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Showing posts from January, 2006

Trade Secrets: Environmental Technologies v Symphony

Two fascinating decisions from the Court of Appeal today: Environmental Technologies Inc (EPI) and another v Symphony Plastic Technologies Plc and another[2006] EWCA Civ 3 (26 Jan 2006) in which the Court dismissed the claimant's appeal from the decision of Mr Justice Peter Smith at [2004] EWHC 2945 (Ch) (21 Dec 2004) and Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2006] EWCA Civ 16 (26 January 2006) on shape marks. For no better reason than that Mr Justice Peter Smith used to practise in Manchester and we sometimes found ourselves against each other, I shall start with Symphony and leave the shavers for tomorrow or whenever I can next get round to them.

As I have indicated in the title, Symphony was about trade secrets. To prevent those secrets escaping beyond the Strand, both Mr Justice Peter Smith and the Court of Appeal sat in private. Both tribunals delivered judgments that were published only in part. The trial judge delivered an open portion which …

Bits and Pieces

The WIPO has just dropped me an email to say that Azerbaijan and Benin have signed the WIPO Copyright and Performances and Phonograms Treaties. No doubt their games software, film, recording and music industries are uncorking the champagne. Can't be bad for Hollywood or Silicon Valley either can it? For those interested in IPR and developing countries, I can't recommend too highly the excellent website Intellectual property Watch and the materials on intellectual property published by the Quaker United Nations Office in Geneva.

I should also point to a couple of posts on my other blog.

First, the magnificent Steph Aldred of Bmedi@ has published all the presentations and notes given by Janet Bray, Lucas Bateman and Ian Lewis together with my introduction and notes for the talk “Everything that a Bmedi@ Member needs to know about IP at the Outset” that we gave in Bradford on 19 Jan 2006 on her website.

Secondly, the Patent Office has published its opinion on EP(UK) 0801532 which …

Threats Action Updates

I have just updated and transposed two articles that appeared on the old Kingsgate Chambers and Lancaster Buildings websites on threats actions.

The first of these used to be the home page for the "threats" section on the old Kingsgate website. The updates are the changes made to s.70 of the Patents Act 1977 by s.12 of the Patents Act 2004 and the creation of a threats action in respect of Community designs by reg. 2 of The Community Design Regulations 2005.

The other article is "Actionable Threats in Intellectual Property Litigation". I wrote the first edition on Prince Charles's 51st birthday (14 Nov 1999) which was after the Court of Appeal had given judgment in Unilever Plc v Proctor and Gamble Co [2000] FSR 433 but before Mr Justice Pumfrey had decided Kooltrade Ltd. v XTS Ltd. [2001] FSR 344. Indeed, I actually predicted the result of the main point of argument in Kooltrade, namely that the "without prejudice" privilege applies only to genuine at…

Intellectual Property Barrister Required for Manchester

I am intrigued by an email from The Lawyer that has just appeared in my spam folder:

"Intellectual Property Barrister required by high profile Manchester law firm. Like to know more? Please forward your CV in complete confidence to recruitment@....... or contact ....... on ....... or ......"

It's an offer to forward my CV to whoever placed the ad. I am not applying though. If it really is a law firm that placed the ad and not a barristers' chambers trying to find a new market for its increasingly leisured middle ranking chancery/commercial tenants, I have seen too many of my friends in "major regional law firms" (if that is not an oxymoron*) who "have had their equity returned" on turning 40 to be tempted. Whoever paid for that ad, it shows remarkable optimism and some might say naivety.

Let's look at some statistics. According to the Patent Office (page 13 Patent Office Facts and Figures 2004/2005) some 1,583 patent applications were filed in NW…

Competition: Microsoft Settlement Possibility

I am grateful to ZDNet for this tidbit of information. According to the report Microsoft has offered to license some of its Windows Server source code to rivals in response to a statement of objections served by the Commission at the end of last year. The nub of the objection is that Microsoft has not complied with the Commission's order of 24 March 2004 to disclose to competitors within 120 days, the interfaces required for their competing products to be able to operate on Windows. Unless the order is annulled by the Court of First Instance or a settlement is reached with the Commission, Microsoft faces the prospect of a daily fine. Incidentally, a daily fine ("astreinte") is the sanction by which injunctions are enforced in civil law jurisdictions.

