practice of stealing naturally occurring products and rebadging them as patentable ones.

This study makes one thing quite clear: attitudes toward IP rights focus principally upon their negative qualities and do not connect them with that which is positive. Thus, new medicines save lives, while patents kill; music is cool, while copyright is a clamp; brands are brilliant, while trade marks are tools of trade manipulation. It is too much to hope that the public at large will wake up one morning, enlightened at the beneficial, positive, and above all necessary role played by IP rights, but we can at least aspire to teach that, between that which they praise and that which they condemn, there is a powerful causative connection".
This is the hors-d'ouevres. The main courses in this issue include

* A fifteen-page review by OHIM's Arnaud Folliard-Monguiral and the EPO's David Rogers of all the significant case law from 2007 on Community trade marks, taking in Court of Justice and Court of First Instance decisions;

* "Post-termination use of licensed intellectual property by licensees" by Allen & Overy's Colin Pearson and Nigel Parker, a reminder of how important it can be, before a licence is granted, to consider the relations of IP owner and licensee once the licence expires or is terminated;

* "Influence of WTO decisions on international intellectual property" by Italian academic and international scholar Fabrizio Ravida, a searching piece that seeks to integrate WTO rulings into the general scheme of national application of IP treaty norms, one example being the classic three-step test for acceptable limitations and exceptions to copyright;

* "The W***D C*P of 2*1*: FIFA's intellectual property rights in South Africa", a fairly acerbic review by Unisa academic and Afro-IP blogger Roshana Kelbrick of the steps taken by FIFA to protect the next World Cup tournament from what football's governing body -- but not everyone else -- regards as unfair exploitation.

Read this editorial in full, and all the editorials of the past twelve months, here
Full contents of this issue here
For free sample, click here; to subscribe, click here; to write, click here
50 most-read articles since 2005 here

Loads of free samples of JIPLP will be available at the Oxford University Press booth at the forthcoming International Trademark Association Meeting in Berlin next month. If you're there, do come up and say "hello" -- particularly if you'd like to write for the journal and/or have any brilliant ideas for things you'd like other people to write.

Thursday, 24 April 2008

Community patent: machines to the rescue!

First with the news, Managing Intellectual Property magazine reported yesterday that the EU Competitiveness Council is meeting on 29 and 30 May to discuss progress on technical issues relating to the fabled Community patent. Previous attempts to clinch agreement on the Community patent, which would provide a single unitary right covering the territory of all 27 EU member states, have foundered due to concerns over language, cost and court proceedings. With 23 official languages, a patent filed in any of those languages currently needs to be translated at great expense if country-by-country pan-European protection is sought, which is why most applicants cherry-pick the key jurisdictions and omit many of the minor ones. The latest plans however seek to employ machine translations, which are already available for German, Spanish and French at the European Patent Office.

These plans were previously discussed at meetings of an EU Council working party under the Slovenian Presidency, which expires at the end of June. The translation tools would include databases of several million standardised technical terms, which would be translated into all EU languages. The machines are capable of delivering translations in about 45 seconds. Under the draft plans, machine translations would be provided for all 23 languages, ensuring equal treatment. However, setting up the translations would take several years and cost at least €2 million. Existing technology would also need an upgrade. Machine translations would be for information purposes and would have no legal status. For the estimated 1% of patents that are litigated in infringement proceedings or the like, human translations would be needed. A working document with full details of the proposal is due to be published in a couple of weeks, in time for the Competitiveness Council meeting at the end of the month.

The IPKat looks forward to the new game of Community Patent Whispers. You take a claim, feed it into the translation machine for the first official language (taking them in alphabetical order); when you get the output, you feed it in for translation into the second, and vice versa. When the claim has been through each official language once, you put it before an EPO Board of Appeal and ask them to interpret it. Merpel says, my favourite term in European patent law is the phrase "as such". If you translate it from English to Dutch, Dutch to French, French to German and then German to English you get "ash look for".

If you've ever wondered what song lyrics mean ...

... you probably don't take words at their face value any more. That's what led to the golden oldies of 1960s icons Status Quo ending up in court. In Lancaster and another v Handle Artists Management Limited and others, a decision of the Court of Appeal for England and Wales on 22 April (picked up by LexisNexis Butterworths' subscription-only service), Lords Justices Thomas, Jacob and Wall had to consider whether the trial judge understood the lyrics of a settlement agreement following a royalty dispute -- or had he read too much into them?

