Citations: [1997] EWCA Civ 2174 Statutes: Patents Act 1977 12 Jurisdiction: England and Wales Intellectual Property Updated: 29 May 2022; Ref: scu.142571
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Patent action in which the claimant seeks a declaration of non-infringement (‘DNI’) against the patentee, the defendant (BOS) under section 71 of the Patents Act 1977. The subject matter of the EU patent (EP 3266631 B1) is part of a system of blinds installed in car windows. Judges: Sir Anthony Mann Citations: [2022] EWHC 2823 … Continue reading Lisa Draxlmaier Gmbh v Bos Gmbh and Co Kg: PatC 8 Nov 2022
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
Appeal against decision to rescind the grant of a patent. Citations: [2006] EWHC 725 (Pat) Links: Bailii Statutes: Patents Act 1977 Jurisdiction: England and Wales Intellectual Property Updated: 05 November 2022; Ref: scu.241788
The product of a process remained such despite application of a further process; There had been no loss of identity. Citations: Times 10-Dec-1996, [1996] EWCA Civ 1059 Statutes: Patents Act 1977 60(1)(c) Jurisdiction: England and Wales Intellectual Property Updated: 03 November 2022; Ref: scu.140926
IPO Excluded fields (refused), