30 November 2008

Practice: UK Patent Office changes its Name, Logo and Website. Again!

What we had called the Patent Office for over 150 years has just got a new website, a new logo and even a new name.   

My first impression was that the new logo (sorry “device mark” if It has been registered) looked like the flag of Barbados (see below).  "Inspired" by the flag as one of my clients who was defending a passing off case once said. 

But having compared the two close by I think that the logo is an extraordinarily honest piece of work.  The little blobs must be pound coins and the bigger blobs £2 coins representing money going down the plughole.  

You see the similarity to the new logo? A good allegory of intellectual property perhaps.  Or indeed the money spent on a new website not long after the last makeover and 18 months after the last quite unnecessary name change.

According to Sean Dennehey:

"A lot of work has gone into refreshing the website. We hope that businesses small and large, new and longstanding will find it much easier to get the information and guidance they are looking for."

I am not sure that it makes much difference really.   The bits of the website that I used most are the unofficial consolidated statutes and the report of hearings. I got to the Patents Act 1977 from the home page. There is now a new IP Pros page which has a number of tabs one of which is Law and Practice where links to all the Acts and Rules are to be found except the Registered Designs Act 1949.   I was a bit concerned to see that missing because that is the one statute that really needs an unofficial consolidation having been turned inside out twice, first by the Copyright, Designs and Patents Act 1988 in 1989 and later by the legislation implementing the Designs Directive in 2001.  Fortunately, it is still there but you have to ferret around for it in the “Designs” section.

You know if the Intellectual Property Office really wanted to modernize its website it would introduce an RSS bit feed just like the EPO and WIPO and indeed this blog so that one can keep up to date with British IP news as one can with European patent and domain names news without hoofing around the internet.   Now that really would be worth doing.

27 November 2008

Practice: A2B Day

I have just returned from the first two sessions of the Bar Council's Access to the Bar Day at Inner Temple. 

The first was on public access and the second on licensed access. I wanted to attend the last session which was "targeted at members of the Bar and the Judiciary" (and the only one to carry CPD points) but it began nearly 4 hours after the end of the previous session. It was bad enough hanging around the conference room that Inner Temple rather grandiosely call "the Parliament Chamber" for more than an hour between the public access and licensed access sessions.  I found those gaps very annoying.   Having set off at an unearthly hour to make the 10:00 session I did not relish a 4 hour drive from Luton through the night after the end of the last session.   And I have work to do just like every other barrister. I am sure that the Bar Council would have attracted a much bigger audience had it staged the second session immediately after the first, and the third immediately after the second.   

The speakers at the public access session were 
  • Paul Darling QC, Chair of the Access to the Bar Committee
  • Tim Dutton QC Chair of the Bar
  • Bridget Prentice MP, Parliamentary Under-Secretary of State at the Ministry of Justice 
  • Professor John Flood of Westminster University, and
  • Marc Beaumont, Vice Chair of the Access to the Bar Committee
All gave good speeches except Bridget Prentice MP.   Her effort, which appears on the Ministry of Justice website, was almost entirely irrelevant to public access. It was little more than an overview of the Legal Services Act 2007. Almost the only time she mentioned public or licensed access was in the context that "public access and licensed access are compatible with the wider aims of the Legal Services Act".  Talk about back-handed compliments.   The thrust of her argument was that legal disciplinary practices and alternative business structures should bring down the cost of legal services for the consumer. Regrettably she did not stay long enough for me to ask her how she could reconcile her concern for consumers with her government's massive increase in court fees or its butchery of legal aid.

By far the most interesting presentation was Professor Flood's.  He spoke of a world in which Google could become the world's biggest law firm. The Bar Council had commissioned him to carry out research on public and licensed access. Both schemes appeared to be working reasonably well but he believed that the Bar had to do far more to promote them.   When the time came for questions I asked how the Bar could be expected to do more to promote public access unless it changed its working practices and business model. Flood seemed to agree.   The other members of the panel answered quite a different question - just as witnesses try to do when faced with awkward cross-examination.

Marc Beaumont told a very entertaining tale about how large sums of money were wasted in years of party to party correspondence before counsel's opinion on the merits of the case was sought. All that money could have been saved had the client consulted a barrister in the first place, he suggested.    Marc's tale seemed to strike a chord with several members of the public but he was lambasted by two solicitors in the audience who accused him of disparaging other professions - which I don't think he did.

