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Showing posts from 2006

New Year's Greetings One and All

I could not let the year turn without commenting briefly on some of the events of the last few months that I would have covered if I only had more time.

Legal Services Bill
First and foremost I am delighted to see that the Legal Services Bill has made it to second reading and is now in committee in the Lords 6 months after publication in draft on the Decaff website. The provision of most interest to me is Part V which provides for "Alternative Business Structures" in the delivery of "reserved legal activities", such as advocacy and litigation, and "legal activities" which includes any legal advice, assistance or representation by mixed legal and multidisciplinary practices. Public access has been a wonderful thing for me and indeed the SME in Yorkshire and Lancashire I advise and represent but although my clients and I are no longer dependent on intermediaries such as clerks and solicitors to do business with each other I am still limited in the services …

Nice to be Back!

A lot has been going on in intellectual property over the last few months.

In patents, the Court of Appeal has given judgment in Macrossan's Application [2006] EWCA 1371 which has led to a new Patent Office practice note on patentable subject matter and has delivered the reasons for its judgment on the rare but very important question of the role of scientific advisors in Halliburton Energy Services Inc v Smith International (North Sea) Ltd. and others [2006] EWCA Civ 1599 (24 Nov 2006). Mr Justice Kitchin has considered whether the matter disclosed in the specification of a patent extended beyond that disclosed in the application as well as issues of novelty and obviousness in Merz Pharma GmbH & Co. KGaA v Allergan Inc. [2006] EWHC 2686 (Pat) (30 Oct 2006). Encouragingly for the legal profession, he decided an old fashioned application for an interim injunction in Les Laboratoires Servier and another v KRKA Polska SP Zo.o and another [2006] EWHC 2453 (Pat) (3 Oct 2006) which …

Clever Trevor holds forth in Leeds

Yesterday, an old friend from St Andrews sent me an email headed "What happened to the Blogs?" It was one of 162 emails (most of which were caught by my spam filter) which were waiting for me when I staggered back to my Pennine fastness at 22:00 for the third night running. If I say that on Monday I was chairing Peter Bissell at the Sheffield Inventors Club,on Tuesday I was listening to Mark Wyatt of Enterprise Ventures at the Manchester Inventors Club and yesterday to Trevor Baylis at Fox Hayes in Leeds I think folk will appreciate what is happening to my leisure time.

Trevor gave a very entertaining performance relating his life story as a swimming champ, PT instructor, swimming bath salesman and inventor. He spoke of all the scepticism that he had met when he tried to market his wind-up radio. Apparently someone suggested that a more abundant source of energy might derive from his bodily recesses than from the winding mechanism. That must surely rank as one of the most w…

US Civil Litigation - Spyware Claim Dismissed

Just under a year ago I blogged a report of a class action in Illinois against 180 Solutions Inc and 180 others ("Spyware Claim in Illinois" 15 Sep 2006). I did so mainly because of the opportunity to study the claimant's statement of case which was very curious to my eyes but also because of the subject matter which just about falls within the scope of this blog. Extravagantly, I promised to follow this case and keep everyone posted.

Now I have some news of this litigation thanks to Mr Steve Stratz, Director of Public Relations of
Zango. Mr Stratz says that "the putative class action lawsuit (Simios, et al. v. 180solutions, Inc.) filed nearly a year ago in federal court in Chicago has been dismissed, with prejudice." He adds that "a dismissal with prejudice prevents the plaintiff(s) from bringing the same lawsuit against Zango in the future and is a drastic remedy and one granted only in the most egregious cases". He invites further enquiries on + 1 4…

BPP Law School's IP Students

BPP's students at Leeds and Manchester did very well last year. Both schools published excellent newsletters and the Manchester students ran an IP legal advice clinic for the Manchester Inventors Group.

I have now somewhat belatedly uploaded the June edition of the Leeds students newsletter. It is very good indeed. It contains articles on Apple Corps v Apple Computer[2006] EWHC 996 (Ch), a review of the IPCEX talk on Freedom of Information last March, some basic info on trade marks, a lighthearted look at some improbable inventions and articles on counterfeiting and supplementary protection certificates.

