Administrative Council to meet again to try to choose Brimelow’s Successor

An EGM of the Administrative Council of the European Patent Organization has been called for today and tomorrow to elect a new president of the European Patent Office to succeed Alison Brimelow. The candidates are:

  • Susanne Ǻs Sivborg of Sweden
  • Benoît Battistelli of France,
  • Roland Grossenbacher of Switzerland.

The Administrative Council, which is made up of representatives of each of the contracting parties to the European Patent Convention (“EPC”), supervises the European Patent Office. Previous attempts to elect a president failed in October and December 2009.

Deadlock of this kind is not unknown in the Administrative Council. A similar tussle occurred in 2003 when Brimelow first stood for election which was resolved by Brimelow and her rival each serving as president for a term (see Anjana Ahuja “An Obstacle to the Patently Obvious” 27 Oct 2003 Times Online).

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Monthly Case Update: Jan 2010

British Sky Broadcasting Group Plc v The Competition Commission [2010] EWCA Civ 2 (Court of Appeal, 21 Jan 2010)
Whether the Competition Appeal Tribunal erred in its review of the Competition Commission’s report on the acquisition by BSB of a stake in ITV’s share capital.

Computer Supply Contracts
BSkyb Ltd v HP Enterprise Services UK Ltd [2010] EWHC 86 (Technology and Construction Court: Ramsey J 26 Jan 2010)
Software house’s liability in contract and tort for customer relationship management system and quantification of damages.

Confidential Information
Blackmagic Design Pty Ltd v Overliese [2010] FCA 13(Fed. Court of Australia: Jessup J)
Senior employee using employer’s confidential information in preparations to establish competing business.

Blackmagic Design Pty Ltd v Overliese [2010] FCA 13
Extent of implied licence.

Freedom of Information
Office of Communications v The Information Commissioner [2010] UKSC 3 (UK Supreme Court, 27 Jan 2010)
Scope of exceptions to Environmental  Information Directive and its transposition into English law.

Passing off
Diageo North America, Inc v Intercontinental Brands (ICB) Ltd [2010] EWHC 17 (Ch) (Chancery Div: Arnold J, 19 Jan 2010)
Extended passing off: whether “Vodkat” had been passed off as vodka.

Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2 (Fed. Court of Australia: Kenny J)
Soft drinks:  whether adoption of features get-up that are common to the industry was actionable.

Fisher-Rosemount Systems, Inc. IP Office Mr Micklkewright 12 Jan 2010
Excluded matter: whether invention made a technical contribution or related to the invention as such.
See Jane Lambert’s case note.

Medeva BV v The Comptroller [2010] EWHC 68 (Pat) (Patents Court: Kitchin J 27 Jan 2010)
Supplemental protection certificates

Nokia GmbH v Ipcom GmbH & Co KG [2009] EWHC 3482 (Pat) (Patents Court: Floyd J 18 Jan 2010)
Validity and infringement of European patents  relating to mobile phones.

Trade Marks
C398/08 Audi v OHIM (Court of Justice of EU 21 Jan 2010)
Whether “Vorsprung durch Technik” can be registered as a CTM

T460/07 Nokia OYJ v OHIM (Court of Justice of EU, 20 Jan 2010)
Relative grounds for refusal: whether LIFE BLOG confusingly similar to LIFE

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Patents: Fisher Rosemount Systems Inc.’s Application

The first decision from the Comptroller for 2010 offers an interesting discussion on how to assess an invention’s technical contribution when applying the Aerotel/Macrossan and Symbian guidelines.