Anyway, the first speaker in the licensed access session who happened to be an expert witness said very much the same thing.   The other speakers were Desmond Browne QC (the next chair of the Bar) and Chantal-Aimee Doerries QC.   I asked why we still needed to license members of the public to come to the Bar when they could now come to us under the public access scheme.    The only answer that made any sense to me at all was Paul Darling's observation that licensed access provided some pre-qualification.

Though I think this event could have been better organized I am very glad that it was attempted.   It was worth getting up at 05:00 this morning to support it.

25 November 2008

Patents: Court Guide

When I reviewd the new Patent Court Guide on 6 Nov I pointed out that it did not have a specimen order.    That has now been corrected and the complete guide appears in its full glory at http://www.hmcourts-service.gov.uk/cms/files/Patents_Court_Guide_as_revised_on_18_November_2008.pdf.   However, the old one is still on the Courts Service website. So beware.

Software Patents: Talks on Symbian

Colin Birss QC is giving a talk for the AIPPI at Allen & Overy on Symbian entitled "Symbian: Where do we stand now?" on 4 Dec It should be good.   I have heard Colin speak before. The cost is only £20 and if I can find time to get to London I shall be there.

For those who can't make that event, NIPC Training is also discussing Symbian and linking it with Bilski at Liverpool on 5 Feb 2009 (see "Software Protection after Symbian and Bilski"  on www.nipc-training.co.uk.  I shall be speaking as will Robin Bartle of WP Thompson. Kirwans have also promised a speaker and we have invited contributions from the IP Office, Intellect and the NCC. You can register an interest by completing the on-line form.

Symbian is a very important case.   You can read my post on the case below.

13 November 2008

Space: Meet a Spaceman in Bradford

Former Soviet spaceman, Col. Akexander Volkov, and the head of ballistics for the Soviet space programme, Dr. Alexander Martynov, will be at the WOW Academy in Bradford between 12:00 and 15:00 on 11 Dec 2008.

The timetable is as follows:
12:00 – Guests start arriving
12:30 – Buffet lunch
13:30 – An audience with Cosmonaut
14.30 – Q&A
15:00 – Tea & Coffee

Ticktes from  l.southeran@bradfordcollege.ac.uk Tel 01274 436103

Moderation Policy

Someone called "Planet" contributed a comment to my blog in Mandarin.   I have not yet got round to learning that language (a project for retirement perhaps) but I ran it through Google translate and it came out as "Evidence of Limitations".   

The comment occurred in a request for contributions to a re-launched Northern Intellectual Property Review.   Possibly the author was offering a contribution on whatever limitation period exists in the jurisdiction in which he or she had in mind. Something to do with the limitation period expiring before the application had proceeded to grant as in Lucas v CAV Ltd. [1986] 1 WLR 462 perhaps?   Alternatively, he or she was making a gratuitous observation about some other feature of the blog.

If the former I should be glad to consider such an article but the contribution has to be in standard English. That is to say the orthography that applies in most of the Commonwealth rather than the North American dialect of our language. That is also the house stylke (in so far as there is one) oof this blog.

If the latter, nobody forces you to read this post or indeed this blog but I know I have a fair number of email subscribers (some of whom have been there for years) despite my long periods of silence when forced to attend to other things so I must be doing something right.

Northern Intellectual Property Review

Between 1997 and 2001 we published a number of newsletters which won a lot of praise.   They even earned me and my tenants a few free lunches with the likes of Hobson Audley (now Faegre & Benson), Wragge & Co and Allen & Overy. We played around with several titles but the one that stuck was the Northern Intellectual Property Review. That reflected the focus on IP, technology, media and entertainment issues affecting mainly small businesses outside London.

Although it was successful professionally it was a disaster financially and I had to abandon it when we merged with Kingsgate.   

Since then Web 2.0 publishing technology has been developed which reduces considerably the cost of low volume print runs and of course many subscribers will now accept publications over the Internet in pdf format.  I have done some more research and costings and believe that with the help of other IP practitioners I can revive the journal.   I am therefore looking for material to publish. 

Since my focus is still on SME as it was 10 years ago I am looking for articles and case that are useful for, or at least useful, for them. The ideal length is about 2,000 words submitted as a Word attachment.    I would like to publish the first issue in the first quarter of next year so I would ask for contributions before the end of the year.