The claimants and two of the defendants were members of the pop group Status Quo who had an interest in royalties payable under various recording agreements concluded between July 1966 and December 1982. These agreements included what were termed the 'Pye agreements', presumably because they related to music recorded under the late, lamented Pye label.

Following the usual outbreak of discontent and litigation, a deed of release was signed by the parties. This deed of release purported to record what the LexisNexis note describes as "a clean break in relation to the royalties in issue, against the confused factual background at the time the deed was entered into" [the IPKat notes: this may or may not be a polite way of saying "since it was all a long time ago and we may have been experiencing a higher level of consciousness than that displayed by our agents and lawyers, let's just take a flying guess as to what the royalty entitlement should have been and leave it at that"]. Although the deed was expressed in the widest possible terms and was in respect of 'any and all sums of money', the judge in subsequent proceedings concluded that the deed of release signed by Lancaster did not include royalties paid under the Pye agreements.

The Court of Appeal allowed the defendants' appeal. On the true construction of the deed, the judge had erred in construing the language of the document narrowly. The language of the deed of release had been formulated in the language of the clean break and there was nothing in the deed, or the factual matrix existing at the time the deed had been entered into, to indicate that monies payable under the Pye agreements should not be included within the term "any and all sums of money".

The IPKat is sad that the full text of this decision has not yet appeared on BAILII, since he's curious to see which bit of "any and all sums of money" excluded the Pye agreements. Merpel wants to know if his readers can tell him who are older: the members of the band or the Lords Justices of Appeal who presided over this case.

The Pye Museum here
The meaning of song lyrics here and here
What words really mean here
What cats really mean here

BPI threatens action against ISPs

As reported in today's Guardian, the British Phonographic Institute has been making threatening noises against British internet service providers over the past couple of weeks. The BPI have given them until around now to "take action" to prevent their networks being used to facilitate copyright infringement. So far, only Carphone Warehouse has responded to the threat.

The Guardian makes a guess at what action could be coming, and even speculates at the potential for future law-making, but completely fails to see that copyright holders already have a powerful tool against ISPs that they could use right now, in the form of section 97A of the CDPA. This allows the High Court to grant an injunction against an ISP "where that service provider has actual knowledge of another person using their service to infringe copyright". To the IPKat's eyes, this seems to be pretty broad, and gives the BPI potentially pretty strong grounds to go after ISPs, provided they have good evidence that their service is being used for infringement (which everybody knows is widespread). They would presumably only need to show that infringement is taking place, for example by users making available copyright works contrary to section 20(2)(b).

The IPKat now wonders: what will happen next? Could ISPs have their services shut down, or (if they choose instead to cooperate) will this be the beginning of an escalating battle between filters and infringers?

As you reap, so shall ye (electronically) sow

Commission Regulation 355/2008 of 21 April 2008 amending Regulation 1239/95 as regards the use of electronic means of communication in proceedings before the Community Plant Variety Office (CPVO) has now been published on the European Commission's Official Journal website.

Right: the big issue now for the CPVO is what to do with their old communications equipment

According to the first three Recitals,

"(1) The rules provided for in Commission Regulation (EC) No 1239/95 of 31 May 1995 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards proceedings before the Community Plant Variety Office should be simplified, in particular by allowing the use of electronic means of communication.

(2) It is appropriate to simplify, on the one hand, the filing of applications, objections or appeals and, on the other, the service of documents by the Community Plant Variety Office (the Office) by permitting the use of electronic means. Moreover, the Office should be given the possibility to issue certificates for Community plant variety rights in electronic form. Publication of information regarding Community plant variety rights should also be possible by electronic means. Finally, electronic storage of files relating to proceedings should be allowed to improve efficiency.

Above, left: ... and the answer is here!

(3) The President of the Office should be empowered to determine all necessary details with respect to the use of electronic means of communication or storage".

Says the IPKat, from this it looks as though the CPVO has been issuing hand-written certificates up till now, using Post-Its to stick information concerning rights on the noticeboard somewhere to the south of the office kettle and tea cupboard ... Merpel wonders, would anyone have challenged the vires of the CPVO if it did this without a Regulation?

Electronic plant information here
Do plants conduct electricity? Your chance to answer here

Wednesday, 23 April 2008

Spiky plastic balls kicked into touch

The Court of Appeal has today issued its judgment in the matter of Green Lane Products Ltd v PMS International Group Plc & Ors [2008] EWCA Civ 358. The case related to validity of a Community registered design, and in particular whether prior art not in the same design field should be taken into account. The High Court had previously held that it should (see IPKat commentary here).

