An uncontested application was filed by the proprietor Emerson Electric Co under rule 10(2) of the Patents Rules 2007. As a result, it was found that Shawn M Chawgo should be mentioned as a joint inventor along with Todd A Westley, Richard W Ballas, Richard R Bowles and Brian A Mitchell in the granted patent … Continue reading Emerson Electric Co, John Mezzalingua Associates, Inc, Todd A Westley, Richard W Ballas, Richard R Bowles, Brian A Mitchell and Shawn M Chawgo (Patent): IPEC 17 Feb 2015
(Patents) ‘The United Kingdom courts have jurisdiction to prevent vexation and oppression by persons subject to their jurisdiction. In particular, the courts are entitled to prevent persons domiciled in this country from being submitted to vexatious or oppressive litigation whether started or to be started in this country or another country. As was stated in … Continue reading Fort Dodge Animal Health Ltd v Akzo Nobel Nv: CA 27 Oct 1997
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
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
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
The employee had patented in the US a trading system he invented whilst employed by the defendant, who now sought ownership. He appealed a finding that the inventions had been made during the normal course of his employment. The employment contract provided: ‘All trade secrets, inventions, written documents, and other confidential information developed or created … Continue reading Liffe Administration and Management v Pinkava and Another: CA 15 Mar 2007
IPO The application relates to a method of predicting the behaviour of a process using a computer program. It was accepted that predicting the behaviour of a process is excluded under section 1(2) as being a computer program as such, unless the prediction is used for control or diagnostic purposes. Amendments to the claims were … Continue reading General Electric Company (Patent): IPO 20 Jan 2012
IPO The Hearing Officer decided not to refuse a request for an opinion on the validity of GB 2377538 B. The request was based on material considered by the EPO when refusing an equivalent European application. The proprietor of the patent was of the view, despite the refusal of the EP application, and an equivalent … Continue reading Helimedia Limited (Patent): IPO 15 Jun 2010
IPO The patent application relates to a golf putter having a measurement scale and sighting means to estimate the distance to the hole. The examiner had objected that new subject matter had been added contrary to section 76, that the invention lacked inventive step in the light of four prior specifications and that it was … Continue reading Hideaki Koiwai (Patent): IPO 31 Dec 2007
IPO The application relates to a method of enabling an application running on an operating system on a portable computing device to access files stored on removable storage medium. Memory on different devices is typically managed according to different directory structures. In practice, this means that a file request from a device running on one … Continue reading Symbian Ltd (Patent): IPO 20 Aug 2007
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
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 Hearing Officer found that the proprietor, represented by the General Manager (the Directing Mind), had effectively taken reasonable care to see that the sixteenth year renewal fee was paid by issuing standing instructions that renewal fees should be paid automatically on any overseas patent which was licenced, even if its Japanese parent patent … Continue reading Sumitomo Rubber Industries Limited (Patent): IPO 14 Nov 2003
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
IPO In early January 2002, Bruker SA assigned the patent in suit to Hightechcare SA. The patent was to be paid for in instalments ending on 31st December 2003, so Bruker insisted on keeping the files until that date. The assignment contained no arrangements as to who should renew the patent in the period until … Continue reading Bruker Sa (Patent): IPO 21 Jul 2006
IPO In section 27 opposition proceedings, the opponent (Laird Security Hardware Limited) argued that the application to amend should be refused on the grounds that it contravenes section 76 in that it introduces additional matter; that it contravenes section 14 in that the claims as amended are not clear; and that it does not rectify … Continue reading Archibald Kenrick Sons Limited v Laird Security Hardware Limited: IPO 15 Mar 2006
Appeal against refusal to admit supplementary statement of case. The claimant had, while employed by the defendant created a pump which came to be widely used in the management of diabetes. He was seeking recompense for his contribution. Judges: Mann J Citations: [2009] EWHC 3164 (Ch), [2010] RPC 11, [2010] Bus LR 761, (2010) 33(2) … Continue reading Shanks v Unilever Plc and Others: ChD 3 Dec 2009