In Fisher Rosemount Systenms Inc. Application BL 0/003/10 12 Jan 2010 the applicant appealed against the examiner’s report that the claims of the invention were excluded from patentability because they related to a computer program as such. The invention related to a process control system and in particular to a method of accessing process control data, viewing and modifying that data and using the modified data to update control programs within the system. The invention described a method by which the operator is able to develop and to add functionality to his or her own applications at any time without the need to rewrite or compile the control system software. The applicant claimed:
“A system for accessing process control data, comprising:
  • a pre-generated partial class that includes pre-generated class elements associated with accessing process control data;
  • a user-generated partial class associated with the pre-generated partial class and having user-defined class elements that can access process control data via the pre-generated class elements;
  • a user interface configured to instantiate a client object based on the pre-generated partial class and the user-generated partial class and configured to access process control data based on the pre-generated and user-defined class elements; and
  • a client model configured to load an object handle and a real object associated with the client object and communicate process control data between the client object and a server via the object handle and the real object.”
In his skeleton argument, the applicant’s patent agent offered the following alternative claim:
“A process control system having a process control machine and a client machine, the process control machine being communicatively coupled to control devices in a process control system, the process control machine being operable to automate and manage the process control system in accordance with process control data, the process control system further comprising a system for providing process control data, comprising:
  • a pre-generated partial class that includes pre-generated class elements associated with accessing process control data;
  • a user-generated partial class associated with the pre-generated partial class and having user-defined class elements that can access process control data via the pre-generated class elements;
  • a user interface configured to instantiate a client object based on the pre-generated partial class and the user-generated partial class and configured to access process control data based on the pre-generated and user-defined class elements; and
  • a client model configured to load an object handle and a real object associated with the client object and communicate process control data between the client object and a server via the object handle and the real object,
the client machine being operable to generate an output in accordance with the communicated process control data.”

The hearing officer rejected both claims.

As for the claim as originally drafted, Mr. Micklewright said:

“In my view the contribution relates to a system for enabling a user to access process control data. This is achieved by instantiating a client object based on pre-generated and user-generated partial classes. The user-generated partial class elements access the process control data via the pre-generated class elements. The client object has associated with it a real object which communicates process control data between a server and the client object via an object handle. Dr Lockey contends that the contribution relates to a new process control system. This does not however seem to me to be the case except to the extent that the means for accessing process control data is considered part of a process control system. The same process control data is used to control the same process plant. The only thing that is different is the way a user accesses the process control data.”

The alternative claim provided more difficulty because it claimed “a process control system” rather than a “system for accessing process control data” and the process control system had a process control machine coupled to control devices in the process control system and a client machine. Relying on BL 0/150/07 where the hearing officer found that a first version of claim 1 was excluded but an alternative version was not, the applicant argued that the invention could be considered a system for monitoring a process control system as it could retrieve real-time process control data. The hearing officer disagreed:

“I am not convinced the same arguments apply in the present case. The invention does not include any direct manipulation or control of specific features or entities of the physical process that could be said to relate to monitoring of the process. Rather it sets out a general scheme for making it easier for a user to access process control data. The invention in BL O/150/07 related to actual manipulation of entities of the physical process. The present invention does not have such a function. Moreover the features added into the alternative version of claim 1 are all entirely standard features of process control systems such as those discussed in the discussion of the prior art at the beginning of the divisional application. They therefore cannot be said to contribute to the actual contribution made by the claim. It is therefore immaterial in this case as to whether the claim is directed towards a process control system or to a system for accessing process control data. Moreover the fact that an output is generated does not add to the actual contribution. In BL O/150/07 the output related very specifically to the flow analysis. In the present case the output is non-specific and in fact all the claim says about this output is that it is “in accordance with the communicated process control data”. The substantive features of the claim, namely the use of pre-generated and user-generated partial classes to instantiate client objects associated with real objects to access process control data, are the same. I therefore conclude that the contributions made by both the first version of claim 1 and the alternative version of claim 1 are in substance the same.”

Mr Micklewright could find nothing in the invention that took it outside the excluded field.
Posted in excluded matter, Fisher Rosemount Systems Application, Patents, software | Leave a comment

Costs: Why not abolish the Patents County Court?

I have just finished reading Chapter 24 of Sir Rupert Jackson’s final report on costs (Review of Civil Litigation Costs: Final Report) which was published yesterday. It is a good report and I welcome its proposals for intellectual property.

However, back in July 2009 I proposed a more radical solution to the IP Bar Association and the working group of the Intellectual Property Court Users’ Committee (“IPCUC”) that was set up to formulate proposals for the reform of the Patents County Court. IPCUC did not see fit to include my suggestions in its submissions to Jackson (which is understandable since they call for the abolition of the Patents County Court and an extension and reform of the Comptroller’s jurisdiction) but I still they think they have merit.

As Jackson’s recommendations will require primary legislation there will have to be a debate in Parliament and perhaps elsewhere on how best to improve intellectual property dispute resolution in the UK (or at least England and Wales). I publish my submissions now in the hope that they may be able to inform that debate.

