25 February 2007

Enforcement: English Patent Court Practice

Paragraph 7.9 (2) of PD63 requires claimants in the Patents Court to file a Reading Guide for the judge not less than 4 days before trial. Such Reading Guide must set out the issues, the parts of the documents that need to be read on each issue and the most convenient order that they should be read; identifying relevant passages in text books and cases, if appropriate. Paragraph 11 of the Patent Court Guide adds that parties should endeavour to produce a composite document setting forth the matters alleged to form part of the common general knowledge and, where they disagree, what that disagreement is.

According to Richard Miller QC, Mr Justice Pumfrey has complained that pre-reading estimates in patent cases are often unrealistic and therefore unhelpful. Practitioners have been reminded that the estimate should allow time for the judge to read the patent, the prior art, the expert's reports and evidence of fact, skeleton arguments, and any other key documents. A further allowance should be made where it is likely that some material may have to be read twice if the judge is to get a proper grip on it.

Time estimates in case management directions must specify the full length of the trial and distinguish between reading time and hearing time. A typical direction would read "...estimated length [number] days comprising [number] days pre-reading for the Judge and [number] days for the hearing".

24 February 2007

IP and Development: Provisional Committee on Proposals related to a WIPO Development Agenda

William New has reported in Intellectual Property Watch that the WIPO Provisional Committee on Proposals related to a WIPO Development Agenda ("PCDA") has reached broad agreement on 40 issues at their latest meeting which took place between 19 and 23 Feb 2007. Those issues include technical assistance, technology transfer, information and communication technologies and enforcement. A final meeting of the PCDA is expected in June 2007.

Domain Names: A French Perspective

One of the advantages of registering my .eu domain name with indom.fr is that I receive a very good newsletter called "DomainesInfo" on domain names and internet governance from a French perspective. Today's lead story, for instance, is "A quoi sert l'ombudsman de l'ICANN ?" or What's the Point of an Ombudsman for ICANN by Stéphane Van Gelder. Setting out his stall Monsieur VG asserts
"The Anglo Saxons have a mediation culture. In business they have set up an official to carry out such function. The ombudsman is the mediator whose job is to try to defuse potential crises. But does ICANN really have a need for such an official."

All good stuff for folk like me for whom Neoconservativism is only slightly less objectionable than Fascism or Stalinism who think that Servan-Schreiber had a point though I am not really sure that I appreciate the argument. There is an English page on the website but not everything seems to get translated.

Also on the site is a law page ("Cahier Juridique") with regular updates on WIPO, the Czech Arbitration Court (the sole dispute resolution service provider for the .eu domain) and decisions of the French courts though they charge for that service.

One of the most interesting articles in English is another story by Monsieur VG on phasing out redundant ccTLDs (country code top level domain names for states that no longer exist such as .su for the former Soviet Union, .yu for Yugoslavia and possibly soon .uk if the Scottish nationalists win the May elections which they very well might). Apparently there are still quite a few .su domain names and their owners have threatened to sue ICANN if it touches their last vestiges of national pride.

23 February 2007

Patents: More Macrossan Fallout

Patent Office hearing officers have added three new decisions to the ones I mentioned in "Patents: The Macrossan Aftermath" on 15 Feb 2007. All dismissals, I'm afraid.

In NEC Corporation's Application Mr Bartlett found on 16 Feb 2007 that the technical contribution of a system for processing email according to content and source for mobile phones consisted entirely of excluded matter and was thus unpatentable.

Mr Marchant came to a similar conclusion in Start-Global Limited which concerned a computer based project management system for use in civil engineering construction projects on 22 Feb 2007.

We don't yet have a transcript to Mr Barford's decision in Arbitron Inc of 21 Feb 2007 but the case summary indicates that the invention determined the popularity of websites, broadcasting channels etc according to such criteria as audience demographics. Surprise, surprise. All excluded matter.

Bearing in mind that our economy is now services based and that manufacturing in this country has gone west, or rather east, is it sensible for the patent system to protect only products and processes. I know all the arguments against software and business method patents but these tend to come from geeks. Perhaps we ought to listen to people who make their living from services. Which is most of us.

22 February 2007

Security for Costs: Hart Investments Ltd v Larchpark Ltd. and Another

In England and Wales and a number of other countries costs (that is to say, lawyers' fees and expenses) follow the event. Another way of putting it is that the loser pays. Not every country in the world has such a rule. In the USA, for instance, it is the exception rather than the rule for a court to order an unsuccessful party to pay the successful party's costs though jurisdiction to make such an order does exist under a number of statutes and juries are said to take legal fees into account when awarding damages. But in England the loser pays and we are unlikely to change that rule anytime soon because it works to the advantage of the state and other big and powerful interests. I think the rule is very unfair but then that may be because I advise a lot of little chaps from places like Oswaldtwistle and Heckmondwike who as often as not have borrowed up to the hilt and mortgaged their grannies to float their software houses, design studios or other businesses.

Anyway, when you have a rule that the loser always pays the winner's costs you need another rule that prevents persons of straw such as companies with an authorized share capital of £100 from suing Microsoft or Tony Blair with impunity. That rule is contained in CPR 25.13 (1):

"The court may make an order for security for costs under rule 25.12 if –
(a) it is satisfied, having regard to all the circumstances of the case, that it is just to make such an order; and
(b) (i) one or more of the conditions in paragraph (2) applies, or
(ii) an enactment permits the court to require security for costs."
The conditions set out in CPR 25.13 (2) are:

"(a) the claimant is –
(i) resident out of the jurisdiction; but
(ii) not resident in a Brussels Contracting State, a Lugano Contracting State or a Regulation State, as defined in section 1 (3) of the Civil Jurisdiction and Judgments Act 1982;

(c) the claimant is a company or other body (whether incorporated inside or outside Great Britain) and there is reason to believe that it will be unable to pay the defendant’s costs if ordered to do so;
(d) the claimant has changed his address since the claim was commenced with a view to evading the consequences of the litigation;
(e) the claimant failed to give his address in the claim form, or gave an incorrect address in that form;
(f) the claimant is acting as a nominal claimant, other than as a representative claimant under Part 19, and there is reason to believe that he will be unable to pay the defendant’s costs if ordered to do so;
(g) the claimant has taken steps in relation to his assets that would make it difficult to enforce an order for costs against him."

Paragraph 2 (c) is derived from s.726 (1) of the Companies Act 1985 which used to apply to English and Welsh companies. S.726 (2) made similar provision for Scotland though as Scots have "expenses" rather than costs pursuers have to lodge "caution" which while it looks like the English word actually sounds like Cajun.

It will be obvious that this rule affords a fair measure of discretion to the court and a very good example of the way in which such discretion is exercised is the decision of His Honour Judge Coulson in Hart Investments Ltd v Larchpark Ltd. and another [2007] EWHC 291 (TCC) (9 Feb 2007). This was an application for security for the claimant's costs of a counterclaim. The claim was for damages arising from the collapse of a building allegedly caused by the defendant's act or default while the counterclaim was for the consideration for erecting the structure.