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s right to the invention and … Continue reading Markem Corporation and Another v Zipher Ltd: CA 22 Mar 2005
The applicant appealed rejection of its application for a patent for a method and apparatus for modelling synthetic crystalline structures. The apparatus would involve (indeed consist of) a computer programmed for the task. Held: A pure software application or method did not become registrable merely because it took control of a computer screen; it was … Continue reading In Re A Patent Application No 9204959 2 by Fujitsu Ltd; Merrill Lynch, Gale, and Fujitsu Limited’s Application: ChD 18 Jun 1996
Appeal against refusal of patent – invention related to a scheme, rule, or method, for doing business and/or a mathematical method – financial derivatives. Judges: Mann J Citations: [2006] EWHC 1676 (Ch) Links: Bailii Statutes: Patents Act 1977 1(2) Jurisdiction: England and Wales Intellectual Property Updated: 12 July 2022; Ref: scu.263670
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration. Held: The appeals failed. There was no relevant technical effect in merely moving vehicles and their cargos around according to a routing algorithm. Judges: Pumfrey J Citations: [2007] EWHC 476 (Pat) … Continue reading Cappellini and Bloomberg, Re: PatC 13 Mar 2007
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
The appellant challenged dismissal of its claim for patent infringement. The judge had held that the design was obvious, involving essentially only the collocation of two known features. Held: Collocation was no more than a species of obviousness, and the test remained to be performed as to whether the bringing together of the two ideas, … Continue reading SABAF SpA v MFI Furniture Centres Ltd and Another: CA 11 Jul 2002
IPO The two applications relate to a composition for bone health maintenance and a composition for use during lactation, respectively.Prior to considering the inventiveness of the claims of these two applications, the hearing officer addressed the impact of the decision in Human Genome Sciences v Eli Lilly on the relative effects of the jurisprudence of … Continue reading Ajit Lalvani, Kartar Singh Lalvani Robert Taylor (Patent): IPO 23 May 2013
The appellants resisted disclosure to the revenue of advice it had received. It claimed legal advice privilege (LAP), though the advice was from its accountants. Held: (Lords Sumption and Clarke dissenting) LAP applies to all communications passing between a client and its lawyers, acting in their professional capacity, in connection with the provision of legal … Continue reading Prudential Plc and Another, Regina (on The Application of) v Special Commissioner of Income Tax and Another: SC 23 Jan 2013
Rehearing/Review – Little Difference on Appeal The appellant asked the Court to reverse a decision on the facts reached in the lower court. Held: The appeal failed (Majority decision). The court’s approach should be the same whether the case was dealt with as a rehearing or as a review. Tanfern was limited to appeals from … Continue reading Assicurazioni Generali Spa v Arab Insurance Group (BSC): CA 13 Nov 2002
The original inventor obtained a patent for a brake fluid protection system. A loan was raised against the patent, assigning also the future developments of the idea. The loan was called in, and then assigned to the defenders, who took the idea forward obtaining further patents. The pursuer asserted infringement. Held: The loan transferred all … Continue reading Buchanan v Alba Diagnostics Limited: HL 5 Feb 2004
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not require that one should be aware that one is infringing: ‘whether or not a person is … Continue reading Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc: HL 26 Oct 1995
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was primarily amongst surfers. The Hearing Officer conducted a ‘multi-factorial’ comparison, and rejected the opposition … Continue reading Bessant and others v South Cone Incorporated; in re REEF Trade Mark: CA 28 May 2002
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
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
IPO Genentech Inc, the proprietors of Patent Number EP(UK) 1 187 632 B1, entitled ‘Treatment with Anti-ErbB2 Antibodies’, granted on 3 December 2008, gave notice on 16 January 2014 of an offer to surrender this patent under Section 29 of the Act. At this time, the patent was also the subject of revocation proceedings in … Continue reading Genentech Inc (Patent): IPO 11 Aug 2014
IPO The application relates to a method of computationally modelling production from a subterranean region with reference to a wellbore and surrounding formation, such as may be encountered in oil and gas exploration and production. The modelling typically provides simulations which predict the flow of oil, water and/or gas flow from a formation, using a … Continue reading Senergy Holdings Limited (Patent): IPO 4 Feb 2015