“Proposals for Reform of the Patents County Court


Jane Lambert

I agree with the Working Group that “at present SMEs are denied access to justice in IP cases because they are priced out of the system” and that “if litigation were made affordable, many more IP claims would be brought and defended.” I am also of opinion that Her Majesty’s government fails to comply with art 41 of TRIPs and art 3 of the Enforcement Directive by not providing cost-effective procedures for resolving infringement disputes and restricting access to justice to SMEs. I endorse the conclusion that any reformed procedure should be cheaper and that costs should be limited and predictable but I strongly disagree that the way forward is to re-launch the Patents County Court with its own rules of procedure that would differ in many respects from the Civil Procedure Rules.

Those objectives could be achieved better by abolishing the Patents County Court altogether and transferring its functions to the Comptroller-General of Patents, Designs and Trade Marks (“the comptroller”)[1] and harmonizing the procedures of the patents, trade marks and design tribunals. Primary legislation would be required to

· delete the words “and any other person may by agreement with each other” form s.61 (3) of the Patents Act 1977;[2] and

· amend the Registered Designs Act 1949, the Copyright Designs and Patents Act 1988, the Trade Marks Act 1994 and the statutory instruments implementing the Community Trade Mark and Community Design Regulations in the UK to enable the comptroller to hear any claim that falls within paragraphs 2.2 [3] and 18.1 ;[4] of the Part 63 Practice Direction;

· harmonize the practice of the existing IPO tribunals by for example introducing the Appointed Person into patents, designs and other intellectual property claims; and

· confine appeals to appeals from the Appointed Person to the High Court or Court of Appeal on a point of law only.

I fear that the Working Group’s proposals run flat in the face of the Ministry of Justice’s policy of simplifying civil justice within the courts and tribunals structures. Should a pan-European intellectual property court[5] ever be formed the PCC will provide a fourth forum for the resolution of IP disputes competing for specialist work with the Patents Court, the IPO and the new European court.

If the PCC is to remain I am strongly against special rules and practice directions for its business, particularly if they are a common and civil law hybrid. The CPR as amplified and clarified by the Chancery and Patents Court Guides should continue to apply. Perhaps the streamlined procedure could become the default procedure. I agree that applications should be in writing except where there is a special reason for a hearing and in those few applications where a hearing is justified as much as should be done by telephone or video link. Two days may be enough for patent trials which are more likely to turn on the law or the construction of the specification than on fact. They are unlikely to be enough for copyright, breach of confidence or passing off where there is more likely to be a dispute of fact. I agree that costs should be limited to a scale but they should be the same as for the IPO.

3 July 2009

The Media Centre
7 Northumberland Street
T 0870 990 5081
F 0870 990 5082

[1] The Chief-Executive of the UK Intellectual Property Office who is also known confusingly as “the registrar” in trade mark and .design matters.

[2] As the section now stands it reads “The proprietor of a patent and any other person may by agreement with each other refer to the comptroller the question whether that other person has infringed the patent and on the reference the proprietor of the patent may make any claim mentioned in subsection (1)(c) or (e) above.”

The need for agreement by all parties effectively stymies this provision forcing all patentees to go to court where they risk substantial costs should their action fail.

[3] “The following claims must be dealt with in the court –

(1) any matter arising out of the 1977 Act, including –

(a) infringement actions;

(b) revocation actions;

(c) threats under section 70 of the 1977 Act; and

(d) disputes as to ownership;

(2) registered designs;

(3) Community registered designs; and

(4) semiconductor topography rights.”

[4] “Any of the following claims must be brought in the Chancery Division, a Patents County Court or a county court where there is also a Chancery district registry –

(1) copyright;

(2) rights in performances;

(3) rights conferred under Part VII of the 1988 Act;

(4) design right;

(5) Community design right;

(6) Olympic symbols;

(7) plant varieties;

(8) moral rights;

(9) database rights;

(10) unauthorised decryption rights;

(11) hallmarks;

(12) technical trade secrets litigation;

(13) passing off;

(14) geographical indications;

(15) registered trade marks; and

(16) Community registered trade marks”

[5] Whether it is a specialist chamber of the European Court of Justice as proposed in some of the earlier drafts pf a Community patent regulation.”