I am really quite excited about this project.

11 November 2008

Patents: Software Protection after Symbian and Bilski

Possibly the most important intellectual property decision of this year from the point of view of British business will be the Court of Appeal's decision in Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (8 Oct 2008). In that judgment the CA affirmed Mr. Justice  Patten's decision to allow an appeal from the hearing officer, Mrs. Chalmers, who had upheld the examiner's objection that an application for a patent for 
"a method of accessing data in a computing device and, in particular to a method of accessing data held in a dynamic link library in the computing device. The present invention also relates to a computing device controlled by the method"
was excluded from patentability by s.1 (2) of the Patents Act 1977 on the ground that it related to a computer program "as such" (see Symbian Ltd. 30 July 2007). 

Why Symbian is important
The commercial significance of the CA's decision is that it opens the way for patents for at least some software implemented technologies in the UK. The economy of the UK (like that of most of Western Europe and North America) is orientated towards services rather than manufacturing and the services sector in the UK at least are not well served by the intellectual property system.   The reason for that is probably historical.   The intellectual property system was developed in the 19th century when our economy and those of our European neighbours were based on manufacturing.  The temporary monopolies that we now call patents were needed to ensure a return on the investment in research for and development of such new products and manufacturing processes.   Similarly, monopolies of the use of a brand name were needed to assure the source of goods.   It was not until the Trade Marks (Amendment) Act 1984 that it became possible to register trade marks for services (then known as "service marks") in the UK.

Excluded Matter
The European Patent Convention was negotiated in the 1970s when the economic profile of most of the contracting parties was very different from what it is today.   Most European countries (at least on the continent) had healthy manufacturing industries. Computers were very heavy and expensive things that were owned by central and local governments, universities and fairly big companies, telecommunications were a nationalized industry and the financial services industries were much less sophisticated than they are today.   It is therefore not surprising that art 52 of the Convention contained the following exceptions from patentability:
"(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for  computers;
(d) presentations of information."

Though this provision is mitigated by paragraph (3) which provides:

"The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."  
After a series of decisions in England and Europe culminating in Macrossan (Aerotel Ltd. v Telco Holdings Ltd and Others [2006] EWCA Civ 1371 (27 Oct 2006) those provisions were interpreted by examiners (in the UK at least) in such a way that it seemed virtually impossible to get or keep a patent for a business method or software implemented invention.

The Position in America
The comparable American legislation contained nothing like art 54 (2).   § 101 of the principal Act (35 USCA 101) provides simply:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
In the high water case of State Street Bank & Trust Co. v Signature Financial Group Inc. 149 F 3d 1368 (Fed. Circ. 1998) the Court of Appeals for the Federal Circuit stressed that the question of patentability should focus on whether the essential characteristics of patentability are met. In that case before the Court, claim 1 was directed to a machine programmed with "hub and spoke" software which produced a "useful, concrete, and tangible result." The Court held that to have been sufficient to justify a monopoly (see my article of 20 Sep 2005 "Software Patents Overview" on the IP/IT-Update website).  

The decision in State Street prompted a large number of software and business method patents not all of which were easy to justify.   On 30 Oct 2008 the judges of the Court of Appeals for the Federal Circuit (sitting en banc) upheld the decision of the Board of Patent Appeals and Interferences refusing a patent for a method of hedging risk in the field of commodities trading in Re Bilski.    This case, which contains an interesting concurring judgment and an important dissenting judgment from Circuit Judge Rader, is too long to analyse in this post but the upshot is that there is a two prong test for patentability:
"an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson and discussed below, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. Seafloor, 437 U.S. at 590."
Applying that test to the invention the majority of the judges held that the method was not a patentable invention within the meaning of § 101.

What does this mean for our Clients?
These two decisions in the same month appear to have shrunk the Atlantic so far as software and business method protection for the services sector is concerned.   To consider the consequences I am organizing a seminar entitled "Software Protection after Symbian and Bilski" at Martins Building on Water Street in Liverpool on 5 February 2009 between 14:00 and 17:00.   I will speak and chair the meeting. Robin Bartle of WP Thompson will also speak and I have invited Intellect, the NCC Group, the UK Intellectual Property Office and Kirwans to contribute speakers. The likely cost is £75 + VAT which is less that half the cost of a similar seminar organized by the CIPA forLondon and Bristol in the next few weeks.   I have SRA and BSB accreditation to award up to 2 1/2 hours CPD points.   Anyone wishing to register an interest should complete our online form.