The application relates to a custom application builder for supply chain management. In particular a user wanting access to supply chain related data may build a ‘custom’ application using data in one or more particular ‘modules’, respective modules relating to subsets of data in the supply chain such as purchase order data, inventory data, forecasting … Continue reading I2 Technologies Us, Inc (Patent) O/416/10: IPO 1 Dec 2010
Entitlement, Inventorship – This was an action brought by the wife and successor-in-title of one of the joint inventors against the other to remove him as both a joint inventor and co-owner. The patent concerned a standalone LED display interconnectable with itself which shows an editable picture. The hearing officer held that the attempts by … Continue reading Surinder Palkaur v Bhupinder Seran (Patent): IPO 30 May 2014
Patent application GB 1009825.9 relates to electrochemical protection of steel in reinforced concrete exposed to the air. The applicants had been unable to satisfy the examiner that the claimed invention was novel and that amendments made to the application had not added matter. Following a hearing at which the applicants provided more information on the … Continue reading Gareth Glass, Adrian Roberts and Nigel Davison (Patent): IPO 20 Aug 2013
IPO The application concerns a gene called VHZ that encodes a phosphatase. The claims at issue are second medical use claims that are directed to agents against VHZ for use in the treatment of cancers in which VHZ is overexpressed. The examiner had objected that the application only provides support for the use of anti-VHZ … Continue reading Agency for Science, Technology and Research (Patent): IPO 28 May 2013
No Pattern Established to Patent Computer Systems The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was taking a different approach to the … Continue reading Symbian Ltd v Comptroller General of Patents: CA 8 Oct 2008
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’). Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that … Continue reading Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc: HL 21 Oct 2004
The company had obtained legal advice but had taken it from their accountants. The Revenue sought its disclosure, and the company said that as legal advice it was protected by legal professional privilege. Held: The material was not protected. The privilege given under the Act by virtue of the Morgan Grenfell decision was limited to … Continue reading Prudential Plc and Another, Regina (on the Application of) v Special Commissioner of Income Tax and Another: Admn 14 Oct 2009
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
Allegation of infringement of patent for airline seats. The claimant sought to challenge the grant of a European Patent. Held: Virgin’s appeal was dismissed. England had surrendered jurisdiction to review or investigate the decision of European Patent Office (EPO) to register a patent Patten, Black, Kitchin LJJ [2013] EWCA Civ 1713, [2013] WLR (D) 511, … Continue reading Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd and Others: CA 20 Dec 2013
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
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The defendant had charged his property to the Halifax. Abbey supplied funds to secure its discharge, but its own charge was not registered. It sought to take advantage of the Halifax’s charge which had still not been removed. Held: A mortgagee whose loan is used to repay another charged debt is subrogated to that debt, … Continue reading Boscawen and Others v Bajwa and Others; Abbey National Plc v Boscawen and Others: CA 10 Apr 1995
Account taken of circumstances wihout ambiguity The respondent gave advice on home income plans. The individual claimants had assigned their initial claims to the scheme, but later sought also to have their mortgages in favour of the respondent set aside. Held: Investors having once assigned their causes of action to the ICS, could not later … Continue reading Investors Compensation Scheme Ltd v West Bromwich Building Society: HL 19 Jun 1997
Contractor and Client Copyrights The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract. Held: A Joint authorship claim required that the contributor had made some direct contribution to the words appearing in the eventual published item. … Continue reading Robin Ray v Classic FM Plc: PatC 18 Mar 1998
The 1977 Act conferred privilege on any communication involving patent attorneys made for the purpose of proceedings before the Comptroller of Patents or the Patents Appeal Tribunal. The defendants claimed privilege for all communications with their . .