Copyright: Nova Productions Ltd v Mazooma Games Ltd

A good old fashionedcopyright case came on for trial before Mr Justice Kitchin last month (Nova Productions Ltd v Mazooma Games Ltd and others [2006] EWHC 24 (Ch) (20 Jan 2006). The subject of the litigation was two coin operated video games. The issues in the case were whether the following copyrights had been infringed:
(1) Artistic copyright in bitmap graphics and the frames generated and displayed to users;
(2) Literary works, being design notes and the program to implement the game;
(3) A dramatic work embodied in the game itself; and
(4) Film copyright.
Since the claim focused on allegations of infringement of artistic copyright the judge analysed in some detail the House of Lords' judgment in Designer Guild Limited v. Russell Williams (Textiles) Limited ([2000] UKHL 58 (23 Nov 2000). From that case, he drew the following principles:
(1) Although the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant's work.…

Two hundred and fifty not out - but some Stories don't go Away

My first post to this blog was "Porridge for Patent Infringement" on the Commission's proposal for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a proposal for a Council framework decision to strengthen the criminal law framework to combat intellectual property offences. Despite the appalling damage that this measure could do to European research and the chorus of disapproval from such people as Ross Andersaon of Cambridge this proposal has not been dropped. Indeed the decision of the European Court in C-176/03 Commission v Council which took limited the discretion of member states in implementing enforcement legislation has possibly stregthened its hand. The Commission's proposal is one of several bits of adopted and pending Community legislation to be affected and possibly modified by Commission v Council (see The Communicaiton from the Commission to the Council and Parliament on the implications of the Court…

Digitization: Conflict between Rights Owners and the Public?

Yesterday, the Leeds branch of the Licensing Executives Society enjoyed a masterly presentation by Andrew Finfer on Technology Transfer and Competition Law. One of the issues that our chair, Liz Ward, raised in Q & A was the compatibility of restrictions regularly imposed by the recording industry with UK and EC competition law. Her point was that these restrictions were hobbling the development of an online market in digital products. In his answer, Andrew said that similar arguments were made in respect of the distribution of consumer electronics.

I waded in with the suggestion that the two markets were quite different in that consumer electronics had to be made and stored whereas any numbers of a perfect copies of a game, film or sound recording can be disseminated anywhere in the world within seconds. I added that if the film, video and games software industries imposed tight controls over the dissemination of their products it could be because they needed it. When I was start…

Mea Culpa: Well known Marks and Arms

I made an error in yesterday's post on the protection of the pope's coat of arms. I described the arms as a well-known mark. That's not the law. Mea culpa, mea maxima culpa.

An anonymous reader has pointed out that art 6bis Paris Convention protects well known marks and art 6ter state emblems, official hallmarks, and emblems of intergovernmental organizations. That happens sometimes when you try to inflate a story on a generally news flat day into news.

If I may be a bit impertinent in revenge, Anonymous counsels us not to confuse statutory provisions. The Paris convention is of course a treaty not a statute. But your point is well taken and thanks.

Community Patents: Maybe the Last Chance to get it Through

In a press release issued yesterday, the European Commission announced a public consultation on patent policy in Europe, more specifically on "how to create an EU-wide system of protection can best take account of stakeholders' needs". This consultation covers not just the Community patent but other ways in which the patent system could be improved in Europe. It will also cover steps that can be taken in the short term to protect the rights of inventors, investors in their technology, bankers, lenders and other short term funders, other players in the market and, most important of all, the general public.

A consultation questionnaire can be downloaded from the Commission website. It is very straightforward and not a particularly long document. It has to be returned to the Commission not later than 31 March 2006.