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Trade Marks: Firecraft – a Cautionary Tale and More Work for the IP Bar

In Evans and another v Focal Point Fires Plc [2009] EWHC 2794 Mr. Justice Peter Smith granted summary judgment to the claimants in a claim for passing off. The claimants, who had sold fire surrounds in partnership under the name “Firecraft” since 1991, sued one of the UK’s largest manufacturers of gas fires for marketing its products under the registered trade mark FIRECRAFT since May 2001.

The basis of the judge’s decision was that the issue of passing off had already been determined in the Trade Marks Registry of the IP Office by the hearing officer, Mr. James, on behalf of the Registrar in invalidation proceedings. By his decision of 18 Nov 2008 Mr. James declared the registration invalid under s.47 (2) (b) of the Trade Marks Act 1994 on the ground that the claimants had an “earlier right” within the meaning of s.5 (4) (a) of the Act. That sub-section provides:
“A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented-
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade,”
Even though, as Mr. Geoffrey Hobbs QC observed in WILD CHILD [1998] RPC 455, an invalidity hearing in the Registry is very different from a passing off trial in the High Court in that such hearings tend to last only a couple of hours and evidence is rarely tested by cross-examination, and despite the judgment of the Court of Appeal in Special Effects Ltd v L’Oreal SA and Another [2007] ETMR 51, [2007] EWCA Civ 1, [2007] Bus LR 759, [2007] RPC 15 that opposition proceedings are not res judicata the judge held that the defendant had no real prospect of success in defending the passing off action.

As the IPO observed in its latest Tribunal Practice Note TPN 6/2009 Mr. Justice Peter Smith’s decision has “ramifications” and “significant consequences”. Accordingly all invalidation proceedings under s.5 (1), (2), (3) and (4) will require a hearing (“yea”) and require the attendance of the parties or their legal representatives (“whoopee”)!
Posted in abuse of process, Fiirecraft, issue estoppel, res judicata, TPN 6/2009, Trade Marks | Leave a comment

Patents: US Patent Filings

A table of the top 50 US patent filings for 2009 appears in a press release by Kivett & Co, Communications based on data analysed by IFI Patent Intelligence. Top of the list is IBM with 4,914 patent applications followed by Samsung (3,611), Microsoft (2,906), Canon (2,206) and Panasonic (1,829).

The presence of a Korean company as number 2 followed by Japanese companies in 4th and 5th slots has been the focus of attention in the USA. According to the press release 51% of all applications were made from overseas: 23% from Japan, 5.6% from South Korea and Germany 5.2%. Sadly there were no British applicants in the top 50 and the top European applicant was Siemens of Germany with 716 applications.

The press release notes some American successes: GM up by 68% since last year and Cisco, Boeing and Xerox by 30%, 26% and 18% respectively.

See also Steve LeVine’s article in Business Week: “IBM may not be the Patent King after all”.

For a table of patent grants for the UK for 2007 and 2008 see the IPO’s Facts and Figures for 2008.

See also my article “Korea: an IP Giant” which I published on 10 Jan.
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Patents: Molnlycke v BSN

This is another case on Regulation (EC) No. 44/2001 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters. The main issue was whether a claim in England for infringement of a European patent should be stayed while an application for a declaration of non-infringement proceeded in Sweden under art 27 (1) of that Regulation. It turned on whether the claim in England was between the same parties and involved the same subject matter as the proceedings in Sweden.

The Applications
In Mölnlycke Health Care AB and another v BSN Medical Ltd. and another [2009] EWHC 3370 (Pat) the defendants applied for a stay of the English proceedings because they had applied for declarations in the Stockholm district court that the patent in suit did not prevent them from marketing their Cutimed Siltec wound dressings in the UK. The claimants made a cross application for an interim injunction to restrain BSN from marketing that product until judgment or further order. The application and cross-application came on before Mr. Justice Floyd.

The Legislation
Art 27 (1) of the Regulation provides that “[w]here proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.” The respondents. Mölnlycke Health Care AB (“the Swedish company” or “MAB”) and its UK subsidiary and exclusive licensee, Mölnlycke Health Care Ltd. (“the British company” or “MUK”), opposed the application on the ground that the Swedish proceedings did not involve the same cause of action and was not between the same parties. The British company was not party to the Swedish application and they contended that the claim in England was for damages for infringement of the patent in England.