10 November 2008

Company Names Tribunal: New Fixed Fee Service

One of the many innovations of the Companies Act 2006  is a right under s.69 to object to the incorporation of a company in a name that is:
(a)   the same as a name associated with the person raising the objection in which the objector has goodwill; or
(b)   so similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the objector.   Examples of cases where those circumstances occurred include Glaxo Plc v. Glaxowellcome Limited [1996] FSR 388 and Direct Line Group Limited v. Direct Line Estate Agency [1997] FSR 374.   In Glaxo, for instance,. the defendants incorporated Glaxowellcome shortly after a merger between Glaxo and the Wellcome group had been announced in the hope of extracting a ransom for the name from the new holding company. 

Those cases anticipated the practice of domain name squatting which led to a number of expensive trade mark infringement and passing off actions such as Pitman Training Ltd v. Nominet UK [1997] EWHC Ch 367 (22 May, 1997) and British Telecommunications Plc and others v. One in a Million and others [1997] EWHC Patents 357 (28 Nov, 1997)  in England as well as similar cases in other jurisdictions.   Domain name squatting has been tackled (though not by any means eliminated) by a novel system of alternative dispute resolution known as the Uniform Domain Name Dispute Resolution Policy. Under that policy the California company that regulates the internet known as the Internet Corporation for Assigned Names and Numbers ("ICANN") requires generic domain name registrars to insert a clause into their registration agreements obliging applicants for domain names to refer any dispute over their registrations to expert determination before panellists appointed by the WIPO and other organizations including yours truly. The charge for these references is about US$1,500 of which US$1,000. The panellist has to decide on paper whether:
(1)    the domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights; and
(2)    the registered proprietor has rights or legitimate interests in respect of the domain name; and
(3)    the domain name has been registered and is being used in bad faith.
If all those conditions are satisfied the panellist has power to transfer the domain name to the complainant or to cancel the registration.   Nominet has a broadly similar scheme for the .uk domain name space as does the Czech Court of Arbitraiton for .eu names.   These schemes have been remarkably successful.   The WIPO, for instance, has handled 14,302 cases since 1999 as of today.
Parliament appears to have taken a leaf out of ICANN's book by instituting a panel of adjudicators known as The Company Names Tribunal to hear objections under s.69. If a complaint falls within s.69 (1) the adjudicator may require the company and its promoters to change its name under s.73 unless they can prove one of the following:

(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or

(b) that the company—

(i) is operating under the name, or

(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or

(iii) was formerly operating under the name and is now dormant;or

(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or

(d) that the name was adopted in good faith; or

(e) that the interests of the applicant are not adversely affected to any significant extent." (s.69 (4)).

The adjudicator can also uphold the objection under s.69 (5) even if the facts mentioned in subsection (4)(a), (b) or (c) are established, where it can be shown that the main purpose in registering the name was to obtain money (or other consideration) from the applicant or prevent the objector from registering the name.

Rules governing those proceedings known as The Company Names Adjudicator Rules 2008 (SI 2008 No 1738) were made on 1 July 2008 and came into force on 1 Oct 2008. These are supplemented by a Practice Notice (No 01/08). Complaints are made in a simple application form known as CNA1 which can be downloaded  from the tribunal's website and costs £400 to file. Defences must be in form CNA2 and require a filing fee of £150.   Evidence is to be in writing uness the adjudicator orders cross-examination under rule 6 (2) (f) of the Rules. The tribunal can proceed on documents only unless one of the parties requests an oral hearing.

The two most striking features of this new jurisdiction are:
  • the very long time limits for the evidence rounds (up to 4 periods of 2 months each); and
  • the £3,000 cap on recoverable costs (£1,500 per day) plus £2,000 for preparation of evidence and £300 for statements of case unless one of the parties behaves unreasonably.
Becuse of those restrictions there is if course no question of success fees if work is undertaken under a conditional fee agreement.