We really do need to do something about patent reform in the continent as a whole. Otherwise it won't be just call centres that end up in India or jeans and …

Paris Convention: Official Emblems

According to the Patent Office, the WIPO has requested protection for the new pope's coat of arms and seals under art 6ter of the Paris Convention in that they constitute the state emblems of the the Vatican. There is a delicious irony there in that the WIPO is based in Geneva which was John Calvin's home town.

The Patent Office also claims that the new arms and seals may be inspected on the WIPO website. I did have a look but all I could find were representations of the previous pope's.

One of my first posts was on clergymen registering trade marks "Hallelujah! More Entertainment from across the Atlantic" 24 Aug 2005. Even though Mr Falwell was relying on common law trade marks which suggests that he must have some sort of reputation and goodwill it is not quite the same thing as protection under the Paris Convention. Is it.

Revised 17 Jan 2005 thanks to the comment from "Anonymous" below.

Patents: First Opinion on Validity

Patent Office examiner, Rebecca Villis, published her opinion on validity in
EP(UK) 1351732 NOVO-NORDISK A/S today. It is the first to be issued by the Patent Office under the ss. 74A and 74B of the Patents Act 1977 as amended.

I have read the application and summarized it in Patents: Opinions on Validity and Infringement on 14 Dec 2005. The examiner has found that the first and second claims were not new and were obvious but all the rest of the claims were new and not obvious over the documents submitted by the requester, Robert Lind.

The opinion is open to further review under s.74B at the request of the proprietor.

Geographical Indications: Commission proposes New Regulation

A "geographical indication" is a sign assuring consumers that produce comes from, or has been processed in a particular region renowned for the quality of such produce. Familiar examples include Champagne, Scotch whisky and Parma ham. "Geographical indications" are also known as indications of source or appellations of origin. In this country, geographical indications are protected by the law of passing off (see my case note on William Grant & Sons Ltd. and others v Glen Catrine Bonded Warehouse Limited and Others, registration of collective and certification marks under the Trade Marks Act 1994 and Council Regs No 2081/92 and 1493/1999. It is in respect of this special legislation that changes have been proposed.

According to the Commission, "more than 700 names, designating inter alia over 150 cheeses, 160 meat and meat-based products, 150 fresh or processed fruits or vegetables and 80 types of
olive oil, have been registered in this context." Unfortu…

Disclosure: Prince Charles v Associated Newspapers

CPR 31.22 (2) permits the court "to make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public." Such orders are very rarely made because, as Lord Dunfermline put it in Scott v Scott:
"Publicity is the very soul of justice. It is the keenest spur to exertion, and the surest of all guards against improbity. It keeps the judge himself, while trying, under trial."
However, the discretion is there and an example of its exercise is provided by Mr Justice Kitchin's judgment in Prince of Wales v Associated Newspapers Ltd. [2006] EWHC 11 (Ch) (13 Jan 2006). This is a claim in which HRH is suing the publisher of the Mail of Sunday for breach of confidence and copyright infringement in respect of a journal that he kept of the visit that he made to Hong Kong at about the time of the handover to the Peoples' Republic found the…

Bmedi@ Third Thursday 19 Jan 2006 - "IP for BM-all that a Bmedi@ Member or its Client needs to know about Intellectual Property at the Outset"

According to Bmedi@ Superwoman Steph Aldred we have "a good list of attendance" for the talk on intellectual property in branding and design that Lucas Bateman, Janet Bray, Ian Lewis and I intend to give between 17:30 and 20:00 next Thursday evening at the Bradford Business and Innovation Centre, but I am sure that if you call her on +44 (0)1274 841326and talk to her very nicelyor email her on Stephanie@bmedia.org.uk she might just see her way to letting you in.

If you join Bmedi@ which costs only £50 per year + VAT you can get in for nothing. If not, Steph will charge you £15 and considering that she will throw in all the pizza you can eat and all the wine you can quaff as well as hear pearls of wisdom from my guests that is pretty good value.

If you want to know of any of the other events in which we are involved, click on to the "Events" page of the Huddersfield Intellectual Property website at http://www.hip.org.uk/events.htm.

Legal History: the Russian Flu Pandemic brought us Carlill - what will the Birds bring?