Green Lane made and sold spiky balls for use as laundry aids, and had applied for and obtained registered designs for them (one of which is shown, top right). The designs were all listed in Locarno class 07.05 ("Flatirons and washing, cleaning and drying equipment"). PMS had previously been selling very similar spiky balls (bottom right), but for use instead as massage aids.

The question to be answered was whether Green Lane were allowed to claim that PMS infringed their registered design if they sold their spiky balls specifically as laundry aids. This question came down to the correct meaning in law of "the circles specialised in the sector concerned operating within the Community" in Article 7 of the Community Designs Regulation 6/2002.

Entirely unsurprisingly, although after much theoretical analysis, Jacob LJ decided that, since a registered Community design right gave its owner a monopoly over any kind of goods according to the design, it would be nonsensical to consider validity only in relation to the field in which the right was to be registered. It made complete sense, therefore, that the prior art available for attacking novelty should also extend to all kinds of goods, subject only to the limited exception of prior art obscure even in the sector from which it comes.

The only odd aspect of the judgment, as far as the IPKat can see, was that by the time the decision came to be made, the parties had already come to an agreement, and had requested that no order should be made. Not to be put out by this, Jacob LJ decided that, since the matter was clearly of practical significance to others, it would be in the public interest to issue the judgment anyway, and stated that he would have dismissed the appeal and refused a reference to the ECJ on the matter, but in view of the parties' agreement it would be unnecessary to draw up an order to that effect.

More spiky balls here and here. More bald men fighting over a comb here.

Mills not so dark and satanic

It must be the season for good deeds and fine sentiments. The IPKat has discovered that Andrew Mills (Head of IP & Litigation in Experian's Nottingham office) is doing a sponsored walk this coming Sunday, 27 April 2008. Don't feel sorry for him. This is a 10-mile walk in the beautiful Peak District which has as its objective -- apart from giving Andrew a fine tan and a few lungsful of fresh aire -- the chance to raise funds for Marie Curie Cancer Care.

To find out more about the event and the good work of Marie Curie Cancer Care visit its webpage for the event here. If you'd like to see what the Peak District looks like, here is a link to Google Maps centred on the lovely village of Edale, the starting point for the walk.

Andrew has secured matching funding from Experian Limited, which has pledged to make an equivalent donation to whatever he can raise. So if either (i) you support Marie Curie Cancer Care or (ii) would like to do your bit to impoverish Experian, please donate here. Apparently even small donations are welcome ...

Beautiful Peak District here
Dark satanic mills here
Cures for sore feet here and ((Merpel recommends) here

Finding the Balance: the ALCS speaks out

The IPKat has just read a press release issued by the Authors Licensing and Collecting Society today, "Finding the Balance: the Management of Digital Rights". This document declares that the ALCS is seeking a resolution of the conflict between writers and users of copyright works. It reads, in relevant part:

" ... Private copying proposals

The exceptions to copyright law proposed by the Review, whilst eminently practical in setting out to achieve a system that is clear and fair for consumers, must apply that same fairness of principle to the creator. Without this, the incentives for creators to create, and writers to write, will diminish.

Copyright can appear complex and opaque. Users need support to understand that the essential purpose of copyright is to ensure a sufficient supply of creative activity from which they benefit in a myriad of ways. Its underlying purpose is to safeguard the economic and moral rights of creators. [Says the IPKat: this is debatable. The underlying purpose of copyright today is probably what it was in 1709 -- to provide a compromise between the competing and often irreconcilable interests of publishers, writers, consumers and investors. This is why the technologies change but the protagonists' positions remain broadly the same] Whilst technology has advanced considerably the underlying principles of copyright remain the same as set out in the Universal Declaration of Human Rights:

"everyone has the right to the protection of their moral and material interests resulting from any scientific, literary or artistic production of which he, or she, is the author". [Hmm, ponders the Kat. Doesn't the same Declaration say all sorts of nice things about the other side too?]

All forms of creativity, including writing, contribute to the success of the UK's economy, [says the IPKat: it seems that unauthorised uses, including piracy and counterfeiting, also contribute to the success of the economy, but not in ways we like to think about ...] whilst copyright protection given to creators and other right holders also protects the 7.3% of Gross Value Added (GVA)[2] to the economy.

Whilst it is clear that the increased availability of written works as a result of digitalisation offers golden opportunities to writers, the increasing use of digital technologies has generated uncertainty over the future of their economic and moral rights. [says the IPKat: but that has been the case for most of the past two millennia, surely? Writers have more often had little or no certainty, being rewarded at the whim of a patron or left to pursue their craft in penury. There is a school of criticism that believes that authors write better if they suffer for their art -- and that snails benefit from being starved before they're cooked.]