Anyone reading the Rules and Practice Notice will be struck by the similariteis with the practice of the Trade Marks Registry as well as with the UDRP. Because of those similarities counsel who do a lot of work before those trbunals are probably best placed to take on this kind of work.   Since we can do this work quickly and accurately Lois, Alex and I will settle statements of case for £300, witness statements for between £250 and £1,000 depending on length and complexity and written submissions for £500. If we have to attend a hearing, we shall charge £1,500 for the first day and £750 for each successive day.  Richard Aird will undertake tribunal work in Scotland.   Any enquires should be made to our chambers manager, Toni Wilson on 0870 990 5081 who can also advise on our domain name advice and representaiton services.

08 November 2008

USA: What will Obama do for IP?

While queuing for tea during the mid-afternoon break at the WIPO domain name panellists' meeting in Geneva last month, I got chatting to am American colleague. I asked her which state she was from and she replied Illinois. 
"Oh Senator Obama's state", I remarked. 
"Not only that." She said, "I used to work with Michelle Obama."
My colleague told me that she had entered Sidley Austin LLP at the same time as Mrs. Obama and had worked on the same team. That team was apparently the non-patent IP team.
Delightedly I exclaimed: "So Mrs. Obama is also an IP lawyer!"
"Indeed she is" my colleague replied, adding that she met her husband through the firm. He was on a temporary work placement with Sidleys and her job was to look after him.
So with that kind of background we can expect great things from the new president. Or can we?
The best indicator of what the president-elect will do is the transition website "change.gov". At the foot of the home page is an agenda and one of the links from that page is "Technology" so I clicked it to see what he had to say.
Barack Obama has certainly diagnosed the problem for America which is pretty much the same as ours:
  • "America risks being left behind in the global economy"
  • "Too many Americans are not prepared to participate in a 21st century economy"
Following this diagnosis there are a number of bullet points representing "Barack Obama and Joe Biden's Plan" One has to go quite a long way down the lost to find the first reference to IP and when you find it it is in the context of China bashing:
"President Bush has failed to address the fact that China has engaged in ongoing currency manipulation that undercuts US exports; that China fails to enforce U.S. copyrights and trademarks and that some of our competitors create regulatory and tax barriers to the delivery and sale of technology goods and services abroad. Barack Obama will fight for fair treatment of our companies abroad."
In similar vein they add several paragraphs further down:
"The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama and Joe Biden will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere."
In his first mention of IP at home Barack Obama says that the USA needs to update and reform its "copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated." Now I have no idea of what he can possibly be getting at.   Congress passed The Digital Millennium Copyright Act which was a pretty comprehensive overhaul of US copyright law implementing large parts of the WIPO Copyright Treaty and providing a model for the EC's directive 2001/29/EC so how much updating and reform can American copyright law require? Patents may be a different matter but I seem to remember that there has been a patent reform bill in Congress for quite a long time.  The words "ensuring that intellectual property owners are fairly treated" ring alarm bells.   When politicians say that sort of thing of an interest group it usually means the opposite. 

Most interesting of all is what Obama says about patent reform:
"A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration."
"Opening up the patent process to citizen review" caught my eye because I have just signed up to New York Law School's Peer-to-patent Project. Peer-to-patent enables members of the public (including foreigners like me) to review patent applications and make submissions on them to the US Patent and Trademark Office. The idea is to raise patent quality and apparently the USPTO is involved.   I am not sure that we need peer-to-patent here as our applications are published. We don't have submarine patents here except for submarines.   But in America where things are done differently peer-to-peer seems to satisfy a crying need.

So returning to the point, will Obama be good for creative, enterprising and innovative people. Probably too early to say but let's give him the benefit of the doubt.

07 November 2008

Practice: Access to the Bar

My professional body is running a full day event at the Inner Temple in the Smoke known as Access to the Bar Day (”“A2B") on 27 Nov 2008 to provide up-to-date information about instructing the Bar directly. This event is open to everyone. If you are an inventor, designer, angel, musician, business owner or any other kind of creative, enterprising or innovative individual who is fed up with paying good money for mediocre legal services this event is for you. 