Today's New Scientist contains a fascinating article on the first case I ever read, Carlill v Carbolic Smoke Ball Co.[1893] 1 QB 256. Indeed, it is probably one of the first cases anybody anywhere in the common law world reads because it was one of the few English cases my US students at McGeorge had ever heard of though they would insist on pronouncing the "v" as "versus". I managed to teach them a few others like the "snail in the bottle case" though they could never see the funny side of R v Collins [1973] QB 100.

The point of the New Scientist article is that it was not just any old flu against which the Carbolic Smoke Ball promised protection but a real killer rather like Spanish flu in 1918 or perhaps (Heaven forbid) avian flu in the not too distant future. According to the New Scientist

"Whole cities came to a standstill. London was especially hard hit. As the flu reached each annual peak, normal life stopped. The postal service ground to a …

Local IP Lawyers: "No longer Lumbered"

Apologies to Jason Lumber, but I needed a snappy headline. Paul Sandersonand Martyn Fish who used to share Harrison Goddard Foote's offices in Leeds have just changed their name to HGF-Law from Sanderson Lumber. All of us at NIPC, and particularly Lois and I who have shared the odd glass of sake with Paul, would like to wish them every success with their re-branding. They are a good firm of IP specialists and always on our list when we have to refer public access clients to an authorized litigator outside London.

Paul and Martyn's re-branding follows Blair & Co's change of name to Marks & Clerk's Solicitors. It will be interesting to see whether there will be any more law firms marketing themselves as patent agents' legal departments. I can think of lots of bods in Manchester and Leeds who would like to do likewise.

Finally, I should make clear that Jason is not in fact "Lumbered". He is very much in the thick of things particularly on the trade mar…

Leeds Inventors Club: 18 Jan 2005

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There should be a super brainstorming session in the Patent Collection on the top floor at Leeds Central Library next Wednesday. I shall be in the chair (possibly in both senses for those who care to cross the road for a bevvy afterwards) and on the panel will be David Robertson Brown of Gumption (featured left) and a patent agent appointed to represent this year's CIPA president Michael Harrison.

David is a remarkably gifted chap. He has produced a fantastic CD called "Eternally Free" in which he has recorded poems read by his wife Geri (a very talented and accomplished actor) set to music by Far Pavilions composer Philip Henderson.

However, his main business is project management for new high tech companies. In that capacity he brings his engineering knowledge and military training gained from years of service in the RAF into play. Customers include Business Link for whom he has worked for many years.

What he doesn't know about business plans, funding (particularly …

Patents: HMG's Ratification of Patent Law Treaty

The reason why last night's post was so short was that I could not get access to the WIPO website to link to the info on the Patent Law Treaty. Now I can and readers will see that it is essentially a procedural treaty to make it easier and hopefully cheaper to plough through the national or regional requirements. That ought to make it easier and cheaper for the little chaps of this world who come to people like me.

Recent changes to the Patent Rules by the Regulatory Reform (Patents) Order 2004 and Patents (Amendment) Rules 2004 mean that we don't actually have to do anything more to implement this treaty by the date it comes into force.

There are now a completely updated consolidation of the Patent Rules 2000 on the Patent Office website. Anybody who wants to know about any of this stuff on any of those points, feel free to call me on +44 (0)870 990 5081/

Domain Name System: Internationalized Domain Names - more trouble brewing?

Last October I referred to the debate over whether the domain name system should continue to be overseen by a licensee of the US Commerce Department in "Viviane Reding: Internet Governance - the European Perspective". That issue appears to have died down but if an article by Monika Ermert in today's Intellectual Property Watch "Who Shall Own .China or .Arabia? Internet IP Questions On The Rise" is right we may soon have a much bigger one involving players who have far less in common with the US government than the EC or its member states.

The new battleground will be over internationalized domain names, that is to say domain names in languages other than English or rather those that are not written in Latin script. According to Monila Ermert the Chinese domain name authority has already set up a Chinese .com domain outside the existing structures and there are signs that other authorities and domain name authorities from Arabic speaking countries have already se…

Patents: HMG ratifies Patent Law Treaty

The UK has become the 13th state to ratify the Patent Law Treaty. It will come into force on 22 March 2006.