Along with all its realised and potential benefits, the digital age has brought new freedoms and opportunities that enable users to copy, download and distribute illegal copies of films, plays, television programmes, electronic books, poems and journal articles without seeking permission from right-holders. The process of copying and distributing works is now so easy that it has produced an imbalance between the freedom of the user, the profits of commercial intermediaries and the losses incurred by writers. [Once again, this assumes that the previous position was "the balance" in the first place.]

For example, the Gowers' Review recommends that `private copying' be decriminalised when users are copying legally-acquired content onto an electronic device for personal, private use such as transferring music bought on the internet to their iPod or MP3 player. This exception will not allow any form of onward distribution for commercial gain or otherwise via an electronic distribution network such as peer to peer or user-generated websites. That is fair and practical for the consumer; however, it fails to address the issue of the creator being given fair reward for the re-use of that work. [This has been a growth area in recent years, with the establish of lending rights -- but "re-use" is a controversial area. Would it cover reading over someone's shoulder on the train?] It also raises the issue of policing such an exception. Would it be enforceable? [Probably not]

`Three strikes'

The Government's current initiative of `three strikes and you're out'
concerning persistent downloaders of copyright-protected material and the ISPs responsibility of following a warning procedure and then terminating their account, is a noble message. However, public opinion expressed on numerous websites following the sign-up of major ISPs to this principle showed strongly that this was a step too far for the consumer who felt their privacy was being invaded and that the age of Big Brother had arrived.

One option to balance the interests of the user and creator in this instance would be to consider a centralised remuneration scheme which is commonplace in most European states. No comparable system exists or is being proposed in the UK and as a result writers, along with all other creators, are in danger of not receiving the economic and moral recognition that is their right for the continued re-use of their work. [Does the European experience suggest that their systems do confer this level of economic and moral achievement? Not much of a level, is it, wonders the IPKat]

Internet piracy

For any solutions to advance and achieve that balance, we must take account of the reality of the world in which we live. Consumers routinely acquire content illegally and take value from copyright works at the expense of the rights-holder. In 2006 alone, there was a 46% increase in illegal downloads compared to 2005. Any legislative and punitive frameworks need to be sufficiently robust to take account of Becker's model of crime that it is "a basic assumption of human behaviour that individuals will break the law if the expected benefit is higher than the risk of detection and the scale of the potential punishment ... [But doesn't Gowers take the view that, if most people do it and the risks of detection and punishment are low, it may as well be legalised?]".

Bühler v Spomax: a lion in the path, or just a yapping terrier?

The Honourable Mr Justice Mann recently delivered his judgment in the case of Bühler AG v FP Spomax SA [2008] EWHC 823 (Ch). The case involved a fight over whether Bühler could rightfully lay claim to a method of milling wheat flour.

Bühler were the proprietors of EP(UK) patent 0336939 claiming a method of grinding wheat using a variant on a known "high grinding" system (using counter-rotating rollers: see picture right), where the wheat is taken through double roller grinding stages, screening to remove bran only after each double grinding stage. What was commonly done previously was to screen the partially-ground flour after each grinding stage. Bühler's advance was essentially in the removal of a screening stage, which they claimed had certain advantages in being able to obtain a good quality product suitable for obtaining starch, while avoiding the material being over-ground. Mann J put the situation thus:

"[T]his is said to be one of those cases in which a prejudice, thought to provide a 'lion in the path' (to use the metaphor of the cases – see Pozzoli Spa v BDMO SA [2007] FSR 372 [IPKat commentary here]) is said to be demonstrated to be wrong" (paragraph 15).

Mann J then followed the Windsurfer-esque Pozzoli approach. Much of the argument centred around what the skilled man (pictured left) would know, and in particular to what extent common general knowledge could be used to determine the extent of prejudice he would have against grinding twice without intermediate sieving. Bühler argued it was necessary to turn to historical material in order to see whether it dispelled the prejudice, and that it was also necessary to turn to the actual experience of starch flour millers and consider whether that affected the prejudice too. Mann J disagreed, saying:
"I do not consider that this is the correct approach to ascertaining prejudice. One does not look at the evidence which, by itself, is said to establish it, and then look for evidence dispelling it. The enquiry is an overall one – does the prejudice exist, weighing all the evidence together and not starting with one piece and then testing the rebutting quality of others. It is therefore necessary to consider the remainder of the evidence before coming to a conclusion as to whether the prejudice relied on by Bühler was part of the common general knowledge of the skilled person" (paragraph 36).

