The company appealed from refusal of re-instatement of its patent which had expired through non-payment of renewal fees. On payment of the fees, the Patent Office objected that the applicant was not the registered proprietor. Held: The relevant power under section 28(4) was no longer available to the Comptroller. By that stage, the only remaining … Continue reading Subsea Intervention Ltd v The Comptroller General of Patents: ChD 19 Nov 2015
One plaintiff was the exclusive licensee of a registered design. The defendant sold articles alleged to infringe the design right. The registered owner had a statutory right to sue for infringement. But the question was whether the licensee could . .
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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 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
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
The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether what they said amounted to a threat was a question of fact to be decided … Continue reading Brain v Ingledew Brown Benson and Garrett and Another: CA 1996
IPO The opponent opposed the patentee’s request under section 27 of the Patents Act 1977 for amendment of the patent, arguing, inter alia, that the patentee had delayed excessively before bringing the request to amend. The patentee sought the striking out of this ground following the amendment to the Patents Act which required the Comptroller … Continue reading Strix Ltd and Otter Controls Ltd (Patent): IPO 2 Jan 2009
IPO The invention provided, in a brokerage system which allowed a user to obtain digital content from third party providers via a networked system, a means to store information about the functionality and capability of one or more devices held by the user and supply the information to the provider so that the provider could … Continue reading ATT Knowledge Ventures, LP (Patent): IPO 2 Jul 2008
IPO All three applications (which were unrelated) related to ways of determining the awards and bonuses to be paid to players of gaming machines, and were refused. Applying the four-step Aerotel/Macrossan test in the light of the recent judgments in Oneida Indian Nation and IGT( [2007] EWHC 0954, 1341) the hearing officer held that, irrespective … Continue reading IGT (Patent) O/184/07: IPO 4 Jul 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 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
The applicant failed to respond to an examination report under section 18(3) of the Act, by the final date specified in the report for reply. He did not communicate with the Office at all until a letter was sent to him some 18 months after the final date for reply warning that the end of … Continue reading Samuel Abekah-Mensah (Patent): IPO 1 Feb 2006
PO Patents – Inter Partes Decisions – In an EP patent that had been found bad for lack of novelty and obviousness (see Decision O/147/97) an opportunity for amendment was given. When the applicant tried to take advantage of this opportunity, the proposed amendments were opposed, initially by Morgan only and subsequently by both Morgan … Continue reading Kaiser v Morgan and Schmidt: IPO 14 Aug 2000
As a result of an uncontested application filed under section 13(1) by Ayumu Taniguchi and Juni-ichi Tanabe, it was found that Ayumu Taniguchi and Juni-ichi Tanabe should be mentioned as a joint inventors in the granted patent and directed that an addendum slip mentioning them as a joint inventors be prepared for the granted patent … Continue reading Ayumu Taniguchi Juni-Ichi Tanabe v Toyo Kohan Co Ltd (Patent): IPO 27 Jan 2000
The applicants appealed against rejection of their claims for patents under section 1(2) of the 1977 Act. Judges: Lewison J Citations: [2009] EWHC 343 (Pat), [2009] Bus LR D51, [2009] FSR 19 Links: Bailii Statutes: Patents Act 1977 1(2) Jurisdiction: England and Wales Intellectual Property Updated: 23 July 2022; Ref: scu.317963
(New South Wales) The manager and a sales representative of TECO set up separate competing business. Anderson with his wife, began a new company Mallory Trading Pty Ltd which acted as a a fraud on TECO. On learning of each others acts, they joined forces and diverted business and profits from TECO. In July 1977 … Continue reading Timber Engineering Co Pty Ltd v Anderson: 1980
cw Inter Partes Decisions – Patents Judges: Mrs S Williams Citations: GB 2323411, O/120/02 Links: PO Statutes: Patents Act 1977 13(1) Intellectual Property Updated: 28 April 2022; Ref: scu.177152
Patent revocation action [2000] EWHC Patents 34, [2001] RPC 25 Bailii England and Wales Cited by: Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, … Continue reading Novo Nordisk A/S v DSM NV; DSM NV’s Patent: PatC 21 Dec 2000
validity of patent. Held: No formula should distract the court from the statutory question. [2009] EWCA Civ 646, [2009] RPC 23, (2009) 109 BMLR 78, (2009) 32(9) IPD 32062 Bailii England and Wales Citing: Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996 B alleged infringement by M of its patented nebulizer. M replied … Continue reading Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and Another: CA 2 Jul 2009
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