The Cases
The Court of Justice of the European Union had considered art 27 in Case 406/92 The Tatry [1995] 1 Lloyd’s Rep 302, [1995] All ER (EC) 229, [1995] 1 LLR 302, [1994] ECR I-5439, [1999] 2 WLR 181, [1995] ILPr 81, [1999] QB 515, [1994] ECR I-05439, [1995] CLC 275 and Drouot Assurances [1999] Lloyd’s Rep IR 338, [1998] ECR 3075, [1998] ECR I-3075, [1999] QB 497, [1998] CLC 1270, [1998] ILPr 485, [1999] 2 WLR 163, [1998] All ER (EC) 483, [1999] Lloyds Rep IR 338. These had been reviewed by the Court of Appeal in Kolden Holdings v Rodette Commerce [2008] EWCA Civ 10, [2008] Bus LR 1051. Lord Justice Lawrence Collins (as he then was) discerned the following guidance from those cases:
“The starting point is that these general propositions can be derived from The Tatry and Drouot. First, the object of article 27 is to prevent parallel proceedings in different member states and to avoid conflicts between decisions and irreconcilable judgements: The Tatry, para 32; Drouot, para 17. Second, the term between “the same parties” has an independent or autonomous meaning:The Tatry, para 47. Third, in considering whether two entities are the “same party” for the purposes of applying the regulation, the court looks to the substance, and not the form: The Tatry. Fourth, although the parties must be “identical” (the The Tatry, para 33, Drouot, para 18) this identity is not destroyed by the mere fact of there being separate legal entities involved: in The Tatry in the English proceedings the party was the sister-ship, and in the Dutch proceedings was the shipowner: in Drouot the barge owner and the hull insurer were held to be capable of being the “same parties”. Fifth, whether they are identical for this purpose may depend on whether there is such a degree of identity between the interests of the entities that a judgement given against one of them would have the force of res judicata as against the other (Drouot, para 19). Sixth, it will also depend on whether the interests of the entities are identical and indissociable, and it is for the national court to ascertain whether this is in fact the case; Drouot, para 23. In the context of a subrogated claim the court also emphasised that the insured would not be in a position to influence the proceedings: Drouot, para 19.”
The Decision
Applying those guidelines the judge decided that the British company’s interests in the English litigation were not necessarily the same as those of the Swedish company in the Swedish proceedings:

“31.The most difficult question is whether, in the context of the present case, the interests of the parties in the two actions are identical and indissociable. At one, rather high level the interests of MAB in Sweden and MAB and MUK together in the UK are identical: an interest in preventing the infringement of MAB’s patent. But Mr Purvis QC submits that MUK have, by the acquisition of the exclusive licence, acquired the right to protect its UK business from damage. There is as yet no counterclaim for infringement in Sweden, and, he submits, it may not be possible under the Convention for an additional party to counterclaim there, particularly as Article 6(3) only allows for jurisdiction to be founded for a counterclaim “arising from the same contract or facts on which the original claim was based”. So, if MUK is treated as the same party as MAB, MUK may be deprived of a right to damages which is distinct from any possessed by MAB.

32. I have come, somewhat reluctantly, to the conclusion that I must accept those submissions. I think it would be wrong to treat MUK as the same party when the effect may be to deprive it of the benefit of its exclusive licence in this way. This is not a case like
Kolden where a party has acquired the whole of the benefit of a contract, leaving the assignor with nothing – MUK has been granted a specific right which is additional to the right which MAB continues to hold. Moreover it is not possible for MUK to assert its right independently of MAB, because of Section 67(3) of the Act. To put it another way, the interest of MUK which is in play in the English action is different to any interest of MAB which is in play in Sweden. Moreover, even if this were to be an answer to this point, there is no evidence before me which would justify the assumption that MUK would be able to launch a counterclaim in Sweden.”

Despite his finding that the British and Swedish companies had different interests and the fact that one was an action for damages for infringement of a European patent in Britain while the other was an application for a declaration of non-infringement Mr Justice Floyd was reluctant to find that the causes of action were different.

The Injunction
The judge refused to grant an interim injunction on the grounds that the claimants had left it too late. They had been aware of the defendants’ marketing plans since April and of actual sales since September 2009. They had obstructed the Swedish proceedings and had taken no steps to enforce their patents elsewhere in Europe. Had they moved more quickly the action might well have come to trial before the hearing of this application.

Posted in Brussels Convention, Molyncke v BSN, Patents, Reg 44/2001 | Leave a comment