In finding that the prejudice did exist, but that it was not uniform and there was no technical reason for it being widespread, Mann J concluded against the claimant:
"The prejudice of the bread miller merely provides one element in the overall picture. There is no lion in the particular path down which the skilled man travels in this case (or at least not the particular lion alleged). There is at most an interesting small terrier which yaps a little to attract attention. It does not provide much distraction, let alone deterrence" (paragraph 45).

This was, effectively, enough to dispose of the matter, although Mann J went on to consider the various cited prior art documents (some dating back to the earlier part of the last century), and eventually found that the core concept of the patent was not inventive. The patent was consequently ordered to be revoked.

Another point, not in the end relevant to the outcome, was that Buhler had applied to the EPO for their patent to be limited, under the new procedure allowed after EPC2000 came into force last year. Their application under Article 105a, made on 17 December 2007, involved the deletion of several claims and limitations to the wording of claim 1. As Mann J put it:
"In a fax dated 31st January 2008 an examiner in the EPO confirmed a prior telephone conversation and confirmed in writing that the examination division dealing with the amendment application intended to 'limit' the patent in accordance with the amendments shown above, but 'for internal procedural reasons it is at present not possible to issue the decision on the limitation of the Patent before April 2008'. While that seems an extremely surprising state of affairs in a modern organisation, that is apparently the position. It is hard to conceive that the position will change pending the final issue, and in those circumstances I treated the patent as amended (all parties were prepared to argue the case on that basis) and did not hear any part of the English amendment application."

The IPKat is not as surprised as Mann J was about the time taken by the EPO to deal with the request. However, over 4 months to deal with a simple request for limitation does seem like quite a long time. Have any of the IPKat's readers had similar problems getting applications for limitation dealt with?

[NB: Contrary to appearances, this was in fact posted by the IPKat's amenuensis David, and not Jeremy as stated. Apologies for any confusion caused as a result!]

Tuesday, 22 April 2008

The continuing incredible adventures of Dr Randell Mills

Following on from their earlier unsuccessful attempts (see the IPKat’s earlier post here), US company Blacklight Power has now failed to persuade the UK Patent Office of the validity of the theory behind their patent applications (decision O/114/08).

right: Dr Mills hard at work in Blacklight Power labs on yet another of his incredible inventions.

Two GB applications (GB0521120.6 and GB0608130.1) were made in the name of Blacklight Power, the brainchild of Professor Branestawn-type scientist and inventor Dr Randell Mills and a commercial vehicle for applications of his theories. The first application related to a plasma reactor, the second to a laser. Both relied on the existence of a form of hydrogen known as ‘hydrino’ that directly contradicted existing physics. Dr Mills claims that hydrogen can be put into this new form by allowing electrons in the ground state to transition to a lower energy state (not allowed according to quantum mechanics, hence the term 'ground state'), thereby releasing energy.

In both applications the examiners objected that the new hydrogen species was unknown to science. The inventions were therefore contrary to generally accepted physical law and not capable of industrial application, contrary to section 1(1)(c). They also objected that, since the claimed inventions relied for their operation on a material that current science would deem impossible, the specifications did not comply with the requirement of section 14(3). These objections would normally be used when examiners reject applications for perpetual motion machines, which Dr Mills’ inventions seem (at least to the IPKat) to have a certain flavour of.

Both applications effectively relied on the hydrino theory being true, since each had independent claims referring to hydrino material: with the plasma reactor producing it and the laser using it in a laser cavity. The hearing officer therefore had to determine whether the theory could be ‘true’, and how far he would need to go to prove this to his satisfaction. The hearing officer came up with the following (emboldened in part by the IPKat):

“Such a question is difficult to address, to say the least, since the nature of the scientific method is such that scientific theories can never be shown to be 100% true. However, theories that are generally accepted as valid descriptions of nature it seems to me conform to certain criteria. The main criteria may be as follows:
  • a) the explanation provided by the theory is consistent with existing generally accepted theories. If it is not, it should provide a better explanation of physical phenomena than do current theories, and should be consistent with any accepted theories that it does not displace;
  • b) the theory should make testable predictions, and experimental evidence should show rival theories to be false and should match the predictions of the new theory;
  • c) the theory should be accepted as a valid explanation of physical phenomena by the community of scientists who work in the relevant discipline.
It may be that other criteria can be identified, for example that a successful theory should also be intellectually satisfying and economical in its explanation, but I think that for any theory to be accepted as “true” it must satisfy at least a), b) and c) above. Where I refer to the “truth” or “validity” of a scientific theory in this decision it is in that sense.