The judge considered the authorities and, in particular, Sir Lindsay Parkinson & Co. v. Triplan [1973] QB 609 which provides the following checklist::

(a) Has the claim or counterclaim a reasonably good prospect of success?
(b) Is the application for security being used oppressively so as to stifle a genuine claim?
(c) Has the claimant's want of means been brought about by the conduct of the defendant, such as delay in payment or in doing their part of any work?
(d) Has the application for security been made at a late stage of the proceedings?

Applying those guidelines, the judge decided it was not unreasonable to award security and set it at £25,000.

21 February 2007

Confidential Information and Restraint of Trade: Thomas v Farr Plc - Ocular Sciences to join Series 5?

Nearly 10 years ago I wrote a case note on Ocular Sciences v Aspect Vision Care [1997] RPC 289 entitled "Have Faccenda's Chickens had their Chips?" I chose that title because the CA had appeared to draw a distinction in Faccenda Chickens v Fowler [1984] ICR 589 between "trade secrets" the disclosure or use of which could be restrained without a restrictive covenant and other confidential information that could not. Drawing the line between the two was never very satisfactory and in Ocular Sciences Sir Hugh seemed to offer a better test.

He started from the premises that an employee is entitled to deploy his skill and expertise for any employer though an employer may restrain unauthorized use or disclosure of his confidential information like anyone else. He acknowledged that it is public policy that an employee should use and put at the disposal of new employers all his acquired skill and knowledge no matter where he acquired it or whether it was secret at the time. Where the employer's right to restrain misuse of his confidential information collides with the public policy it is the latter that prevails.

Mr Justice Laddie also rejected the notion that there exists any class of information that is so trivial or commonplace that an employee is free to disclose to anyone including a competitor. Such disclosure would breach an employee's implied duty of fidelity as postulated in Hivac Ltd. v Park Royal Scientific Instruments Ltd. [1949] Ch 169. The judge stressed that this duty of fidelity was quite distinct and separate from the duty of confidence. He warned of the danger of confusing the two concepts:
"….. there is a risk of slipping into thinking that what an employee can be restrained from using while in employment is likely to be secret when, in truth, that restraint has little to do with secrecy but a lot to do with the employee's obligation to act in the interests of his employer. Once one slips into thinking that because a piece of information cannot be disclosed to a competitor, therefore it is secret, it is but a little step to assuming that it is secret for the purposes of the law of confidence."

This judgment was so clear and elegant that it appeared inconceivable that courts would continue to apply the Faccenda analysis. Yet that is precisely what seems to have happened in Thomas v Farr Plc and another [2007] EWCA Civ 118 yesterday.

This case was about the enforceability of a restrictive covenant of a managing director of a firm of insurance brokers, prohibiting him from competing with his employer for 12 months after the termination of his employment. At first instance the judge reviewed the authorities, including Faccenda, and considered whether the information to which the claimant had access could be regarded as inherently confidential. He concluded that it was and that conclusion was one of the grounds of appeal.

The judge's approach was approved by the Court of Appeal. Lord Justice Toulson remarked that he had set out the relevant law with clarity and accuracy.

20 February 2007

400th Post: US SAFE Port Act

Not for the first time I am indebted to my distinguished colleague Toni Tease of Billings, Montana for providing material for a post. Toni publishes an excellent monthly newsletter on IP called Intellections. This month's issue discusses The Security and Accountability For Every Port Act (SAFE Port Act). Interestingly her article is entitled "Montana's Senator Baucus Supports Allocating Resources for Increased Intellectual Property Protection." Nice to have a local politician interested in IP. I get the impression that my MP couldn't care less, I can't even get Auntie Kali to answer an invitation to address the Huddersfield Inventors Club.

Getting back to the point, SAFE provides US Customs with sufficient resources to protect IPR at the borders. Toni's Senator would have gone even further by establishing an Intellectual Property Rights Enforcement Division within the customs service. That division would have collaborated with overseas governments in tracking and impounding pirate and counterfeit goods, funded extra legal staff and required the US government to ensure that foreign government enforced IP protection properly within their territories. As Toni says, SAFE is a step in the right direction but ......

This article marks my 400th post. I seem to mark milestones with articles on IPR enforcement. The very first one was on the Commission's brilliant plan to criminalize patent infirngement - hopefully kicked into touch by the European Parliament. Actually, come to think of it, there is at least one local politician with an interest in IP. One of our Yorkshire MEPs, Diana Wallis, was a commercial solicitor before she left our shores. She attended the first meeting of IPCEX and featured it on her website. Kali Mountford may not be much cop when it comes to promoting innovation and creativity but Diana Wallis is mustard.

IP Clinics: Huddersfield and Bradford 15 Feb 2007

We had a really good day in Huddersfield and Bradford last Thursday. Particularly in Huddersfield. All the inventors we saw there were young. Two were from the University. We obviously can't identify those ideas or inventions were but they ranged from household gadgets to some very wizzy electronics. Can't be much wrong with a country that generates all that, I thought, despite all the disincentives to innovation our political masters have imposed over the last 9 years and 10 months.

IP clinics take place in Huddersfield and Bradford on the third Thursday of every February, April, June and October. They consist of a patent librarian to do the searches, a patent agent, a business advisor and me. I am also available in Bradford every third Thursday between 15:00 and 17:00 and Huddersfield every last Friday between 11:00 and 13:00.

If you want to book an appointment call Jacquie Asquith in Huddersfield on +44 (01484) 483080 and Shabana Kauser in Bradford on +44 (01274) 841300.

19 February 2007

Patents: The Macrossan Aftermath

Not long after the Court of Appeal's decision in Aerotel Ltd. v Telco Holdings Ltd and Others (Macrossan) [2005] EWCA Civ 1371 (27 Oct 2006) the Patent Office published a practice notice on patentable subject matter which replaced a whole series of previous notices on the topic going back to 1999 and modified others on games and business method patents.

Paragraph 5 of that notice propounded the 4 step test that the the Court had approved in Macrossan: (1) properly construe the claim, (2) identify the actual contribution, (3) ask whether it falls solely within the excluded subject matter and (4) check whether the actual or alleged contribution is actually technical in nature.

Since the Court of Appeal's decision and subsequent practice notice there has been a wealth of excluded matter hearings in the Patent Office in which that test has been applied:
11 Dec 2006 John Lahiri Khan
11 Dec 2006 Rockwell Firstpoint Contact
29 Dec 2006 Nintendo
8 Jan 2007 Consolidated Global Fun Unlimited, LLC
10 Jan 2007 Sony UK Ltd.
12 Jan 2007 New Constructs LLC
19 Jan 2007 Fisher-Rosemount Systems, Inc
24 Jan 2007 Nextpage Inc
29 Jan 2007 Toshiba KK
2 Feb 2007 Canon KK
2 Feb 2007 Peter Williams
12 Feb 2007 Canon KK
14 Feb 2007 Fisher Rosemount Systems Inc.
In all but two of those cases the application failed the 4-point test. In Consolidated Global Fun the hearing officer made no finding on the test but the application failed on other grounds. In Sony the application failed the test but some of the claims related to communications equipment and this got home on other grounds.

