The company appealed against rejection of its patent application, the objection being as to the invention’s patentability. The EPO had granted a European Patent. Judges: Patten J Citations: [2008] EWHC 518 (Pat), GB 0325145.1 Links: Bailii Statutes: Patents Act 1977 Citing: Cited – Astron Clinica Ltd and others v The Comptroller General of Patents, Designs … Continue reading Symbian Ltd v Comptroller General of Patents: PatC 18 Mar 2008
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Following its earlier main judgment in the case, the court made use of the CPR to award costs on an appeal. The overall result had been that the patent was found to be valid but not infringed. There had been huge costs. Smithkline sought costs on an indemnity basis, saying the court had certified the … Continue reading Smithkline Beecham Plc and Another v Apotex Europe Ltd and others: CA 16 Dec 2004
In an earlier interim decision relating to an application for revocation, the claims of the patent had been found to be invalid but the patentee was allowed the opportunity to file amendments under s.75 aimed at rectifying the defects found. A request to amend was subsequently filed which was opposed by the claimant for revocation. … Continue reading Linstol UK Limited v Huang (Patent): IPO 21 Nov 2012
The application related to method of storing data in a computer. The method relied on de-duplication of the data such that only one copy of the data is stored. If an attempt is made to store a further copy of the same data then instead of storing that same data again, a pointer to the … Continue reading Quantum Corporation (Patent): IPO 14 Nov 2012
IPO The application concerned a flood protection system. The Hearing Officer decided that the latest version of the claim on the official file at the end of the compliance period was anticipated by three earlier published patent applications. However, he decided that if the compliance period were to be extended, the applicant should be able … Continue reading Thomas R Cann (Patent): IPO 17 Oct 2012
The application was filed on 29 June 2009 by an applicant who was resident in China, but who had correctly provided a UK address for service. The application proceeded normally until 21 June 2011, when the Office sent the applicant a reminder that if he wished to continue with the application, the request for a … Continue reading Bode Oluwa (Patent) O/378/12: IPO 3 Oct 2012
IPO Patent applications GB0621068.6 and GB0621069.4 relate to methods where parthenogenesis is used to activate a human oocyte (i.e. stimulation of a human oocyte, without fertilisation by a sperm cell) to produce a parthenogenetically-activated oocyte or ‘parthenote’. GB0621068.6 concerns the production of human stem cells from such parthenotes, whilst GB0621069.4 concerns human synthetic corneas and … Continue reading International Stem Cell Corporation (Patent): IPO 16 Aug 2012
ICO The application relates to a method of providing a financial ‘risk score’ within the authorisation process of a wireless financial transaction. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and concluded … Continue reading Bank of America Corporation (Patent): IPO 4 Oct 2012
IPO The application relates to a computer system which implements a computer program for searching and displaying biological information stored in one or more databases by converting the information from the database(s) into a ternary matrix using three separate characters to represent biological information eg 0, 1 and |. The Hearing Officer applied the Aerotel/Macrossan … Continue reading Fabio Passetti Et Al (Patent): IPO 3 Jul 2012
A request by Mr Parfitt for an opinion was found to cover essentially the same issues already considered by an earlier opinion and a decision reviewing that earlier opinion. The Hearing Officer taking into account all the circumstances therefore refused the second request for an opinion Judges: Mr P Thorpe Citations: [2012] UKIntelP o26512, GB2436776 … Continue reading Duncan James Parfitt (Patent): IPO 10 Jul 2012
Berni Hambleton of Sterling IP initiated proceedings under section 72(1)(a) of the Patents Act 1977 for revocation of the patent on the grounds that the invention as defined in claims 1, 21 to 25 and 34 was not entitled to its earliest priority date, and that the invention as such lacked an inventive step over … Continue reading Hambleton of Sterling IP and Cold Spring Harbor Laboratory (Patent): IPO 6 Aug 2012
IPO An uncontested application was filed by Renovo Limited. As a result, it was found that Ann Helena Ledwith should be mentioned as a joint inventor in the published patent application and granted patent for the invention along with the currently named inventors, Mark William James Ferguson, Sharon O’Kane, David Fairlamb and Tracey Mason. It … Continue reading Renovo Limited, Ledwith, Williams Ferguson, O’Kane, Fairlamb and Mason (Patent): IPO 27 Jan 2011