Held: The court must answer a relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim Lord Justice Moore-Bick Lord Justice Lewison And Lord Justice Kitchin [2012] EWCA Civ 1234, [2013] RPC 27 Bailii England and Wales Cited … Continue reading MedImmune Ltd v Novartis Pharmaceuticals UK Ltd: CA 10 Oct 2012
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
IPO Inventorship – An uncontested application was filed by the proprietor Funky Moves Ltd under rule 10(2) of the Patents Rules 2007. As a result, it was found that Thomas David Binnie should be mentioned as a joint inventor along with Ralf Kinnert in the published patent application and granted patent for the invention and … Continue reading Funky Moves Ltd, Kinnert and Binnie (Patent): IPO 5 Jun 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
IPO Inventorship – An uncontested application was filed by Patrick Gaillard under rule 10(2) of the Patents Rules 2007. As a result, it was found that Patrick Gaillard should be mentioned as a joint inventor along with Adrian Bunce and Andrew Fusellier in the published patent application and directed that an addendum slip mentioning him … Continue reading Dynex Technologies, Inc, Bunce, Fusellier and Gaillard (Patent): IPO 26 Jun 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 and granted patent for the … Continue reading EV Offshore Limited, Thursby, Peck and Gibson-Ford (Patent): IPO 10 Jun 2014
Costs, Entitlement – This was a Decision on costs following an earlier substantive Decision on entitlement in favour of the defendants. Although the claimant’s presentation of its case had suffered from some defects, the hearing officer declined to depart from the standard scale of costs. An award on the scale was made to the defendant. … Continue reading Mclaughlin and Harvey Limited and Openhydro Group Limited (Patent): IPO 30 May 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 Shaun Peck and Chris Jay should be mentioned as joint inventors along with Jonathan Thursby in the published patent application for the invention and directed that … Continue reading EV Offshore Limited, Thursby, Peck and Jay (Patent): IPO 10 Jun 2014
Amendment, Entitlement – A request to amend the defendant’s counterstatement was opposed by the claimants. The hearing officer exercised his discretion in line with the overriding principle to deal with the case justly and allowed the amendment. Mr P Slater [2014] UKIntelP o22414, GB2421687 Bailii Patents Act 1977 13 37 England and Wales Intellectual Property … Continue reading Susan Grant v Teifion Emlyn James (Patent): IPO 22 May 2014
The alleged invention relates to a computer system and method for executing a point of sale transaction. In particular, the invention provides a point of sale terminal which is capable of receiving first price data from at least one item purchased by a customer and a server which receives both transaction data from the point … Continue reading Sainsbury’s Supermarkets Ltd (Patent): IPO 16 Apr 2014
The application relates to ‘System and method for super-augmenting a persona to manifest a pan-environment super-cyborg for global governance’. The Hearing Officer considered the application to lack both industrial application and sufficiency and subsequently refused the application. Mrs C L Davies [2013] UKIntelP o40113, GB1213494.6 Bailii Patents Act 1977 1(1)(c) 1493) Intellectual Property Updated: 23 … Continue reading Caleb Suresh Motupalli (Patent) O/401/13: IPO 4 Oct 2013
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section 70 relying on the statements. The judge held the statement inadmissible. Held: The plaintiff’s appeal failed. Where there … Continue reading Unilever plc v Procter and Gamble Company: CA 4 Nov 1999
The company sought to recover damages from a director who had acted dishonestly, by concealing a financial interest in a different company which had made loans to the claimant company. He replied that the claim was out of time. At first instance the first defendant had been found dishonest through non-disclosure, and that section 21 … Continue reading DEG-Deutsche Investitions und Entwicklungsgesellschaft mbH v Koshy and Other (No 3); Gwembe Valley Development Co Ltd (in receivership) v Same (No 3): CA 28 Jul 2003
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the appeal was against refusal. Held: Jacob LJ said: ‘the court must approach … Continue reading Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1: CA 27 Oct 2006
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
The claimants said that agents of the defendant had unlawfully accessed their mobile phone systems. The court was now asked whether the agent (M) could rely on the privilege against self incrimination, and otherwise as to the progress of the case. The claimant asserted that their claim was an intellectual property claim, allowing section 72 … Continue reading Gray v News Group Newspapers Ltd and Another; Coogan v Same: ChD 25 Feb 2011
The applicant had implemented an algorithm for solving square roots problems by embodying it within a computer chip. He appealed against refusal of the patent by the Patents Office.
Held: The appeal succeeded.
Aldous J said: ‘I have come . .