The net result is supposed to be much the same as in Europe and indeed it is not supposed to change the law here but I'm not sure that is so. Are you?

18 February 2007

China: Happy New Year - see you in Chongqing

The reason everything is in red and gold is that today is the Chinese New Year and those are the colours for celebration. I should like to wish all my readers - especially those from China - a very happy New Year.

As I have mentioned several times my chambers are very interested in China and we have recently published our Mandarin brochure. That brochure was put together by Wei Huang who represents us in that increasingly important market.

Wei and her husband Ron Jones have put together a really good workshop on Chinese IP law in Chongqing in south west China between 10 and 18 Nov 2007. The Workshop will take place at the Chongqing Marriott Hotel and speakers include academics from Southwestern University Law School, local IP professionals and a judge of the local patents court. The event is hosted by the Chongqing Municipal Intellectual Property Bureau.

The workshop is intended to give UK and European patent agents and lawyers a deeper understanding of how to collaborate with Chinese professionals on establishing and enforcing IPR in China. Although comparisons will be made primarily with European law it should still be useful for professionals of other jurisdictions, particularly those in Sub-Saharan Africa and Latin America which are developing more and more business with China.

How much? I hear you say. The cost of the course will be £1700 +VAT which will include a total of 30 hours of “classroom” tuition, all lunches and coffee, bed and breakfast accommodation at the Marriott, transport from and to the Airport, two formal evening banquets, plus a visit to the old Town for a Chongqing Hot Pot followed by Theatre afterwards and a Boat Trip and meal on the Yangtze. Ron and Wei are applying for CPD points for the Bar, Law Society, CIPA and ITMA.

Further information can be obtained from Wei on +44 017684 86810 or email info@vtzinternational.com.

17 February 2007

Liverpool Inventors' Club: News

Jeremy Phillips in Liverpool, 6 Feb 2007

The photograph above was taken just before Jeremy's talk on Five Live Issues in Intellectual Property Law to IPCEX and the Liverpool Inventors' Club on 6 Feb 2007. Jeremy needs no introduction. The lady to my right is Ruth Grodner, Patent Librarian of Liverpool Central Library who runs the Liverpool Inventors' Club and the man to the left of Jeremy is Michael Sandys of Kirwans, the solicitors who hosted the event.

Dates for your Diary.

Kirwans' marketing manager has very kindly found some more speakers. The provisional programme is as follows:

26 Feb John Lambert “Crane, Paper, Scissors, Stone” (Planning for IPR enforcement)

26 Mar Eden Bio-Design CEO, Dr Crawford Brown [either March or May TBC]

30 Apr Andrew Moss DSG Accountants Financial monitoring and research and development

21 May Eden Bio-Design CEO, Dr Crawford Brown [either March or May TBC]

25 Jun – Michael Sandys and Michelle Stewart or Catherine Lo [topic to be announced]

All talks will take place at 17:00 in The Hornby Room, Liverpool Central Library, William Brown Street, Liverpool, L3 8EW unless Ruth Grodner tells you otherwise.

For further details call Ruth on +44 (0151) 233 5834 or email her at ruth.grodner@liverpool.gov.uk.

16 February 2007

Reciprocal Protection: New Statutory Instruments

Three new Orders in Council were made on 14 Feb 2007 adding to the list of countries for whose citizens and residents copyright and performers' right protection is extended and updating the list of "convention countries" for the purposes of the Patents Act 1977 and Registered Designs Act 1949.

The Copyright and Performances (Application to Other Countries) Order 2007(SI 2007 No 273) revokes The Copyright and Performances (Application to Other Countries) Order 2006 with effect from 6 Apr 2007. The only material difference between this order and the previous one appears to be that copyright protection now extends to nationals and residents of Samoa which is very interesting given that the Supreme Court of Western Samoa held that there was no such thing as copyright in that country in Fauolo v Gray [1997] WSSC 1; CP 364 1995 as recently as 5 Aug 1997 (see also my case note on that decision which I published nearly 9 years ago). Clearly the Samoan legislature acted promptly on the recommendation of the Chief Justice for a very modern Copyright Act was enacted a year later.

The Patents (Convention Countries) Order 2009 (SI 2007 No 276) and The Designs (Convention Countries) Order 2007 (SI 2007 No 277) revoke the Patents (Convention Countries) Order 2006 and he Designs (Convention Countries) Order 2006 respectively. However, the only material changes appear to be that Yemen is added to the list and that Serbia and Montenegro are now recognized as separate countries.

Patents: US Filing Data

Dennis Crouch has published an excellent article on American patent applications data in Patently-O. Dennis has analysed 10,000 of the most recent patents "to see what's going on with pendency and other issues." He found the average time from filing to grant in the case of applications that were not based on a previous US filing to have been 3 years and 4 months and the average time from filing to grant in the case of applications based on a prior US filing to have been 2 years and 11 months. Applications based on foreign filings seemed to take the same amount of time regardless whether they were based on a previous filing or not.

It is interesting to compare the US Patent and Trademark Office's performance with that of our own. Some comparable data is available from "Facts and Figures 2004-2005" and some performance data can be checked from the Patent Office's Annual Report and Accounts for 2005 and 2006. Judging by the table on page 58 of the Annual Report which indicates that 93% of patents were granted within 2 1/2 years of request our boys and girls don't do too badly. Of course, they don't handle anything like the volume of the USPTO. I haven't checked the EPO's stats yet but I am not sure that I shall anything like as gratified when I do.

Anyway returning to Dennis Crouch, it is an excellent article in a first rate blog. Professional commitments and other matters have kept me from reading other peoples' blogs as well as writing my own over the last few months but Patently-O was one that I always read. If you are pressed for time, gentle readers, that is the very last one to miss.

15 February 2007

Patents: Novartis Litigation in India

A report by Tove Iren S. Gerhardsen in today's Intellectual Property Watch on Novartis's challenge to Indian patent legislation on the ground that it doers not comply with TRIPs is reminiscent of the challenge by the Pharmaceutical Manufacturers Association of South Africa to South Africa's compulsory licensing laws. That challenge was abandoned at the door of the court as a result of co-ordinated political pressure around the world and there are signs of similar pressure building up on Novartis.

Significantly, much of that pressure is coming from South Africa. A press release of the Ecumenical Advocacy Alliance quotes Archbishop Desmond Tutu: ""People, not profits, must be at the centre of patent law for medicines." Although the case revolves around a cancer drug it does have a bearing on aids in that countries in Sub-Saharan Africa with no pharmaceutical industry of their own rely on imports of generic drugs from India and that these would be at risk were the Novartis challenge to succeed.

14 February 2007

Arbitration: Sumukan Ltd v Commonwealth Secretariat

This was a website dispute but somewhat bigger than the sort of dispute that I find myself instructed to resolve. The client was the government of Namibia and the consultant was commissioned by the Commonwealth Secretariat to develop was an online group purchasing scheme to help manufacturers in sourcing the materials they needed. Because the Commonwealth Secretariat was an intergovernmental agency immune from suit the contract provided for disputes to be determined by arbitration before the Commonwealth Secretariat Arbitral Tribunal.