I then need to ask what level of confidence should be demanded in the truth of this theory in order for patents to be granted on effects which depend on it. If, as in the present case, an applicant proposes a new theory and claims an invention dependent on it, it would be unfair to the applicant if the patent was refused but the theory turned out in due course to be true. If on the other hand patents were allowed to be granted on inventions depending on any theory, however speculative, then in the words of Paez’s Application (BL O/176/83) “it would be completely wrong and against public interest to bestow upon misleading applications the rights and privileges of a granted patent”. I consequently take the view that it is appropriate to demand a real but moderate level of confidence in the truth of the theory. I will therefore make the assessment on the basis that it should be more probable than not that the theory is true if I am to allow the applications to proceed.”

The hearing officer then proceeded to show that Dr Mills’ theory failed on each of the three tests. The theory failed to make any testable predictions that showed any existing theories to be false, and was in no way accepted by the physics community. The claimed inventions were consequently not capable of industrial application and, since they also relied fundamentally on the existence of a material not generally accepted to exist in nature, it would not be possible for the skilled person to perform them, contrary to section 14(3). The applications were therefore refused.

The IPKat is impressed at the clarity, thoroughness and patient restraint of this decision. The hearing officer's test in particular is obviously the correct way to view all scientific theories (and not just those that form the basis for patent applications). Patentees would be well-advised to avoid relying on any doubtful scientific theories in their claimed inventions, and instead stick to patenting inventions that can at least be reproduced and tested by others.

More perpetual motion machines here.
More bad science here.
More incredible adventures here.

Monday, 21 April 2008

French patent attorneys: an endangered species?

The IPKat would like to hand over this post to Alex Thurgood, an English patent professional living and working in France. Alex has some very interesting things to say about what is currently going on in the IP profession over there. The following is written in Alex’s own words (only mildly edited by the IPKat):

Just in case you weren't aware, there is a bit of a war of words going on over here in France at the moment, in relation to the potential future merger/acquisition of the French Bar with the IP attorney profession. Things are heating up now that the French Bar Association has made its position clear, which is that they will allow those who are already registered IP attorneys to join, but not all those wannabe's (i.e. our hardworking engineering and scientifically qualified juniors), who are going to have to sit the same qualifying exams as any normal wannabe barrister, in addition to the exams patent attorneys have to pass.

Ooops, there goes the patent attorney profession !!!

What this means is that a freshly qualified engineering graduate or PhD student will, if he is fortunate enough to find someone willing to take him on and train him, have to jump through rings, hoops, nay fire, for at least 6 years before being able to have a hope of calling him/herself an Avocat spécialisé en propriété intellectuelle (even the name may change apparently). The candidate will have to sit :

  • CEIPI 1 (IP Law) - similar in substance to the PG courses offered by Bournemouth or Queen Mary's from what I can judge
  • CEIPI 2 (French law of obligations, tort, ethics, constitutional law, community law, etc,etc)
  • pre-CAPA - I have no idea as yet what exactly this will consist of, although it is supposed to be the equivalent of CEIPI 1 and 2
  • the EQE (yes, obligatory, otherwise the candidate will be doomed to failure and wandering in the wilderness)
  • CAPA : bar exam, where IP will be but one option among the 20 or so subjects that are tested.
Bearing in mind that candidate are only allowed to sit the CAPA twice, ever.

In essence, the new system, if it were to go through, would require engineering or scientific based candidates to have the same knowledge as someone who has spent 6 years in law school, with a pass rate at the final exam of about 1 in 20.

Needless to say, which right minded trainee would want to go through all that, when they could just go and study law for 6 years instead ?

Where will we get our engineers from ?

The Bureau of the CNCPI, in its thirst for acceptance of the proposal, has been brandishing the spectre of deregulation, which will come anyway at some stage, and has now initiated a huge "win 'em over" campaign, blogs, stock and barrel. What the bureau fails to have seen is that, despite the mandate they were given at the AGM by the "majority" (I use that term lightly) of CPIs, they have not followed that mandate and appear on the face of it to have accepted what is totally unacceptable for many today, and especially for those who officially have no voice within the CNCPI: the trainees !!!