Well worth downloading as are indeed all of them.

ADR of Intellectual Property Disputes

On 10 May 2006 I chaired a seminar on alternative dispute resolution of intellectual property disputes. We had three star speakers:
Ignacio de Castro from the WIPO Arbitration and Mediation Centre in GenevaPeter Back of the UK Patent Office, andSara Ludlam of Leeds law firm Keeble Hawson.As is clear from my slides, IPCEX (the IP Centre of Excellence for the North) chose that topic to coincide with the launch of the Patent Office mediation service a few weeks earlier. As I have said repeatedly in this blog over the past year, UK or at least English patent litigation is among the most expensive in Europe and goes a long way to explaining why we fall behind not only countries like the USA and Japan but also the rest of Europe including even the Netherlands in the European patent application stakes. It is high time something was done about it and the mediation initiative and Patent Office opinions are steps in the right direction.Ignacio, who has practised in London as an English solici…

Software Distribution: "How much is Windows worth?"

A very interesting article by Ed Bott has appeared on ZDNet entitled "How much is Windows worth?" It starts with the observation:
"Years ago, Microsoft created a multi-tier pricing structure for Windows that emphasized pre-installing its software on new PCs. The result was, by one measure, an outrageous success. ............ Ultimately, Microsoft's confusing business strategy has led to a problem that threatens the success of its next version, Windows Vista. My instinct says consumers can't value an operating system at more than 10% of the value of the physical hardware. Historically, 9 out of 10 copies of Windows are sold preinstalled on new computers. The business model that Microsoft created has been so successful that the average consumer has no idea what Windows is worth. The notion that different purchasing channels have different Windows license restrictions is
completely inscrutable. (How many questions can you get right in this quiz?) In fact, based on…

Interest reipublicae finis sit litigio - Final Whistle in Ultraframe

One of the longest running cases in English intellectual property litigation appears finally to have come to an end. In Ultraframe (UK) Ltd v Fielding and others [2006] EWCA Civ 1133 (08 Aug 2006) the Court of Appeal set out its reasons for refusing permission to appeal Mr Justice Lewison's decision in Ultraframe (UK) Ltd v Fielding and others[2005] EWHC 1638 (Ch) (27 July 2005).

This case, which Lord Justice Jacob described as "a dispute conducted by both sides as if it were a State trial" took over 90 days to hear with a judgment running to 1929 paragraphs covering 487 pages. All this over conservatories.

There were five applications for permission to appeal and save for one over costs upon which there may be further submissions it was refused in each case. Although Lord Justice Jacob warned that the Court's decision had no precedential value it is nevertheless illuminating on the courts approach to the issue of rel prospecvt of success which is also the criterion…

This Blog is now One Year Old - Some Warmed Up Porridge to Celebrate

It hardly seems like a year since I launched this blog - but it is.

I haven't always been able to update it as regularly as I should - but I have tried.

The incident that launched me into blogging was the Commission's proposal of 12 July 2005 for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a framework decision to strengthen the criminal law framework to combat intellectual property offences. It just did not seem to me to be a good idea to bring the construction of claims, which is expensive and difficult enough even in the specialist tribunal within the purview of the average jury. And I was even more of that view after I undertook jury service at Bradford Crown Court a few weeks later.

Following the ECJ's decision in C-176/03 Commission v Council on the powers under the EU treaties to require member states to impose criminal sanctions, the Commission considered the effect of that decision in a communication to th…

Seminar ""Protecting your Intellectual Property in China" Liverpool, 14 Sep 2006

I appreciate that this is still a minority view but I believe that China stands very much where the USA stood before 1917 and the USA stands where the British empire stood at the time of the Boer war. That reality was brought home forcefully to me at the WIPO Arbitration & Mediation Centre meeting in Geneva last October when Francis Gurry, who also has responsibilities for the administration of the PCT, said that on present trends the bulk of the world's new technical literature will be in Mandarin or some other North Asian language within a very short time. If that is right everyone needs to take an interest in what's happening in China.

