10 June 2008

Barnsley: Talk Digital Media Centre 10:30 Wednesday 11 June 2008

I am giving an introductory talk on Intellectual Property to the Barnsley Digital Media Centre pictured above at 10:30 tomorrow. Call in if you happen to be in the area. It is free and the Jane Townsend of the Centre promises us some very nice cakes with our morning coffee. Also with me will be my friend Professor Ron Jones of Horizon Ceramics who is doing great things at the Advanced Manufacturing Centre at Catcliffe near Sheffield.

Barnsley is a surprising place. A short walk from the Centre is Pollyanna which is really droolworthy (I think I've just invented a word - let's see if the Oxford Dictionary picks it up in 20 years time). Pollyana also has a very pleasant cafe.
If the seminar goes well we shall try to set up a regular Barnsley IP Clinic like the ones we run in Bradford, Halifax and Huddersfield. So look forward to seeing you tomorrow. As you can see from the photo above, there is always plenty of parking.

"Innovation Nation": who is HMG trying to kid

I have just finished ploughing my way through the latest white paper on innovation "Innovation Nation" which appeared in March and I really wish I hadn't. White papers, reports, reviews and policy statements on innovation from this government rival Zimbabwe dollar bank notes in their profusion and value. We have had HM Treasury Science and Innovation Strategy 2001, the DTI Innovation Report 2003, Lambert, Gowers in 2006 to mention just a few. All gathering dust as will this one.

The one report which actually gave HMG some sensible advice is the IPAC Report "The Enforcement of Patent Rights" (November 2003) which now appears only on Mandy Haberman's website. That report together with Mandy's and Roland Hill's minority report Patent Enforcement for SME and Lone Inventors - A System Failure and several others made the point that the cost of IPR enforcement in the UK is many times greater than what it is in the rest of Europe. The cost of a typical patent infringement action is £150,000 to £250,000 in the Patents County Court and £1 million in the Patents Court compared to about €50,000 in France, Germany and the Netherlands. Is it any wonder that the UK trails those countries and much of the rest of the world in patenting?

The response to the IPAC and Haberman/Hill papers was a supercilious and complacent response from HMG that the Patents Court is expensive because it is good and if you want quality you have to pay for it. Shortly afterwards IPAC was wound up.

The advice that anybody who advises an SME has to give time and time again is that the cost of litigation is usually more than the IPR is worth and often more than the company or indeed the company and its directors. So SME don't sue and since an IP is essentially a right to bring a law suit they ask themselves, not unreasonably, why bother?

Just out of curiosity I made a keyword search on "enforce", "infringe" and "court" in "Innovation Nation". "Enforce" did not come up once. Neither did "infringe". "Court" showed up three times in the context of HMG's support for a European patent court.

Gordon Borwn, John Denham and the rest of the gang should note that SME are fully aware of intellectual property. No amount of quangos like SABIP and awareness days will make them use apply for more patents or even do more research. What might would be bringing down the cost of enforcement or funding it better. There was once a source of funding for clever inventors and designers. It was called legal aid. That was abolished by para 1 (h) of Schedule 2 to the "Access to Justice" (ROFL) Act 1999.

09 June 2008

US Design Patents: Shades of BL and Volvo v Veng

Dennis Crouch has just published a very interesting case note on Ford Global Technologies v. ITC (Fed. Cir. 2008). This is an appeal from a decision of the International Trade Commission upon an application by the Ford Motor Company to bar the importation into the USA motor vehicle spare parts from Taiwan. There is no system of design registration in the USA. Nor is there any kind of unregistered design protection except, curiously, boat hulls pursuant to Title V of the Digital Millennium, Copyright Act. Designs are protected in the USA by a special type of patent known as a "design patent".

Dennis's article suggests that the right conferred by a design patent has very little use in the motor vehicle after market except where there has been slavish copying and there are all sorts of problems over novelty. It is the opposite of the way we used to protect component designs with copyright (see British Leyland Motor Corp and others v Armstrong Patents Company Ltd and others [1986] UKHL 7 (27 February 1986).

Competition appears to have been the big unspoken issue in Ford as it was in British Leyland. The position of the ITC seems to be closer to that of the the ECJ in AB Volvo v Erik Veng (UK) Ltd [1988] ECR 6211 that to the House of Lords in British Leyland.

Interim Remedies: Sovereign Dimensional Survey Ltd

Despite 300 years of political union and until recently a common legislature there remain striking differences between the laws of Scotland and those of the rest of the UK. Occasionally these come to light. A case that highlights them dramatically came before M Wise QC sitting as a temporary (presumably deputy) judge on Friday.