If you are an adept reader of French, then you may wish to peruse the CNCPI blog, which it has to be said, is illustrative of the lack of freedom given to its members, other than commenting on the crass contributions made by the moderator of the blog, an unknown, and non practising Doctor at Law, rather more versed apparently in constitutional law than anything to do with IP.

Another, more thought provoking blog is that of my erstwhile fellow Pierre Breesé.

It goes without saying that should we lose our identity in this big mess, then that'll mean more work for you guys [IPKat comment: i.e. patent attorneys outside France, and particularly those working in English], since French industry has already given this project the big thumbs down, and it will inevitably turn to IP service providers who are technically capable of understanding what it is they are trying to protect. Maybe you should start recruiting now ;-)

French industry has already said that it is largely against the merger, because inevitably the temptation will almost certainly be to align our prices with those of the barrister profession, and as a consequence many industry representatives, including the MEDEF (French equivalent to the CBI), have said that they will direct their IP work demands for day to day prosecution and filing to non-French firms, i.e. English and German firms essentially.

[In response to a question about whether this might mean the gradual death by retirement of the French IP profession:] As for growing old, we already have a problem, even without the future proposed integration. According to the statistics, roughly about one third of the French profession is due to retire over the next 10 years, and at present numbers of newly qualified entrants is well below the amount required to maintain the status quo. The whole of the French private practice IP industry only amounts to some 700 or so licensed professionals. If the merger goes through, then even fewer engineers will take the path to full qualification, and fewer still will pass, which as you surmise, will probably lead to the extinction of the patent attorney species as we know it in France. Certainly, in terms of client satisfaction, French industry is none too keen on the prospect of having to work with pure "lawyers" with no scientific background for the protection of its industrial innovation.

Although I was initially personally in favour of the merger, at the start the proposal involved maintaining our recognised specialised status and only having one extra adaptative exam for the new entrants (the grandfather clause would have existed for those already registered as IP attorneys), which in the end wouldn't have been too burdensome. The French Bar Association, however, has scuppered that intention because it felt that to allow anything else would be detrimental to its (rather poor IMO) public image and would be lowering its standards to accept the plebs (sorry for my somewhat ironical tone here) they call IP Attorneys (trademark and patent attorneys alike). They are also dead scared, for some obscure reason, that we are all suddenly going to compete with them for their client base!!! I must admit that I, and indeed the majority of my peers, have absolutely no intention of doing anything else in terms of legal services other than IP, and additionally, we are, as I said, only 700 or so, compared to 40,000 barristers nationwide. But this was not sufficient for the CNB, hence the draconian terms :-) There is even a plan by the CNB to make it illegal for European Patent Attorneys from practising independently, other than for filing and prosecution - no counselling though, in order to prevent groups of EPAs from forming independent companies and competing outside of the one big legal happy family we are all supposed to become.

There is a CNCPI AGM planned for May 13th, so we shall have to wait and see what kind of resolution is going to be put forward to us, but if we do decide to go ahead with the "collective suicide" then it is pretty clear that the face of IP representation in France as we know it, will change drastically. Oh, and as the proposal currently stands, if it goes through, we all have to become Avocat, it’s an all or nothing decision, there will be no possibility of remaining and IP Attorney on an individual basis, if you refuse, you will simply lose your current title and not be allowed to operate in France. And here was I thinking that lemmings lived in Scandinavia ?

I must admit as an Englishman in France, I would find this all quite amusing if I didn't have some heart for the youngsters that I'm training and are not yet qualified (aside from the extra financial burden that all of this will entail for the partners).

Alex summarises by suggesting that, if the proposal goes through, it will be a wonderful opportunity for other European patent firms to expand their horizons to the French client market. The IPKat tends to agree, as he can only see the French patent attorney profession gradually withering away through a combination of natural wastage, high prices, and a lack of new recruits if the merger goes ahead as planned.

Friday, 18 April 2008

Nine man years for a five-day trial

You just can't keep a good litigant out of court, it seems, and RIM is just one of those enthusiasts. Research in Motion UK Ltd v Visto Corporation [2008] EWHC 335 (Pat) is a decision of Mr Justice Floyd, in the Patents Court of England and Wales. Yesterday he had to give a ruling on the costs incurred by one of RIM's earlier excursions.

Right: "There's gold in tham thar bills ..."