IPO Industrial application – The application relates to an arrangement for producing power. The Hearing office held that (i) the invention was not capable of industrial application because its alleged mode of operation was contrary to well-established physical laws, and (ii) that the specification was not sufficient to enable the skilled man to produce a … Continue reading Peter Joseph Crowley (Patent): IPO 1 Aug 2007
IPO In a computer networked system for monitoring gaming machines and tables in a casino, information on player activity is sent to casino employees on portable handheld computers linked to the system allowing them to monitor play, identify the location of players and make awards of free games, goods or services. The contribution was assessed, … Continue reading IGT (Patent) O/120/07: IPO 9 May 2007
The hearing officer had deferred a decision on whether to order the claimant to give security for costs in revocation proceedings (see O/345/06) in order to allow either party to request a written opinion. The claimant so requested and the proceedings were stayed to await the opinion. This found that all claims lacked novelty over … Continue reading Ian Popeck v Runaway Technology, Inc (Patent): IPO 24 May 2007
IPO Added subject matter, Excluded fields (refused) – The invention related to a trajectory-based game of chance for implementation on a video gaming machine. The claim related to a gaming machine but in the light of Aerotel/Macrossan [2006] EWCA Civ 1371 it was agreed that the contribution was a data structure including a probability distribution … Continue reading IGT (Patent) O/054/07: IPO 22 Feb 2007
IPO The comptroller declined to deal with references under sections 8 and 12 at the joint request of both parties. Judges: Mr P Hayward Citations: [2007] UKIntelP o01907, O/019/07, GB 0228421.4 Links: Bailii Statutes: Patents Act 1977 8(7) 12(2) Intellectual Property Updated: 19 October 2022; Ref: scu.456534
As a result of an uncontested application filed under section 13(1) by Julious L Willett, it was found that Julious L Willett should be mentioned as a joint inventor in the patent granted and directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent. Judges: Mrs S Williams … Continue reading Willett v Biotechnology Research Development Corporation (Patent): IPO 31 Jul 2002
IPO The patent in suit relates to a portable data storage device which can be connected to the USB port of a computer. The Claimant (M-Systems) sought revocation of the patent on the grounds that the patent as granted included matter extending beyond that originally disclosed, was not novel or did not involve an inventive … Continue reading M-Systems Flask Disk Pioneers Ltd and Trek Technology (Singapore) Pte Ltd (Patent): IPO 8 Nov 2006
The Claimant withdrew his reference under Sections 13 and 37 and the Defendant asked for an award of costs on an ‘exemplary basis’. A decision on this issues was made on the papers and the Hearing Officer awarded the Defendants the sum of andpound;500 to be paid by the Claimant. Judges: Mr P Back Citations: … Continue reading Nigel Melling v William Butler David Birkett (Patent): IPO 28 Mar 2006
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other information. She had obtained employment with a customer of the claimant, and was said to carry out … Continue reading Caterpillar Logistics Services (UK) Ltd v Huesca De Crean: QBD 2 Dec 2011
The parties were co-proprietors of a patent. Mr Hughes appealed a decision confirming an order that the patent must be exploited. Held: The comptroller had the power to make such an order. Parliament could not have intended a deadlock situation between the proprietors to allow the frustration of the exploitation of the patent. Though given … Continue reading Hughes v Paxman: CA 23 Jun 2006
SC Kymab alleged that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The patents were concerned with biotechnology, and in particular the production of human antibodies using transgenic mice. By the priority date, the potential uses … Continue reading Regeneron Pharmaceuticals Inc v Kymab Ltd: SC 24 Jun 2020
Shutz sued Werit for patent infringement, Delta for patent infringement, trade mark infringement and passing off. Both actions concerned the same subject matter, namely intermediate bulk containers, otherwise known as IBCs, and the same patents. Shutz was the exclusive licensee of the three patents in suit and the second defendant in each case was the … Continue reading Schutz (UK) Ltd v Werit UK: PatC 23 Jan 2009