In April 2003 the consultant brought proceedings against the Secretariat before the tribunal which included the issue of who owned the website. After a 3 day hearing the tribunal decided that the site belonged to the Secretariat. The consultant appealed and after one application on the substantive law failed on the ground that the court's jurisdiction was excluded by the tribunal's constitution, it applied to set aside the award on grounds of lack of substantive jurisdiction and serious irregularity. The jurisdiciton issue turned on the appointment of the tribunal chairman and the irregularity issue on the fact that the Secretariat who was party to the dispute appointed its chair.

Giving judgment in Sumukan Ltd v Commonwealth Secretariat [2007] EWHC 188 (Comm) (14 Feb 2007) Lord Justice Toulson dismissed the application on the ground that there was no real irregularity or risk of bias.

13 February 2007

Introducing Toni Wilson

Hi! I thought I should introduce myself. Clients of nipc already know me. I manage chambers. Other chambers have clerks. We have a chambers manager and I am she. I'm the one who sends out horrible fee notes and appalling "A" and "B" Letters when you haven't squeezed quite enough interest out of your premium clients' accounts. Unlike one or two of the more traditional clerks clerks, I don't have a cockney accent, I don't go drinking in the Cock, Dev or Witness Box, I am nearly always at the end of the phone between 12 and 3 pm and above all I am legally qualified so I know what a piece of work is really worth and don't agree silly fees.

So what am I going to write about? Well, although I shall be keeping an eye on such sites as BAILII, DeCaff, OPSI and the Patent Office (while it still exists) and possibly even mentioning the odd new case or piece of legislation if there is nobody else to do it, I shall be concentrating more on the practical side of legal practice. For instance, I shall be following the passage of the Legal Services Bill and considering some of the threats and opportunities that this legislation presents. I shall be talking about the way that the legal profession in general and the Bar in particular is developing in this little corner of England. I shall also be publicizing some of the activities of chambers - the odd talk here and there, new publications, news of chambers members and some of the funny things that happen in the law in the course of the day. By funny I mean funny ha-ha and funny peculiar.

Why haven't I got a picture or detailed profile up? Well why should I? I might get round to it. But then again I might not."

Huddersfield Intellectual Property Clinic: 15 Feb 2006 Change of Venue

First the good news. The Huddersfield Business Generator IP clinic between 11:00 and 13:00 on Thursday, 15 Feb 2007 will take place at the super, duper Brunswick Building on the University Campus off Queensway and NOT in my dungeon in the Media Centre. Parking is available at the Kingsgate multistorey across the road which is very convenient if you want to spend your anticipated royalties as you will be hard pressed to find a better shopping centre between Leeds and Manchester.

Now for the even better news! The business advisor will be none other than business mentor superstar and promising educational film mogul Mr John Edmonds. John has a brilliant business career across two continents and today is his birthday. Happy Birthday John! John's latest project is "TimeTrappers" an educational video company and you can find some of his work on Dabble, YouTube and goodness knows where else. John is actually making a video for me on IP with an all star cast of Yorkshire movers and shakers . And you get a meeting with him and all the other patent pros absolutely free.

To book your place call Jacquie Asquith, Operations Manager or Susan Donaghy who has masterminded this change of venue on +44 (0) 1484 483080, fax: +44(0) 1484 483081 or mailto:j.asquith@huddersfieldbg.co.uk

Manchester Patent Library: Patent Search and Market Research Workshops

If I had a pound for every time a client tells me that he has a world shattering invention "which will solve the energy crisis and assure world peace" I would not need to practise law. When I or someone else asks whether he has done a search the usual reply is "Oh, I never thought of that. How do you do that lad?"

Well now the wonderful Chris Brown of Manchester Patent Library will show all you budding Dysons and Baylises how. She offers two free workshops - one on patent searching and the other on market research and business information. And it won't cost you a bean. If this opportunity were in Yorkshire or indeed Scotland there would be a queue a mile long by now.

For more info call Chris Brown, Information Officer Intellectual Property Libraries and Theatres department, Manchester PATLIB Central Library, St. Peter's Square, Manchester M2 5PD Tel/ Fax: 0161 234 1397 E-mail: C.Brown1@manchester.gov.uk.

Patents: US House of Representatives votes for Specialist Judges Pilot Scheme

According to IP Search 360 the lower house of the US federal legislature has approved a bill which would appear to provide a pilot scheme for the allocation of patent cases in the federal District Courts to specialist patent judges (HR 34).

The USA is divided into a number of districts each of which covers a state or part of a state which hears cases that fall within the federal as opposed to the state jurisdiction. The judges of those courts are known as "district judges" but their jurisdiction and prestige are closer to the jurisdiction and prestige of a High Court judge in England. Appeal lies to Circuit or regional appeal courts whose judges are known as "circuit judges" even though they are comparable to Lord Justices of our Court of Appeal.

Many patent cases are already heard by the US Court of Federal Claims (a court with jurisdiction over claims against the federal government which includes the US Patent and Trademark Office) and appeal lies to a special appeal court known as US Court of Appeals for the Federal Circuit. To that extent there is already a specialist, federal patent judiciary in the USA at first instance.

The Court of Federal Claims would not hear infringement actions which at present could come before any judge. The inconvenience of a case involving complex technical issues and the construction of a specification coming before a judge whose experience has been in a completely different area of practice is obvious, especially if a jury is empanelled. The draft legislation appears to create a court of specialist judges not unlike our assigned judges who would hear claims between patentees and possibly other IPR owners and third parties. In other words, they will be just like our assigned judges. It will be interesting to see how it works in practice.

Patents: Macrossan v Controller-General of Patents, Designs and Trade Marks

The House of Lords has refused permission to appeal from the Court of Appeal's decision in Macrossan which was heard with Aerotel Ltd. v Telco Holdings Ltd and Others [2006] EWCA Civ 1371 on 27 Oct 2006. Mr Simon Hart, a Queensland solicitor who has already contributed to this blog on this litigation, has drawn my attention to a new website at http://www.ukcorporator.co.uk/patentappeal.php that contains all the transcripts from the hearing officer upwards as well as some interesting commentary. I will be returning to this topic when time allows.

12 February 2007

Internet: So now we know why it was playng up last week

I am indebted to Baker & McKenzie's Premium Global E-Law Alert notification for the news that at least 5 of 13 root servers upon which the the internet depends suffered a distributed denial of service attack early on Tuesday morning. A RIPE press release congratulated itself that the attack "passed largely unnoticed by the average computer user". Not unnoticed by my wife, I am afraid, but then she is far from your average computer user.

For those who are interested in that sort of thing, "root name servers" help to translate mnemonic addresses to numerical codes. If you really want to know more there is a guide written specially for law graduates.

IPCEX and Liverpool Inventors Club: Jeremy Phillips's Slides Available for Download

I have uploaded Jeremy Phillips's presentation "Five Live Issues in Intellectual Property Law" on to the IPCEX and Liverpool Inventors' Club websites.