Patents: Kim Lesley Ridgeway

Back to work for the hearing officers today. The first decision of the New Year is a decision of Bruce Westerman on a hearing that took place before him on 16 Dec 2005.

The applicant, Kim Ridgeway, had applied for a patent for a rather neat teaching device which reminds me of a slide rule. Indeed, as a St Andrean I have to say that I am also reminded of Napier's bones. According to the drawing in Mr Westerman's decision, the invention consists of two or more rods each divided into a number of blocks or chunks rather like a chocolate bar. One of the rods is fixed and the other is movable. The chunks on one of the rods are numbered while those on the other are plain. When the movable rod is lined up against the fix rod it is possible to demonstrate simple adding, taking away, multiplication and division.

Apparently the device has attracted a lot of interest and rightly so, but, unfortunately, there is one whole heap of prior art. Identifying the claimed invention as "the plu…

Traditional Knowledge: India digitizes Folk Remedies

One of the most interesting areas of intellectual property but one in which rarely comes before a UK intellectual property practitioner is "traditional knowledge". This is the law that protects a bundle of resources such as collective knowledge of the medicinal properties of plants and trees, folk tales and genetic materials. These resources are undoubtedly of scientific and literary value but they are difficult to fit into the IP system. For those who need to know more of the topic, there are some excellent articles on the WIPO and Quaker UN Office websites.

The reason I mention this today is to alert readers to an article by John Lancaster entitled "India Digitizes Age-Old Wisdom" in the Washington Post. The story discusses an ambitious project to record the vast store of observations and remedies on computer, partly to protect them form exploitation. but also to give them to science. But for the fact that I have to beetle off to my local meeting house at 10:30 am…

Patents and Trade Marks: Perils of not Using a Filing Watch Service

I mention this cautionary tale partly because I have just written the chapter on sensible precautions for my book on Enforcement (the manuscript of which should have been with the publisher a week ago) and partly to celebrate Leeds Patent Library's new website "Business and Patents" since Leeds Patent Information Unit provides a filing watch service. This is an entirely fictitious case but it is based on the facts of two real ones in which I have had to advertise.

In the mid-1980s, a small furniture manufacturer from High Wycombe designed a chair which it marketed to a number of local education authorities in the North of England as “The Wilkes” in tribute to John Wilkes, the famous radical politician who had represented the borough in the House of Commons in the 18th century. The company never saw the need to register the sign as a trade mark. The local authorities had been in the habit of placing repeat orders for the chair nearly every year until 2004 when they dried u…

Pussy Galore

Most readers of this blog are likely also to read IPKat but, in case there are any who may have missed this post, Prof. Jeremy Phillips has invited IP specialists in small practices to a talk and reception in London on 16 Feb 2006. It sounds very promising and I hope to be there, professional commitments and the state of the roads and railways permitting. I thoroughly recommend it.

If anyone is wondering why this post is entitled "Pussy Galore", Jeremy Phillips and Ilanah Simons seem to have a thing about cats. I'm no ailurophile but stories like today's "Pet Subject for Copyright" and "The Stamp of Authority" a couple of days ago are very entertaining.

Italian Patent Office Fees: Don't think Gordon will go for this one

This time last monthI noted the appointment of Andrew Gowers to review the UK’s intellectual property framework and to report to the Chancellor of the Exchequer by the Autumn ("Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property"). Hard that it may be to believe, there is an advanced country in the EC that does even worse than the UK in the European patent application stakes. That country is, of course, Italy which managed 3,998 European patent applications in 2004 compared to the UK's 4,791 (see EPO Statistics for 2004).