In this regard IPCEX (the IP Centre of Excellence) is organizing a free seminar entitled "Protecting your Intellectual Property in China" courtesy of its newest member, Kirwans of Liverpool, at 4pm on 14 September 2006 in The Boardroom, Martins Building, Water Street, Liverpool L2 3SX. I shall be chairing the seminar and my spea…

Legality of Trading in Certificates of Authenticity

Several of you have asked what has happened to this blog recently, particularly over the last few weeks when it has been silent. The answer is that I have been exceedingly busy. I am after all a barrister first and blogger second. Although I have had a lot of other work my biggest case was Microsoft Corporation v Ling and others [2006] EWHC 1619 (Ch) (3 July 2006)

In that case I faced on very meagre resources two very able counsel - one an acknowledged expert in civil fraud and the other an intellectual property specialist - instructed by a very large law firm. The issue was whether dealing in certificates of authenticity - stickers that are affixed to the casing of microcomputers upon which Windows or other software is installed - is always necessarily unlawful. That issue had already arisen in the USA, Israel and the Netherlands but this appears to be the first time that it has arisen in this country.

As I was counsel in the case it would not be right for me to say anything more abou…

Data Protection: Case Note on Scottish National Party v The Information Commissioner

My case note on the Information Tribunal's decision of 15 May 2006 in Scottish National Party v The Information Commissioneris the first update to my IP/IT-Update website since 3 May 2006 and indeed my first entirely new contribution to that site for yonks. The case is interesting and important for several reasons which I set out in the note. It may well have an impact far beyond our shores and indeed far beyond its subject matter.

Readers who are not au fait with English (or Scottish or Northern Irish) data protection law may be interested to know that we have had data protection legislation in this country since 1984. We were by no means the first country to have such legislation. Sweden has had a Data Protection Act since 1973 and Austria since 1978. One of the reasons why Parliament enacted data protection legislation here was an early decision of the Swedish Data Inspection Board which prevented the Swedish subsidiary of a German multinational from transmitting data on its Swe…

Innovators Toolkit

A post from my public access blog "nipc invention" which may interest some of you is a seminar called the "Innovators Toolkit" which will take place at Lancaster University's InfoLab21 on 3 August 2006 between 09:15 and 12:30.

I am giving one of the talks but the main speaker will be Dr Ron Jones who has 25 years practcial experience as an inventor and innovator.

This will be one of the first initiatives in the UK of ip.com, a US company that offers a variety of services to inventors, innovators, entrepreneurs and other creative people. Further information on the UK services are available from the UK page of the ip.com website.

Trade Marks and Domain Names: Ellerman Investments Ltd v Vanci

This is an interesting example of how the courts can still be useful in a domain name dispute.

The claimants included the Ritz Hotel,The Ritz Club,and the Ritz Club London Online. As one might imagine, they had registered a number of national and Community trade marks that included the word RITZ in class 21 including UK registered trade mark no. 1509163 for RITZ for "gaming services" and CTM no. 1703974 for RITZ for the "provision of gaming services accessed via local and world-wide computer networks". The defendants were had registered the domain name which was the URL for a website called RoyalPlaza.Net which contained information about gaming with links to third party sites such as Pacific Poker, Party Poker and Poker Room. The claimants complained of trade mark infringement to which complaint the defendants responded by registering 5 more sites containing the letters RITZ, namely , , , and .

The claimants sued for infringement of their trade marks under s.10 (1)…

Patents - Damages Inquiry: Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd

This is the latest episode in a marathon case that has already made a lot of interesting law. The claimant company, Ultraframe (UK) Ltd ("Ultraframe")., designs and makes modular conservatory roofing systems. One of its products, the Ultralite 500, is partly protected by UK patent no GB2300012 and partly by unregistered design right. The defendant, Eurocell Building Plastics Ltd. ("Eurocell"), makes and sells window and door systems, conservatory roof systems, PVCU profiles and rooflines. Until 2002 Eurocell distributed Ultraframe's Ultralite 500 system. In that year it started to make and sell its own system known as the "Pinnacle 500". Ultraframe alleged that the "Pinnacle 500" infringed its patent and design rights and sued Eurocell for the infringement of those design rights.