I have also announced the next meeting of the Liverpool Inventors Club which will be a talk by me on how to plan for IPR enforcement. It is entitled "Crane, Paper, Scissors, Stone". That will take place at the Central Library in William George Street at 17:00 on 26 Feb 2007.

I have also given advance notice of the next IPCEX meeting which will be on protecting IPR in India on 18 Sep 2007. It will be very similar to the very successful seminar on protecting IPR in China last year. So far we have one good speaker, Ms Mallika Nair of Kirwans. Mallika learned her law in India and is well placed to advise UK firms that wish to invest in or sell to India.

11 February 2007

We're now in Bradford as well as Huddersfield

nipc(R) can now hold conferences and accept instructions at Velocity Bradford as well as the Huddersfield Media Centre. The full postal address is
Velocity Business & Innovation Centre
Angel Way
D7 1BX
If you need a map, click here. Continue to call us on our telephone +44 (0)870 990 5081 fax on +44 (0)870 880 5082.

Leeds Inventors Club: Nic Morton 21 Feb 2007

Funding Explained

Nic Morton, who has recently taken over as manager of West Yorkshire Ventures from Anne Salisbury, will address the Leeds Inventors Club on Wed, 21 Feb 2007 at Leeds Central Library at 18:00. Admission is free but call Ged or Stef on 0113 247 8266 or email piu@leeds.gov.uk to make sure of your place. West Yorkshire Ventures supports new business ideas in West Yorkshire which have the potential to grow rapidly into sustainable high-growth businesses.
Also, I shall give the talk "Crane, Scissors, Paper, Stone" that I gave to the Leeds Inventors Club last month to the Liverpool Inventors Club at 17:00 on 26 Feb 2007 at Liverpool Central Library. Call Ruth Grodner on 0151 233 5834 to book your place.

Patents: US Supreme Court permits Licensees to challenge Licensors' Patents

Although the doctrine has been queried recently on the ground of incompatibility with EC and national competition law, it has been settled since Crossley v Dixon 10 HLC 293 that a licensee cannot impeach the title of his of her licensor. That rule has been swept away in the USA by the US Supreme Court's judgment in Medimmune Inc v Genetech Inc. (9 Jan 2007). Toni Tease of Billings, Montana, who runs a very similar practice to ours and is tantamount to a fifth member of chambers, has written a very interesting case note on that decision in her monthly newsletter "Intellections".

10 February 2007

Patent Clinics: Huddersfield and Bradford 15 Feb 2007

nipc will be holding patent clinics at

on Thursday 15 Feb 2007 in conjunction with Huddersfield Business Generator and Bmedia. Attending the clinic will be Vivian Irish of Branded!, Stef Stephenson of Leeds Patent Library, Jane Hurn of Business Link West Yorkshire in Bradford and one of the HBG mentors in Huddersfield and yours truly.

The sessions are free and since patent agents and the other professionals usually charge a shed load of money for their advice, these services are quite a bargain. However you must book.

For Huddersfield call the delightful Jacquie Asquith on: +44 (0) 1484 483080 or +44 (0)870 990 5000 and ask for the Business Generator or email her on j.asquith@huddersfieldbg.co.uk. For Bradford call the charming Amanda Lennon on +44 (0) 870 1222601 Email: info@velocitybradford.com.

If you get to Bradford you may want to stay for the Third Thursday talk at Bmedi@ which is worth attending just for the pizza. Call Steve Ding on +44 (0)1274 841362 or email steve@bmedia.org.uk for further details.

Copyright and Confidential Information: Cembrit Blunn Ltd v Apex Roofing Services LLP

This case began life as a copyright and breach of confidence claim but it was clearly overshadowed by the question whether the complainant's roof slates were of satisfactory quality. Nearly all the facts and much of the legal analysis of this very long judgment was on the sale of goods issue.

The letter that was the subject of the copyright claim was an internal letter written by the executive vice-president of her second claimant to the managing director and sales and marketing director of the first claimant about possible settlement of a claim which had been threatened by the defendant against the first claimant in relation to some slates that had been installed. The letter had come into the hands of the defendant company which circulated it. The claimants sought injunctions to restrain publication and orders to reveal the source of the disclosure. The defendant counterclaimed for breach of contract alleging that the claimant's slates were not of satisfactory quality.

Giving judgment in Cembrit Blunn Ltd and another v Apex Roofing Services LLP and another [2007] EWHC 111 (Ch) (5 Feb 2007) Mr Justice Kitchin concluded that copyright subsisted in the letter, that such copyright belonged to the second claimant and that it had been infringed. He also held that the defendants were bound by a duty of confidence not to make use of that letter and that they had breached that duty. However, as he also found that the claimant's roof times were not of satisfactory quality it was by no means clear what relief could be granted.

This case is a good reminder that intellectual property cases do not always come neatly packaged and labelled as such outside law school. They often involve other issues such as contract, insolvency or company law. That's where solicitors and barristers sometimes have an advantage over patent and trade mark agents as litigators and advocates. It is also quite a good analysis of an important issue in the the law of sale which crops up in our line of work just as much as in other areas. Indeed, computer supply cases usually turn on that issue. So it is a case worth reading chums.

Technology Policy: Royal Society Debate 15 Jan 2007

A report of a debate that I wish I could have attended has just appeared on the BCS website. It is headed "What are the right things to do to sustain UK competitiveness in 2025?" It ties in well with a couple of recent articles on this blog - namely the UK's depressing performance in patenting and provincialism.

The debate took place at the Royal Society on the 15 Jan 2007 and appears to have centred quite rightly around the premise that "competitive advantage is increasingly enabled by IT and the use of intellectual assets." The report states that John Leighfield of Research Machines and David Butler focused on "How can we build on the existing driving forces to achieve sustainable IT enabled competitiveness in the UK economy?" and "What must policy makers, industry leaders and the professions do to address the restraining forces?" It seems to have been a very metropolitan debate. Mr Leighfield is described the City of London as a "shining example of a British industry leading the world" with "business people from many other countries come to the square mile to learn from the way it works". Elsewhere the City was described as a "cluster of excellence" and "one of the best things that the UK has". Others urged that we should concentrate on what we are good at which was said to be "banking, the arts, media and culture."

Even though this was supposed to be a debate about technology hardly a word appears to have been said about Britain's decline in the invention or invention stakes. That is important because patenting is not cheap and the investing in legal protection for a new product or process proclaims to the world that someone believes that invention is worth something.

Now I don't want to knock the City, the West End nor even Docklands or wherever the media has dispersed to, but a modern economy needs more than culture, media and financial services to thrive. I rejoice that our country has all sorts of wonderful institutions such as Covent Garden, Harrods, the Royal Courts of Justice, Wimbledon and all those markets in the City, but none of those those things subsists in a bubble. They developed to serve a market that derived wealth from making things, digging coal, laying down railways et cetera in such places as Lancashire, Clydeside, Tyneside, the Black Country and the West Riding. Much of that base has been eroded and unless we do something about restoring that base the cultural, media and financial services superstructure will lose their sustenance. As my old head of chambers used to put it we can't all live by taking in each other's washing.