Signor Bruno's opposite number in Italy also appears to have had a think and his solution is to abolish Patent Office fees for Italian design, utility model and patent applications (see s.351 and s.352 of the Italian Finance Act 2006). Now this decision has caused quite a flutter. I first learned of it earlier this week from my good friend Linda Oakley (see "La Dolce Vita for patents and Designs"…

Joint Ventures: Lambert Model Agreements

In his report on Business-University Collaboration, Richard Lambert (who is no relation) recommended among other things a series of model agreements to govern research between business and universities. In the light of Cyprotex Discovery Ltd v University of Sheffield[2004] EWCA Civ 380 (1 April 2004) there can be no doubt that something of that kind is needed. Accordingly a working party was set up to draft these precedents and I actually attended one of its meetings at the Chartered Institute of Arbitrators as one of the representatives of the Institute.

Those precedents are now on the DTI website together with guidance notes and a nifty little tool to help parties decide which agreement is closest to their needs. The agreements covered by the working party are as follows:

Agreement 1: Sponsor has non-exclusive rights to use in specified field/territory; no sub-licences.
University keeps IP.

Agreement 2: Sponsor may negotiate further licence to some or all University IP University keep…

IPR Enforcement: Filing Watch and Private Dicks

I've just uploaded "Guarding your IPR" onto my personal website. This mentions the British Library's "Currentscan" service and some info on private investigators who can be relied upon including, in particular, Rosy Amsel who works in Manchester not far from our old chambers address. Rosy is a very entertaining companion as well as a good PI.

If anyone knows of any others I should be glad to include them. I should be particularly pleased to list any private investigators based outside the UK who are recommended by an established IP lawyer, patent or trade mark agent.

China: Patent Terms

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Folk like me who are interested in China may be interested to know that the EPO has a vocabulary of terms used in patenting. If you are interested the Mandarin for patent it is:


zhuānlì.

US Patent IP Litigation Trends

According to the US news service IP Law there has been a 14% increase in IP litigation in the USA over the past year thanks largely to a great increase in the number of claims by the entertainment industry. That has more than offset a drop in patent litigation.

The increase in copyright litigation is not surprising. The news and entertainments industries are the sectors of the economy most under threat from the new digital technology. Part of the threat springs from the ease with which almost any number of perfect copies of audio and sound recordings and other publications can be disseminated almost immediately around the world with much reduced risk of detection and interception. Very different from the days when I first came to the Bar when a warehouse could be Anton Pillered or a container impounded. That is the reason for the WIPO Copyright Treaty, the Digital Millennium Copyright Act and the Copyright and Related Rights Directive.

The other threat comes from the fact that the new …

New Blog: UK Inventor

Some of you will be aware that I have had the odd set to with Gary Holloway on IPR Talk until its immoderate little moderator peevishly rejected one of my posts on IP in Huddersfield and has so far refused to grovel in apology.

Anyway I learned today that Gary is a Yorkshireman. On one of his rare visits to the best county in the UK he called in to my chambers to say wish me a happy New Year.

During his visit he mentioned that he had started his own blog called "UK Inventor". I have just had a butcher's hook (as they say in the Smoke) and very good it is too. The best bits are three posts on why the UK is trailing the other industrial countries in patent applications. Gary makes the point some really good charts. What worries me is not so much that we are dropping behind Europe but that we about to be overtaken by China and Korea (see "RECORD NUMBER OF INTERNATIONAL PATENT FILINGS IN 2004" WIPO press release 9 March 2005). I've set my news aggregator to pic…

Copyright: Happy New Year for Artists

Today is the day that the Resale Rights Directive (Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art OJ L 272 , 13.10.2001 P. 32 - 36) is supposed to be implemented (see art 12 (1)). Draft implementing legislation for the UK together with an explanatory memorandum are on the Office for Public Sector Information website.

As it is sometimes instructive to compare UK legislation with that of other English speaking member states I checked the Irish government website. All I could find was an announcement by Michael Ahern, Minister for Trade and Commerce, dated 1 Aug 2005 announcing an intention to bring forward plans for new implementing legislation. Those plans seem to be well hidden.

Other posts on this subject are "Copyright: Resale Rights Directive Implementation" of 21 Dec and Copyright: Resale Right Directive to be implemented in New Year of 17 Dec 2005.