Speakers include:
  • Biddie Prentice MP (Parliamentary Under-Secretary of State at the Ministry of Justice)
  • Paul Darling QC a construction silk with a good sense of humour who trained with me to become a mediator many years ago
  • Tim Dutton QC head honcho of the Bar for a few more weeks
  • Prof Flood of Westminster Uni who is doing some research on public access 
  • Marc Beaumont who runs the Public Access Bar Association
and a whole load of other folk including me.   Don't be put off by the twee abbreviation.   The Bar Council is just trying to be trendy. Some serious stuff will be raised by me (if by nobody else) on such matters as tailoring barristers' considerable collective expertise to what the public needs and getting over sufficient information to businesses and households on barristers' qualifications and experience to make an optimum choice.

If you want to come email Rukaiya Bhegani on RBhegani@Barcouncil.org.uk or call her on 020 7242 0082. Alternatively, if you call my chambers we can pass on your names and contact details to Rukaoya. As you can see from the photo above, the Temple is lovely and has lots of history, not least the fact that the Dukes of Lancaster and York picked red and white roses in its gardens starting the War of the Roses.  The day coincides with US Thanksgiving Day the first time out of the last 8 years that most of us on this side of the Atlantic have actually got something for which we can thank America. The Christmas lights will be on in Regent Street and Knightsbridge.   Maybe there will be enough of us form the North to hire a coach.

06 November 2008

Practice: New Patents Court Guide

I have just had an email from Richard Miller QC to say that a new Patents Court Guide (dated September 2008) has appeared on HM Courts Service website though the November 2003 guide remains for the time being on another part of the HMCS site. Possibly the reason for keeping the old one is that it contains specimen directions whereas the new one does not.   

On a quick run through I spotted the following changes:
  • a statement of what most practitioners probably already knew, namely that cases of technical difficulty 4 and 5 will normally be tried by Mr Justice Kitchin or Mr Justice Floyd who, of course, came from the patent bar whereas the others practised in general chancery;
  • Kav's full contact details (tel 020 7073 4251, fax 020 7073 4253, (Kav.rekhi@hmcourts-service.gsi.gov.uk) and some practical guidance on issuing and listing;
  • the paragraph on arrangements for sitting outside London (a subject very dear to my heart) has been promoted form para. 18 of the old guide to para. 1.5 of the new (hurrah!);
  • demotion of September sittings from para. 6 to 3.1.7 (it's not as if the courts are overflowing with work as they were in the mid-1990s when this provision was first announced);
  • there is some guidance on pleading though most of that was already in PD63 and CPR Part 63;
  • similarly some of the provisions on case management from the CPR and PD are imported into the new guide;
  • one very welcome new insertion is para. 2.2.4 
    "In accordance with the overriding objective, the court will actively manage the case. In making any order for directions, the court will consider all relevant matters and have regard to the overriding objective with particular emphasis on proportionality, the financial position of the parties, the degree of complexity of the case, the importance of the case and the amount of money at stake."
  • the next paragraph (para. 2.2.5) spells that out in terms: 
    "The parties are reminded of their continuing obligation to assist the court to further the overriding objective. Moreover, it is the duty of the parties’ advisors to remind litigants of the existence of mediation or other forms of alternative dispute resolution as a possible means to resolve disputes. In particular, the parties should consider:
    (a) The need for and/or scope of any oral testimony from factual or expert witnesses. The court may confine cross-examination to particular issues and to time limits. The parties should consider whether oral testimony of witnesses should be given by video facility.
    (b) The need for, and scope of, any disclosure of documents.
    (c) The need for any experiments, process or product descriptions.
    (d) The need for an oral hearing or whether a decision can be made on the papers. If an oral hearing is considered to be appropriate, the court may order that the hearing be of a fixed duration.
    (e) Whether there is a need for a document setting out the basic undisputed technology (“technical primer”), and if so, its scope and the steps to be taken to achieve agreement of it.
    (f) Whether a scientific adviser should be appointed.
    Whether a costs-capping order should be made (yea!)
    (h) Whether there should be a stay of proceedings for mediation or other form of alternative dispute resolution"
  • there is actually quite a bit of info on ADR at 2.4 though strangely (well perhaps not all that strangely) the para does not mention IP Office opinions on validity and infringement under s.74A and s.74B of the Patents Act 1977 for £200 which is probably the most useful ADR procedure from the point of view of my clients.
"All good stuff" as Peter Keenan used to say. Foer those who don't know, Peter represented the Union of Democratic Minerworkers during the miners strikein the 1980s when I first returned to Manchester.