One of the reasons why it is so difficult to rebuild our industrial base is the fact that so much that is good and civilized is to be found only in London. It need not be like that. Berlin is one of the most pleasant capitals of Europe with its excellent underground, miles of green belt and some of the best museums in Europe but it does not dominate Germany as London dominates Britain sucking up resources from everywhere else. Munich, Hamburg, Frankfurt and Stuttgart are also major cities with all the things that make life pleasant and they brim with self-confidence. I could have said the same about many other countries - Spain, Italy, Australia and the USA to name just a few. We need to be more like them if we are to hold our own in the world. Great cities like my birthplace Manchester, Liverpool, Leeds, Sheffield, Newcastle, Bristol, Birmingham and Glasgow must be more like Milan, Munich and Sydney.

09 February 2007

Patents: BlackBerry Appeal Dismissed

One of Alex Weston's slides in her presentation to Venturefest listed BlackBerry and Viagra as things that had been patented. "But haven't some of those patents been revoked?" I blurted out very rudely. "Yes" she agreed and carried on with her presentation. But the very day that Alex gave her talk the Court of Appeal gave judgment in Research In Motion UK Ltd v Inpro Licensing SARL [2007] EWCA Civ 51 (7 Feb 2007).

As Lord Justice Jacob remarked at paragraph [3], it was not suggested that any important or even novel issue of law was raised by the appeal. The appeal was on obviousness and the law was set out clearly enough by the House of Lords in Biogen v Medeva [1997] RPC 1. The submission was that Mr Justice Pumfrey had misapplied or failed to apply settled principles at first instance. After considering all the prior art relied upon, the Court concluded that he had.

The only other point to note is procedural. Mr Justice Pumfrey had expressed the view that Mr Justice Laddie's order for the case to be decided by the streamlined procedure had been inppropriate. He also disagreed with Mr Laddie 's suggestion that whenever one side proposed such a procedure, the onus lay on the other to raise a convincing objection to its use. The Court agreed with Mr Justice Pumfrey:
"The decision to use that procedure must depend on all the circumstances of the case, which in particular includes its commercial importance, degree of complexity, the commercial and financial position of the parties and so on. In essence the decision is one of proportionality. By saying this, it should not be thought that I regard the streamlined procedure as one to be used rarely. On the contrary there will be – or should be – plenty of smaller cases where it will be the best way forward. And parties should always consider (and discuss) whether it would be sensible to use it whatever the size of the case."

All very well, perhaps, when all the parties have plenty of dosh but part of the overriding objective is to put the parties on an even footing and to deal with a case in ways that are proportionate to the financial position of each party.

Patent Applications - Britain slips further down the League

In Press Release PR/476/200 the WIPO has reported a record year for patent filings: a 6.4% growth over the figure for 2005. Many countries did much better than that - China's growth was 56.8%, Korea's 26.6% and Italy's 16.1%. The USA was average with 6.1%. And the UK with such a "strong economy" as Tony Blair MP reminded us in Parliament yet again the day the figures were published. Well, um, er a 0.8% decline actually.

Britain now stands 6th in the PCT table with 5,045 applications - well behind the USA (49.555), Japan (26.906), Germany (16,929), Korea (5,935) and France (5,902). Not a single British company is in the top 50 PCT applicants. There is a Chinese company in the top 50 - Huawei with 575 applications - not to mention several Koreans, French, Scandinavians and a whole slew of Germans, Japanese and Americans. And we have an economy - some would have us believe - that is strong enough to quit the EU.

The government can't be happy with that performance otherwise the Treasury would never have commissioned Gowers. But what has Gowers actually recommended? Changing the name of the Patent Office to UK Intellectual Property Office is one. Raising public awareness of IP is another. As the late Tony Hancock might have put it "Stone the Crows".

08 February 2007

Venturefest Yorkshire 2007

Venturefest Yorkshire at York race course is an annual festival of Yorkshire business, Yorkshire education and general Yorkshire worthiness. There are exhibitions, talks, competitions and all sorts of opportunities for networking. Exhibitors include schools, colleges and individuals with bright ideas as well as businesses and professional services firms. A flavour of what goes on can be gained from the videos on the Venturefest website. I know of nothing quite like it elsewhere in the North. BEX (Business Enterprise Exchange) in Manchester has the same sort of idea but nothing like the same dort of buzz.

This year's event seemed to be as big as ever. Bigger, in fact, judging by the traffic that clogged the roads leading to the race course from the A64 to the extent that I missed the breakfast meeting for which I had paid £11.75. That, together with a slow moving, mile long queue snaking round the canteen put me in a vile mood until I met the delightful Amanda Lennon of Velocity Bradford, who could be relied upon to cheer up even Eeyore. I describe Amanda as my landlady because we now have an annexe at Velocity Bradford. We were joined at our table by the equally delightful Jacquie Asquith of Huddersfield Business Generator who are our new neighbours in the Media Centre. After meeting those ladies and consuming a cappuccino I felt a bit more sociable.

The seminars like the civil courts post Woolf were divided into three tracks:
  • The "Investment Track"
  • The "Everything the Entrepreneur Needs" Track, and
  • "Global Opportunities and Technological Innovations"

Those tracks were colour coded in the programme and on various notices around the building. Unfortunately, the rooms in which the talks took place were very difficult to find because the building has two sets of floors on different levels which do not always communicate with each other. There were some directions signs here and there, but these were about as easy to follow as the Paris underground map.

The first seminar was Rob Anderson of the SI Group on "Peak Performance". That looked promising and I met a couple of old mates waiting for it to come on. One of these was IP lawyer James Love, formerly of Pinsents and Eversheds, who has now set up on his own in Harrogate. It was good to see him again and I wish him every success with his new practice. I also met John Whiteley of Henry & Hurst Holdings Ltd. (one of local movers and shakers of our little valley) and design consultant, David Kimberley of Synapse Design in Elvington. The early promise of Mr Anderson's talk was quickly dispelled when he asked the audience to stand up with their feet 18" apart, hold out their hands, and bring them together in a clap. That was my signal to exit. Someone rather more blunt in his speech than me described the exercise as "making bloody monkeys of the audience."

For the next hour or so I wandered round the stands looking out for folk I knew. There were quite a few, Nic Morton of West Yorkshire Ventures, Ged Doonan of Leeds Patent Library on the Patent Office stand (but no sign of the great Miles Rees even though he was listed in the catalogue as the contact), Barbara Greaves and Charlotte Atkinson of YABA, Peter Wilson of Novograaf, Carin Burchell of Branded!, Steve Waud of BEF and Richard Hall of PD-m International. It was also nice to see some of the members of the Leeds and Sheffield Inventors Clubs doing the rounds - one actually with his own stand upon which he had displayed his invention which appeared to be a massive yellow hub cap.