The claimant challenged the term given extending the defendant’s patent under a Supplementary Protection Certificate. Judges: Roger Wyand QC Citations: [2009] EWHC 659 (Ch) Links: Bailii Statutes: Patents Act 1977 34 Jurisdiction: England and Wales Intellectual Property Updated: 30 July 2022; Ref: scu.347452
The court was asked: ‘When a claim defines an invention partly by reference to excluded subject-matter e.g. a business method, how do you search the prior art?’ The company appealed against rejection of its request for a patent. Judges: Peter Prescott QC Citations: [2008] EWHC 568 (Pat), GB 0311200 Links: Bailii Statutes: Patents Act 1977 … Continue reading In re IGT / Acres Gaming Inc: PatC 19 Mar 2008
The parties to the action had given cross undertakings to support the grant of an interim injunction. A third party subsequently applied to be joined, and now sought to take advantage of the cross undertakings to claim the losses incurred through the giving of the ‘wrongful undertakings’ Held: The joined party, who had not itself … Continue reading Smithkline Beecham Plc Glaxosmithkline UK Ltd and Another v Apotex Europe Ltd and others (No 2): CA 23 May 2006
PO Patents – Inter Partes Decisions. – As a result of an uncontested application filed under section 13(1) by Cognis Deutschland GmbH and Co KG, it was found that Andrea Urban should be mentioned as a joint inventor in granted patent EP (UK) 1165887 and directed that an addendum slip mentioning her as a joint … Continue reading Cognis Deutschland Gmbh and Co Kg, Guido Baumoller, Achim Ansmann, Rolf Kawa, Dr Stephen Eichhorn And Andrea Urban – O/039/05: PO 14 Feb 2005
Patent validity – not an invention. Judges: The Hon Mr Justice Laddie Citations: [2004] EWHC 482 (Pat) Statutes: Patents Act 1977 1(2)(d) Jurisdiction: England and Wales Intellectual Property Updated: 27 June 2022; Ref: scu.194465
The claimant appealed a refusal of the divisional director to substitute itself as applicant for a patent. Held: The claimant had sold its assets to the respondent. The respondent claimed that an estoppel by representation existed, saying the claimant had made representations in the course of negotiations which it should not now be allowed to … Continue reading Xtralite (Rooflights) Ltd v Hartington Conway Ltd: ChD 31 Jul 2003
Slade LJ said: ‘If the plea of obviousness is to succeed, the court has to be satisfied that it would have appeared to the hypothetical technician, skilled in the art but lacking in inventive capacity, worthwhile to coat the helix of a self-pulling corkscrew with a friction-reducing material for purpose (a) or purpose (b) above … Continue reading Hallen Co v Brabantia (UK) Ltd: CA 1991
Hoover appealed a finding that Dyson’s patent was valid and infringed. They asserted the patent was not novel in the light of a US patent, and even so was obvious. One test was whether an application of the claimed patent would inevitably infringe the previous patent. Both parties had prepared models from the earlier patent. … Continue reading Dyson Appliances Limited v Hoover Limited: CA 4 Oct 2001
The claimant said that the defendant had, through its members visiting their premises, breached the licence under which they entered, by taking photographs and distributing them on the internet, and in so doing also infringing the performance rights of the claimant. Held: On breach of confidence, the parties had an arguable cases on each side, … Continue reading Heythrop Zoological Gardens Ltd (T/A Amazing Animals) and Another v Captive Animals Protection Society: ChD 20 May 2016
Where the pattern of the research programme which the notional skilled person would undertake can clearly be foreseen, it may be legitimate to take a step by step analysis. Floyd J said: ‘I think that the guiding principle must be that one has to look at each putative step which the skilled person is required … Continue reading Gedeon Richter Plc v Bayer Schering Pharma Ag: PatC 17 Mar 2011
The defendants had taken on the delivery of a quantity of the claimant’s computers. The equipment reached one depot, but then was lost or stolen. The parties disputed whether the Convention rules applied. UPS said that the claimant had agreed that the value of any one item did not exceed the stated limit. The claimants … Continue reading Datec Electronics Holdings Ltd and others v United Parcels Services Ltd: HL 16 May 2007
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four issues arose: (i) the construction of the claims (in particular, Claim 3 as … Continue reading Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another: SC 14 Nov 2018