On 28 February 2008 Floyd J held that, overall, RIM was victorious as it had succeeded in revoking Visto's patent for lack of inventive step and because it related to a computer program as such (see earlier IPKat post here). If the patent had been valid, though, Visto "won" because RIM would have been held to have infringed it. And Visto claimed two more victories in respect of patents that RIM conceded to be invalid. Subsequently in relation to costs, the issue of proportionality arose. RIM had spent almost £5.2 million while Visto spent a mere £1 million.
There was no dispute that RIM's costs should be reduced by a percentage to reflect Visto's ultimately unsuccessful success. But how much should Visto get?

Floyd J ruled as follows:

* It was uncontroversial that the it was the court's job to prevent the recovery of unnecessary and unreasonable costs. On that basis a court could deploy the notion of proportionality in deciding whether a party should recover costs of a particular issue;
* a trial judge who saw a figure for costs before the process of assessment was embarked on by a costs judge was often in a good position to express a view as to whether the bill represented a disproportionate expenditure -- and he was certainly entitled to express that view for the benefit of the costs judge;

* in this case the sums expended by RIM were disproportionate to what was at stake and there was no justification for costs rising above what would commonly be expected for an action typical of the one before the court. This being so, RIM's conduct in relation to the issue of infringement deserved to be marked by an award of costs in Visto's favour;

* in real terms Visto should pay 66% of RIM's total assessed costs on all three patents, and RIM should pay Visto 51% of its total assessed costs expended on all three patents.
The IPKat was fascinated by the gory details: the judge observed that Allen & Overy, for RIM, notched up nine man-years' worth of work for the five-day trial, with one senior associate spending 2,291 billable hours in pursuit of a successful outcome (Taylor Wessing represented the other side). A&O's side of the story is worth contemplating though: for the firm Nicola Dagg pointed out that her instructions were to leave no reasonable stone unturned; the legal costs incurred were also a tiny proportion of the value of RIM's business, which Visto's patent put under threat. Merpel says, it's cheap compared with the £182 million representing the cost of the British government's Bloody Sunday inquiry, or even the mere £10 million cost to the British taxpayer of the recent inquiry into the death of Diana, former Princess of Wales.

See the coverage of this case by Intellectual Asset Management, The Lawyer and Financial Times.

Estate of the Nation vulnerable to terror attack of the Dalek exclusive licensees

Wednesday was the day the Daleks had their day in court, in JHP Ltd v BBC Worldwide Ltd and another [2008] EWHC 757 (Ch), a decision of Mr Justice Norris in the Chancery Division of the High Court, England and Wales (thank you, Simon Haslam of Abel & Imray for letting the IPKat know about it).

The Daleks appeared in the first series of the popular British Dr Who children's TV series in 1963. Their creator Terry Nation entered into agreements in 1964 and 1965 with SP (the predecessor of JHP,the claimant in this action), for the publication of books featuring the Daleks. These agreements provided the basis for the publication of The Daleks Book, The Dalek Annual No. 2, The Dalek Pocket Book and Space Travellers Guide', The Dalek Book and The Dalek Pocket Book .

Terry Nation died in 1997. Four years later JHP wrote to the BBC, seeking to explore the possibility of exploiting these earlier books and other Dalek-related merchandise, but no agreement was reached. Meanwhile, the BBC began negotiations with the trustees of Nation's estate. While no written agreement was reached as to the use of the contents of the earlier books, subsequent evidence indicated that representatives of the BBC and Nation's estate had reached an accord as to the BBC's use of those earlier works. In 2002, the BBC published The Dalek Survival Guide, which referred to text used in the earlier works. JHP, as the exclusive licensee of the right to publish the earlier works, sued the BBC for copyright infringement, seeking damages. The BBC maintained that it had acquired a licence by estoppel from Nation's estate to use the material featured in the earlier books in its new books.

Norris J dismissed JHP's action. In his view, on the true construction of the agreements, JHP was the exclusive licensee of the right to publish material found in the earlier books. The BBC however acted in the belief that it had the permission of the estate to use material derived from the earlier works in which the estate held the copyright, acting on that belief in paying writers to prepare text in publishing and marketing the new book in which the text in issue had been referenced. The BBC therefore had a complete defence to the claim, even if it had infringed the rights of the exclusive licensee.

The IPKat says, this may seem strange, but that's how the Copyright, Designs and Patents Act 1988, s.101(3) works: it provides that, in any action brought by an exclusive licensee, the defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner. So JHP will have to take the matter up with Nation's estate, it seems, who are apparently authorising an infringing act under s.16(2) of the same Act.

Merpel says, isn't it unusual these days to see a dispute like this get as far as a full trial when there's a knock-out statutory defence like this one sitting here?

What's really inside a Dalek here
Brave cat takes on Dalek here

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