Mr Justice Lewison held in Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd and another [2004] 1785 EWHC (Ch) (22 July 2004) that the design rights had been inf…

Confidential Information - More Chinese Walls: Gus Consulting GmbH v Leboeuf Lamb Greene & Macrae

In Bolkiah v. KPMG[1998] UKHL 52, [1999] 2 AC 222, [1999] 1 All ER 517, [1999] 2 WLR 215 (16 Dec, 1998) the House of Lords considered for the first time some of the problems of confidentiality and conflict that have arisen with the development of multinational, multi-service professional firms. The question in that case was whether, and, if so how far, a firm of accountants that had acted in one capacity for one party to a law suit could properly act for that party's opponents in another. There was never any question of impropriety. The professionals involved were not part of the same team. Steps were taken to minimize the already small risk of misuse of confidential information, But despite all those measures, the House were not satisfied that the accountants had discharged the burden of showing that there was no risk of confidential information in their possession that they had obtained in the course of a former client relationship unwittingly or inadvertently coming to the noti…

Trade Marks - Parallel Imports and Summary Judgment: Doncaster Pharmaceuticals v Bolton Pharmaceutical Co.

This case was about the exercise of the judicial discretion to grant summary judgment under CPR Part 24. One of the principal changes brought about by the replacement of the Orders of the Supreme Court by the Civil Procedure Rules ("CPR") was the substitution of what we used to call the Saudi Eagle test for "triable issue" test for summary judgment.

The Saudi Eagle case (Alpine Bulk Transport Co Inc v Saudi Eagle Shipping Co Inc (1986) 2 Lloyd’s Report 221) was an application to set aside judgment under RSC O13 r 9. The rule enabled the court to set aside or vary any judgment entered on such terms as it thought just. One of the advantages of the old rules was that a simple statement of principle could spawn a judge-made code that tended to fit just about every circumstance in the same was as a fragment of grit produces a pearl. The pearl from this particular piece of grit was that the court's discretion under O19 r 9 would be exercised in favour of a defendant …

IPR in New Media: b.TWEEN06

Catch up time! So much has happened. Where should I start?

I've just spent a really interesting two days as a sort of speaker at large at the b.TWEEN06 new media fest at the National Photographic Museum in Bradford yesterday and today. I was there to conduct one-to-one sessions on intellectual property issues.

The conference was opened by David Putnam who told a parable about a boat race between GM and Toyota. Toyota won by a mile largely because their crew had 8 men rowing and only one steering in contrast to the GM team which was the other way round. The parable continued with the US team flattening their management for the next race with the effect that there was still only one oarsman. This time the Japanese won by 2 miles. GM sacked its oarsman and distributed the research and development money saved on stock options for its directors.

Lord P was followed by John Sanborn, Creative Director of eBay, Inc, who could at least appreciate a good joke at his nation's expense. He …

Confidential Information: Norbrook Laboratories Ltd v. Bomac

The interesting point about the Privy Council's judgment in Norbrook Laboratories Ltd v. Bomac Laboratories Ltd (New Zealand) [2006] UKPC 25 (4 May 2006) is that it was expressed as a decision in contract. This is a departure (at least in emphasis) from many recent decisions on confidentiality such as Campbell v MGN Ltd[2004] UKHL 22 (6 May 2004) that have treated a duty in confidence as a freestanding equitable obligation in its own right quite independent of any contractual obligation.

In Norbrook, by contrast, the claim was for breach of a confidentiality agreement. Clause 3 of an agreement by which a UK manufacturer disclosed the formula and other confidential information about one of its products to its local distributor so that it could obtain permission from the licensing authority to distribute the product in Aotearoa-New Zealand required the distributor to "maintain in confidence and not use, except as contemplated herein, any information provided by NORBROOK or its …

ADR Seminar Leeds 10 May: Bar Council will give 2.5 hours CPD Point

I am glad to say that Cordelia Lean of the Bar Council will allow 2 hours and 30 minutes CPD points to any barrister who attends our seminar at BPP Law School in Leeds on 10 May 2006.