This was the sort of case that still comes before chancery interim applications judges from time to time and before Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840 was commonplace. A high tech company engaged in dimensional control and laser scanning services to the oil and gas industries suspected that one of its former directors had made off with some of its trade secrets. It took steps to recover them.

Had the case happened in England the employer might have applied for a search order under CPR Part 25. In Scotland the equivalent procedure appears to be to petition for the appointment of a silk as a "Commissioner" to search for and take all other steps necessary to take possession of the documents and property listed in the petition. The search was to take place at the director's house. The director was also ordered to inform the Commissioner immediately of the whereabouts of the scheduled documents and property and to provide the Commissioner with a list of the names and addresses of everyone to whom the respondent, his servants or agents or anyone on his behalf have given any of the scheduled documents and property.

The search duly place and the director was asked about a laptop computer which had gone missing. The petitioner was not satisfied with the answers that were given to the commissioner and it applied for the director's committal for contempt. The director replied with a cross-application to strike out the committal application on the grounds of irrelevance and lack of specification (roughly equivalent to failure to state a case to answer). In the alternative, he alleged that his conversation with the Commissioner was inadmissible because it took place in the course of settlement negotiations. In support of his argument on privilege, the petitioner relied on Rush & Tompkins Ltd v Greater London Council [1988] UKHL 7 and Unilever plc v Proctor & Gamble [2000] 1 W.L.R. 243.

The interesting part of the judgment is the review of the English and Scottish authorities on the "without prejudice" privilege and the judge's conclusion that:
"The Scottish and English authorities show two different approaches to this. The English approach is context based and the Scottish approach is content based. In England, protection is given to all privileged communications. In Scotland, even if something bears to be "without prejudice", the court will still look at it if it constitutes an admission of fact."

The distinction between the two approaches deduced by the judge is probably exaggerated. The English court will look at content. Unilever was a threats action and contradicted over 120 years conventional wisdom that threats made in settlement negotiations are still actionable. It was followed by Kooltrade v. XTS, [2001] FSR 158 (a case in which I appeared) where the words "without prejudice" were disregarded.

08 June 2008

Copyright and Confidence: Meridian International Services Ltd v Richardson and Others

Although there is not much law in this case, the Court of Appeal's decision in Meridian International Services Ltd v Richardson and others [2008] EWCA Civ 609 (4 June 2008) serves as an object lesson in the need for agreeing who will hold title to a computer program or other copyright work. It is a case that the sort of people who consult me should bear in mind. That is because big companies are usually much more likely to address this issue during negotiations than SME (small and medium enterprises).

In April 2006 the claimant company agreed to supply a financial forecasting system to a division of GlaxoSmithKline. That agreement contained a warranty that the claimant owned the intellectual property in the system. It outsourced the development of the software to the defendants but failed to make sure that it would acquire title to the copyrights and other IPR that might subsist in the defendants' work. Consequently, the claimant was in breach of warranty and in effect had nothing to license to GSK.

The claimant company found itself in that position because it had taken over the software development project from a company which had previously gone into liquidation. The defendant programmers had not been paid and were naturally unhappy. They met the management of the former company which had in the mean time set up the claimant. They were promised payment provided they would finish the job. The agreement was entirely oral.

The claimants sued for the assignment of the copyright and other IPR in the forecasting system on the grounds that there was an express or alternatively implied term that they should be entitled to those rights. Robert Ham QC, sitting as a deputy judge of the Chancery Division, dismissed the claim. They appealed on the ground that an implied term had to be imported into the oral agreement for the sake of business efficacy. Their case on business efficacy was that they had already agreed in principle the terms of their draft contract with GSK. That cut no ice with Mr Ham because the defendants had not been party to the negotiations and knew every little about the,.. Even if they had, there was still no basis for importing the implied term. The Chancellor together with Lord Justices Rix and Rimer could see no grounds for criticizing the deputy judge's approach and dismissed the appeal.

"So there we have it, chums", as my old games master "Buster" Reid used to say . If you want copyright in commissioned software you have to make sure that you get title in writing, especially if you keep your programmers waiting for their pay.

Je Reviens

Being transsexual is not perhaps the best career move for a middle aged intellectual property barrister. Not even for one such as I with an unconventional practice. I thought long and hard about deleting this blog and starting again on Typepad in my new name. But Movable Type costs money and I'm from Yorkshire. Anyway, everybody who knows me professionally knows of my change of name and gender. I am not ashamed of myself or of the posts that I contributed under my old name.

So more of the same? Not quite. I will still post case notes, summaries of important legislation, bits of gossip here and there from the robing room, LES meeting and the like info about local IP seminars and other events. However, I will try to lighten it up a bit with some funny stories. Plenty of those about in real life if you live in the setting for "Last of the Summer Wine" and practise the same profession as Rumpole.