31 March 2011

Hargreaves recommends Rationalization of the IPO

According to Al-Jazeera a leaked copy of the Hargreaves Report has recommended the break up and partial privatization of the Intellectual Property Office.

If the report is implemented,
  • patent registration for the United Kingdom is to be abolished altogether on the ground that there is already a perfectly adequate service operated for the UK by the European Patent Office in Munich;
  • in line with the trend towards localism, trade mark and design registration are to be franchised to 12 local registries for East of England, East Midlands, London, North East England, Northern Ireland, North West England, Scotland, South East England, South West England, Wales, West Midlands and Yorkshire and the Humber which will be offered to competitive tender; and
  • It is understood that an enquiry for the search service has already been received from India and the outreach service will be put out to competitive tender.
Neither Dr Vince Cable, the Secretary of State for Business, Innovation & Skills, Lady Wilcox, Minister for Intellectual Property nor John Alty, Comptroller and Chief Executive were prepared to comment on a leaked document. However, it is understood that they are under pressure from the Chancellor to implement the report as it will result in savings of some £26 million per year.

Unions, however, have already indicated that they will oppose the move and will not rule out industrial action. There have already been threats of wildcat action by the hearing officers who are the most militant section of the IPO's work force.

24 March 2011

Confidential Information: Hedgehog v Hauser

In the Hedgehog Golf Company Ltd v Hauser [2011] EWHC 689 (Ch) (23 March 2011), Mr. Justice Newey granted the claimant Hedgehog a perpetual injunction from properly disclosing confidential information. in interlocutory proceedings "confidential information" had been defined as "confidential information relating to patent number 1625827 and all other research activities, inventions, secret processes, designs, formulae and product lines".

Now patents and confidentiality are opposites - like oil and water, north and south, chalk and cheese, Lancashire and Yorkshire, cat and dog and so on. If you have invented a new product or process you can either "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" in the hope of obtaining a 20 year monopoly known as a patent, or you can keep mum and rely on the law of confidence to prevent anyone to whom you may have disclosed your invention from using or blabbing about it, but you can't do both. If the invention cannot easily be reverse engineered - which is the case with Chartreuse and Coca Cola you can keep the recipe secret for centuries.

The patent in this case was for wheel studs:
"A vehicle wheel (1) provided with a plurality of studs (2) which extend radially from a rim of the wheel. The studs are parabolic or substantially parabolic in cross-section in a plane normal to the axis of rotation of the wheel and generally parallel to the rolling direction of the wheel which enables the studs to ride over the surface during rotation of the wheel without removing material from the surface."
According to the specification

"On many golf courses the use of trolleys may be banned during bad weather or damp conditions. This is because the wheels of the trolley can damage the surface of the course and leave muddy tracks.

This problem is encountered with any wheeled vehicle used on a golf course, for example a golf buggy for transporting the players.

The present invention is intended to solve or at least alleviate these and other problems. "
This case was essentially a dispute between the inventors. They had formed a company called The Hedgehog Golf Company of which they each held 50% of the shares. They fell out and one brought unfair prejudice proceedings against the other which resulted in an order for the petitioner to buy out the respondent.

After that judgment the disconsolate respondent threatened to put his services at the disposal of the company's competitors unless the Hedgehog company made it worth his while to keep his trap shut. Bristling with indignation the Hedgehog spiked the respondent's guns by claiming an interim injunction which was granted.

At trial, Mr Justice Newey concluded that the claimant was "well justified in his concern" about the respondent. He had shown scant regard for his co-inventor and had demonstrated an intent to destroy or damage his company. The other slightly strange point about this case was that the injunction was perpetual - that is to say to the crack of dawn. Granted patents only live for 20 years from their priority date.

21 March 2011

Bye Bye Robin Jacob

Lord Justice Jacob will retire from the Court of Appeal to take up the Hugh Laddie Chair at University College London (see "Sir Robin Jacob to lead IP Law at UCL").

In accordance with tradition, valedictory speeches will be offered in the Lord Chief Justice's Court at 09:45 tomorrow, 21 March 2011.

He was not one of my easiest tribunals but he was one that I respected more than most. A very powerful intellect, one of our best jurists, I wish him well.

I invite all my readers who can reach London easily tomorrow morning to attend his valedictory if they possibly can. I invite everybody to contribute to fund the Institute of Brand and Innovation Law.

08 March 2011

Why we needed to reform the Patents County Court: Deakin and National Guild

There are two new judgments from the Patents County Court on BAILII (British and Irish Legal Information Institute):
Deakin was the trial of an action and counterclaim for damages for breach of contract with incidental copyright issues that had been brought under the old CPR Part 63 and Part 63 Practice Direction relating to designs for greetings cards. gift wrap paper and other stationery. There was a re-re amended particulars of claim and two amended defences which gave rise to 65 issues. The trial had taken place before His Honour Judge Fysh QC over 10 days of May, June and July 2010 and judgment was delivered on 1 Feb 2011.

National Guild
National Guild, by contrast, was an inquiry as to damages for trade mark infringement very similar to the same claimant's claim against Silveria which I blogged on 12 Nov 2010. The claimant was a trade association which had allowed its members to use its logo in their advertising so longs as they paid their subs. As in Silveria the defendants had once been members of the National Guild but had ceased to be such. Nevertheless, they continued to display the claimant's logo on their website and in the telephone directory after their membership had ended.

Points of Law
Deakin revolved largely on fact but Judge Fysh QC decided one important point of law: when a copyright licensee fails to pay a licence fee is he or she liable in debt for the unpaid fee or can he or she be sued for infringement of copyright? The point had arisen in Australia in Ng v Clyde Securities Ltd. [1976] 1 NSWLR 443 and Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd [2006] HCA 55, (2006) 231 ALR 663, (2006) 81 ALJR 352 (6 Dec 2006). Counsel for the claimants had argued that Ng should not be followed in England. His Honour held that non-payment of a licence fee does not terminate or justify termination of a licence.

In National Guild the defendants who appeared in person had advanced the following arguments:
"i) He contended that the damages owed should be the annual fee the guild charges for its members. Mr Jones contended that fee he paid was £1,000 per year and that represents the right rate to use
ii) He contended that the figure proposed by the claimant was out of scale with the value to his business of the use of the guild's marks.
iii) He contended that the period during which ATR Removals should be regarded as a member of the guild should continue for a further six months beyond July 2009 to take account of the guild's delays in sending him the marketing materials he should have received as a member.
iv) He contended that the letter in September 2009 should set the date of the end of his membership and not July 2009.
v) He contended that marks on the internet were seen by many more customers and potential customers than marks used in the paper directory and the damages ought to reflect that."
Judge Birss QC held that some of those were good to the extent that they entitled the defendants to a reduction in damages. However, the main point of his judgment was that in cases where a mark is "available for hire" damages should be computed on the user principle rather than for the diminution of the value of the mark as a thing in action.