IPCEX has not yet had time to apply to the Law Society, ITMA or CIPA for CPD accreditation but I think that those professions also offer ad hoc accreditation. Check the Law Society's FAQ.

We are now close to bursting point. I have to decide whether or not to look for more space in another building so I really do need to know who is coming in good time.

Shelagh Gaskell

I am very sad to learn from Pinsent Masons' website of the death of Shelagh Gaskell. I had known Shelagh for over 20 years. Although we had lost touch some years ago I will miss her greatly. I am sure I shall not be the only lawyer to do so.

She was a lovely lady but a very formidable one. The first time I met her was at Leeds University shortly after she would have joined Dibb Lupton Fawcett (as DLA Piper was known at that time). I was giving a talk on protecting semiconductor chip topograpraphies which was a burning issue before the Washington Treaty. Simon Chalton, who was then senior partner of Dibbs, brought her along and I remember that she asked me some very perceptive questions.

I got to know her better at the IBA conference in Buenos Aires in 1988. There were not many Brits at that conference - HMG had not yet restored diplomatic relations with Argentina - and even fewer Northerners. Apart from Simon and Shelagh the only other delegate from the North was Dan - now Lord - Br…

Dispute Resolution: ADR and Arbitration of IP Disputes

Free Seminar: BPP Law School, Leeds
Wednesday, 10 May 2006 14:00 - 17:00

On 3 April 2006 the UK Patent Office announced a new mediation service for the resolution of intellectual property disputes. That announcement followed hard on the implementation of s.74A and s.74B of the Patents Act 1977 providing for advisory opinions on the validity and infringement of patents.

These initiatives indicate determinationon the part of HM government that to do somethingabout the scandal thatEngland and Wales is one of most expensive places in the developed world to enforce intellectual property rights. This scandal is one of the reasons why the UK trails not just the USA, Japan, Germany and France in the number of European patent applications every year but even the Netherlands.

Things are about to change and if you want to learn about these changes the best opportunity is to attend a free IPCEX seminar at BPP Law School, 2 Whitehall Quays, Leeds LS1 4HG on Wednesday 10 May 2006 at 14:00.

We have top …

Trade Marks: Case C-145/05, Levi Strauss & Co. v Casucci SpA

The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used.

This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the "seagull" design resembling a lance-corporal stripe's in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of the …

Copyright: Da Vinci Code Case - absolutely my last mention of this case unless there is an appeal

Yesterday, I mentioned the Hon Mr Justice Peter Smith's secret code (Copyright - The Da Vinci Code: ho ho! 27 Apr 2006). Well now we have the decryption - "Judge's own Da Vinci code cracked" (BBC 28 Apr 2006). His message in "Smithy code" reads "Smithy Code Jackie Fisher who are you Dreadnought." So desu.

I reported yesterday that his lordship remarked that he didn't see why a judgment should not be a matter of fun. Quite so, especially after detailed assessment. But another quotation occurs to me, this time from A P Herbert:
"People must not do things for fun. We are not here for fun. There is no reference to fun in any act of Parliament."On quite a different point I knew the judge when he was at the Manchester bar and even appeared against him once or twice. I don't recall anybody calling him "Smithy" then. Should I ever find myself in front of him I certainly shan't start now.

Patent Conventions: Latest List of Members

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

Copyright - The Da Vinci Code: ho ho!

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

First Attempt and Animated Presentation

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

Happy World Intellectual Property Day

Today is world intellectual property day. According to WIPO press release 445 of 24 April 2006, member states decided to designate this day
"to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe."
This date was chosen because it is the anniversary of the day on which the WIPO Convention came into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day every year since its inception in 2001.

Because of pressure of work nipc, have not done much to mark this date this year. Last year, we presented a lunch time event to launch the NCC's copyright deposit service and the year before I won a Dyson in the Ideas21 raffle at its do at the Melton Mowbray in Holborn. We shall certainly do something next year. For those who want to know what is happening today around the world there is a list of events on the WIPO …