Feeling guilty about missing Peak Performance I decided to return to the seminar programme and try one of the events that SI had sponsored. That turned out to "How to sell your idea’ by Lillian Ayala of Fusebox. Lilian is a North American lady who also liked to encourage audience participation. One exercise had a man feeding ball bearings through the top of a funnel racing against a lady coaxing ball bearings through the narrow end of a similar funnel. Guess who won. Harder to guess was the point of the exercise - but I did come in the middle of the talk so I may have missed something. Her next exercise was to divide the audience into Trinis and Susannahs and then pick two hapless members of the audience and get them to describe their businesses. One man was selling a computer security product. The other had something that well might have been a whole lot more useful but was certainly a hell of a lot more difficult to describe. She then asked us to pick who had come over better. "Thank Heavens she didn't pick me" I mused. "How on earth could I describe what I do."

Next up was Intellectual Property chaired by Anne Salisbury, formerly of West Yorkshire Ventures but now a business development consultant with acceleris. Alex Weston of Denison Till guided us through all the intricacies of patents and trade marks stepping seamlessly from the PCT to Madrid and back again. She was followed by Jim Rowland of Xiros Plc which appears to have been a veritable Maecenas to patent agents. When the time came for questions I asked Jim why there were not more businessmen like him in this country. A question that he sidestepped deftly by explaining that he was more of a technical person than a businessman.

The last talk I attended was "Technological Innovations update facilitated by Science City York". To be accurate I attended the questions rather than the talk. One of the presentations had been about an artificial nose. With Sieckmann in mind, I asked the speaker whether his machine could print out a graphical representation of the smell of say Chanel No 5. The answer was that the machine would generate a considerable number of Excel spreadsheet pages but the readings would be different depending on temperature, atmospheric pressure and many other variables. However, the observation earned me a cup of tea and convivial chat with the inventor until it was time for the cocktail party and dinner.

That is always the high point of the evening because the winners of the festival's awards are announced. The award that interests me most is the "Engineering Inspirations" prize for Yorkshire schoolchildren. The winner this year was a 6th former at York College called John Hattam. Accepting his award, John described the four big Fs in his life: Family, Friends, Football and Faith. The last seemed to be particularly important to him and he spoke passionately about it emphasizing that there need be no conflict between technology and religion. There may be more of a conflict between his faith and football because he assured us that England was 1-0 up in the friendly against Spain when the result was in fact the other way round. My only criticism is that he did not actually say what he had done to win his prize - unlike Emily Cummins who won the award 2 years ago. I can remember exactly what Emily did even after the passage of time.

Dinner was followed by a speech by Amar Latif who won the Young Business Entrepreneur of the World and trekked across the Nicaraguan jungle and up an active volcano. Amar is Glaswegian. The Clyde is famous for its passionate oratory. Amar is a typical exponent of that art - as is Dr John Reid MP. His message seemed to be that nothing is achieved by aping others. Perhaps - but isn't it also true that we build on the work of others.

So that is how I spent yesterday. A good day was had by all, I'm sure. However, I have enjoyed previous years rather more . In the past many of the big Leeds law firms had stands. Langleys, Denison Till and Harrowell Shaftoe were there, but they are all from York. Neither of the two local firms that actually specialize in IP and technology law - that is to say Pemberton Reid and YorSolicitor - was there. As for patent agents, Murgitroyd and Novagraaf had stands but I recognized no patent agent from Leeds, Sheffield or even Halifax.

The first time I attended Venturefest Prof Robards celebrated the change of the name of the event from Venturefest York to Venturefest Yorkshire and looked forward to a further name change to Venturefest North. That has not yet happened and on present trends is not likely to happen. One of the curses of the North is that we don't think of ourselves as a region. When IPCEX holds events in Leeds we attract an audience from all over the country except Lancashire. When we hosted Jeremy Phillips in Liverpool folk travelled up from London and Worthing but not from Leeds. It is worth remembering that the red rose and white rose were picked in the Temple Gardens in London - a case of divide et impera by the metropolis, perhaps. Until we come together as a region we shall always be provincial with all that that entails.

07 February 2007


Jeremy Phillips's presentation to IPCEX and Liverpool Inventors Club this evening was excellent. The audience filled the magnificent board room of the Martin's Building, one of Herbert Rowse's masterpieces. It was a pretty good cross-section of Merseyside - lawyers, patent agents, inventors, festival directors - all sorts.

Removing his jacket, loosening his tie and taking off his shoes, Jeremy asked for a show of hands of lawyers, then a show of hands for business people, then a show of hands of creators of intellectual property. Save for one or two inventors everyone was quiet. Then we all put up our hands in spontaneous recognition that we are all intellectual property creators. Maybe not very valuable IP. But IP just the same.

The title of the talk was "Five Live Issues in Intellectual Property". These are 5 issues that currently interest Jeremy. They were "Comparative Advertising", "Enforcement", "Summary Judgment" (or throwing out the rubbish as Jeremy called it), "Action Replays" and "IP as Collateral". As I intend to upload copies of Jeremy's slides and notes for the website I shan't go into too much detail. All I will say is that he provoked a lot of thought by his some interesting slants. Some of these topics covered very wide areas. His discussion of O2 Ltd & Anr v. Hutchison 3G UK Ltd [2006] EWHC 534 (Ch) and Case C-228/03,The Gillette Company v. LA-Laboratories Ltd Oy [2005] EUECJ C-228/03 (17 March 2005) covered what we used to call "use in the trade mark sense" before Arsenal Football Club v Reed as much as comparative advertising but it was all good stuff.

As a bonus Jeremy listed some non-issues in IP. I can't remember all of them but they included software patents, olefactory trade marks, human rights/confidentiality interface and registered design/trade mark interface.

We had several good questions afterwards. Some were legal or technical but most came from the public. These raised more issues which we could have talked about all night. But there were a lot of people who wanted to meet Jeremy and Kirwans had laid on a spread. So I had to call a halt.

I am elated. This was the best IPCEX ever. Indeed it was the best IP event that I have ever attended in the North. Although Jeremy's presentation would have gone down well anywhere a special thank you should go to Kirwan's marketing manager, Marianne Tuck, who made the event special. Well done!

06 February 2007

Porridge for Patent Infringement: At least Someone has some Sense

The very first post of this blog protested against the revived proposal of the European Commission to impose criminal liability for "all intentional infringements of an intellectual property right on a commercial scale" including patent infringements. I have returned to this subject more than once over the 18 months or so that this blog has been on the internet.

There is no obligation to impose criminal liability for patent infringement under art 61 of TRIPs or indeed any other convention. The proposal has already been thrown out once. Our government doesn't want it. Neither do most of the member states. Industry doesn't want it. The profession (or at least my branch of it) doesn't want it. The courts don't want it. Indeed, when I discussed the proposal with the Great Man yesterday, not even Miles Rees of the Patent Office could think of anybody who was for it.