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about how to identify the concept embodied in the invention which may constitute the ‘inventive step’ … Continue reading Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others: HL 9 Jul 2008
Virgin Atlantic Airways Ltd sought to recover damages exceeding 49,000,000 pounds for the infringement of a European Patent which did not exist in the form said to have been infringed. The Technical Board of Appeal of the European Patent Office had retrospectively amended it so as to remove with effect from the date of grant … Continue reading Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd: SC 3 Jul 2013
In a threat action for trade mark infringement, the plaintiff had only supplied services. The defendant made a general threat without limiting it to proceedings in respect of goods or services. The defendant argued that the threat would be understood as relating only to services, as that is all the plaintiff provided. Held: Section 70 … Continue reading Prince PLC v Prince Sports Group Inc: ChD 1998
The parties each made cable mechanisms for cars. There had been a patent dispute in Germany resulting in a finding of infringement, which finding was subject to appeal. A letter was sent in England referring to the German decision, stating that the company intended to enforce its rights. Held: In considering whether it was arguable … Continue reading Bowden Controls Ltd v Acco Cable Controls Ltd: ChD 1990
IPO The claimant launched entitlement proceedings in respect of four withdrawn and unpublished patent applications, arguing that the defendant had made the inventions during the course of his duties whilst employed by the claimant. The claimant argued that the defendant was a director of Cerise Innovation at the time when the inventions were made and … Continue reading Cerise Innovation Technology Ltd vAbdulhayoglu (Patent) O/067/00: IPO 23 Feb 2000
Costs – This was a Decision on costs following an earlier substantive Decision on entitlement in favour of the defendants. An award on the Comptroller’s scale was made to the defendants. Mr J Elbro [2014] UKIntelP o56814, GB 2469554 Bailii Patents Act 1977 8 12 37 England and Wales Intellectual Property, Costs Updated: 28 December … Continue reading Jackson-Ebben and Wine Innovations Ltd and Nash (Patent): IPO 24 Dec 2014
IPO Inventorship – An uncontested application was filed by the proprietor E.V. Offshore Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Matthew Gibson-Ford should be mentioned as a joint inventor along with Jonathan Thursby and Shaun Peck in the published patent application for the invention and directed … Continue reading EV Offshore Limited, Jonathan Thursby, Shaun Peck and Matthew Gibson-Ford (Patent): IPO 12 Jun 2014
The plaintiffs had applied for a product licence for a patented drug. To support its application, it supplied the authority with confidential information which the authority now sought to make use of the confidential information when considering later applications for licences for similar products. Held: The authority had a duty of public safety, and to … Continue reading In Re Smith Kline and French Laboratories Ltd: HL 9 Feb 1989
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which the relevant claim described as including a rear support back plate ‘extending vertically’ from a horizontal … Continue reading Catnic Components Ltd and Another v Hill and Smith Ltd: HL 1982
The claimant sought a share in the royalties from the song ‘A whiter shade of pale’ but had delayed his claim for 38 years. He had contributed the organ solo which had contributed significantly to the song’s success. He now sought a share of future royalties. Held: His appeal was allowed. Limitation did not apply, … Continue reading Fisher v Brooker and Others: HL 30 Jul 2009
Request for declaration of non-infringement of and for revocation of patents.
Held: Even if provisions are not listed in s130(7), it is undesirable for provision in our domestic law which in fact do correspond to provisions in the EPC to be . .
The patentees had two patents relating to parts of oil rigs, coming into play to clean drill bits of cuttings on retraction. The defendants sold re-conditioned frames for this process.
Held: Where the apparent exercise of a right of repair . .
IPO Evidence, Revocation – The defendants in this case objected to the admissibility of the claimant’s evidence-in-reply on the grounds that it was not strictly in reply, and could have been filed at an earlier . .
The parties disputed whether there had been an infringement of the claimant’s patent in respect for ‘intermediate bulk containers’ designed for the safe transport of liquids in bulk. They were a cage holding a plastic bottle. The defendant had a . .
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