Hallelujah! Our Euro-parliamentarians seem to have shown some sense. In its draft report on
on the amended proposal for a directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights
the Legal Affairs Committee chose to define "intellectual property rights" for the purpose of this directive: as
"one or more of the following rights:
- copyright,
- rights related to copyright,
- sui generis right of a database maker,
- rights of the creator of the topographies of a semiconductor product,
- trademark rights,
- design rights,
- trade names, in so far as these are protected as exclusive property rights in the national law concerned,
- and in any event the rights, in so far as provision is made for them at Community level, in respect of goods within the meaning of Article 2(1)(a) and (b) of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights1;"

Explaining the reason for the amendment, the rapporteur writes that applying criminal penalties to infringements of patent rights does not seem to be either particularly appropriate in itself, or consistent with the approach followed in recent years by the Community legislator.

Even this goes a little bit further than I would have it. I do not see any useful purpose in extending criminal liability for infringing design rights, particularly not chip topographies. But the idea of the jury in the Crown Court construing a patent claim (or the directions they would receive from the trial judge) fills me with dread.

05 February 2007

IP Awareness Day: Nether Alderley

Today I attended the Patent Offices's first IP Awareness seminar at Alderley Park, Astra Zeneca's campus just in Cheshire. I say "campus" because it resembles a whitebrick university like Warwick, Stirling or Lancaster. Like many of those seats of learning there is a stately pile at the heart of the complex. It was there that the seminar took place.

The seminar consisted of formal presentations by our hosts, Business Link, the Patent Office, CIPA, ITMA and others. There were opportunities for networking and one-to-one conferences with patent agents after lunch. The session was chaired by Miles Rees of the Patent Office who seems to have forgiven my mickey taking last year. Indeed, he very kindly gave me the "Counter Offensive" IP crime strategy pack.

Several of my old friends were there including Bill Downey of Wilson Gunn, Romemary Barker of Harrison Goodard Foote, Sally Cooper and Chris Browne of Manchester Central Library. I also met some very interesting business people from a wide range of industries many of whom had travelled very long distances. I was even drawn into the one-to-ones as there were more takers than patent agents.

Similar conferences are planned for North and South Wales and the West Midlands later in the year.

04 February 2007

Preparing for the Coming Chinese Century

There is an organization in the USA quaintly called the "Project for the New American Century". According to its website it is

"dedicated to a few fundamental propositions: that American leadership is good both for America and for the world; and that such leadership requires military strength, diplomatic energy and commitment to moral principle."
I surmise that that organization chose its name in the expectation (or, more likely, hope) that the USA will prolong the economic, scientific and military preeminence that it has enjoyed since the end of the 19th century into the next century. Well, maybe. But my money is on the next century being Chinese rather than American.

China whose GDP is already estimated to be 75% that of the USA when adjusted for purchasing power parity and whose nominal GDP is growing at a breakneck rate. Increasingly, it will be Beijing rather than Washington that calls the shots on trade and international security. As for science and technology the WIPO has noted in a recent press release a boom in patent filings in northeast Asia over the past 20 years with China becoming the 4th largest patent office in the world by the number of applications. Regardless of whether or not the rise of China and the relative decline of America is a good thing, it is a reality to which we had better get used.

On 14 Sep 2006 IPCEX and Liverpool Inventors Club held a very successful seminar on IPR in China at the Liverpool Office of Kirwans. Speakers included Dr Ron Jones of IP.com Inc., Wei Huang of VTZ International, Catherine Lo of Kirwans and yours truly. The audience included diplomats from the Chinese embassy in London as well as investors, entrepreneurs, patent agents, solicitors and many members of the Chinese community in Northern England. We followed up that success with talks by Wei and Ron in Leeds and Sheffield. On Tuesday, the Manchester Inventors Club will host its own seminar on China.

I have always done a bit of work involving China while I have been at the Bar. In the early days there were mainly contentious matters but, more recently, I have been asked increasingly frequently to review and even draft licences, distribution and manufacturing agreements. Up to now the work has been west to east but the likelihood is that China will become increasingly important as an exporter of technology and capital to this country. In anticipation of that trend we have published a brochure in Mandarin. We believe we are the first specialist intellectual property set in the UK to do that.

We have recently appointed Wei Huang to represent and market us in China. She has already visited Shanghai and Chongqing and made several contacts on our behalf in those cities. As well as representing us and several other UK lawyers in China Wei represents an important Chinese law firm in the UK. We have ambitious plans for the future including a website on IP law in English and Mandarin and a conference at one of the leading Chinese universities.

03 February 2007

Patents: Voda v Cordis - US Courts decline Jurisdiction over Foreign Patents

I have to say that I am rather disappointed by the decision of the US Court of Appeals for the Federal Circuit in Voda v Cordis Corp. (USCA Fed. Circuit 1 Feb 2007). It is ironic that while the US federal government sends its soldiers where they are not wanted, its courts appear to be singularly reluctant to entertain actions even between Americans over foreign intellectual property rights.

In Voda the Court of Appeals allowed an appeal by the defendant against the District Court's decision to permit the plaintiff (claimant) to amend his claim to allege infringement of his foreign as well as US patents (see Voda v. Cordis Corp., No. 03-1512, slip op. at 2 (W.D. Okla. Aug. 2, 2004). The decision was not unanimous. There was a powerful dissenting judgment by Circuit Judge Newman. But the majority took the view that there was no jurisdiction to entertain such litigation and, even if there was, the court should not exercise it.

This decision contrasts with the stance of our own Court of Appeal in Celltech Chiroscience Ltd. v Medimmune Inc. which did not shrink from determining difficult such alien concepts as the doctrine of equivalents and file wrapper estoppel. Nor did it criticize Sir Robin Jacob for deciding those issues as though he were a US district judge (see Celltech Chiroscience Ltd. v Medimmune Inc [2002] EWHC 2167 (Patents) (28 Oct 2002) though it disagreed with his conclusion. Our courts have moved a very long way from British South Africa Company v. Companhia de Moçambique [1893] AC 602 (see R Griggs Group Ltd and others v Evans and Others (No 2) [2004] EWHC 1088 (Ch) (12 May 2004) though there are signs that the tide may be turning (see the decision of the European Court of Justice in C-4/03, Gesellschaft für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG, [2006] EUECJ C-4/03 (13 July 2006) (aka GAT v LuK).

The reason I rather regret the decision in Voda is that US courts are rather more accessible than ours. True, the costs of litigating in the USA are at least as high as here but then costs in the USA do not usually follow the event and there are at least a few US intellectual property lawyers who are prepared to accept instructions on a contingency fee. Also, the doctrine of equivalents appears to make life slightly easier for claimants and juries set damages. I am aware of at least one UK SME that has benefited very substantially from access to the American courts in a way that it never could here.

As I mentioned yesterday in my post on Sir Robin Jacob's talk to the Bar there appears to be a lot of momentum for a European patent litigation agreement. Such an agreement would be open to states outside the EC. If Switzerland or Turkey could sign up, why not countries outside Europe? The impetus for TRIPs is that global markets need a global IP system. In fact TRIPs actually does a bit more in that it harmonizes to a great extent the substantive law relating to intellectual property. If powerful countries like the USA can swallow harmonization of substantive law why not trans-border or even supra-national jurisdiction. Globalization isn't just for Americans.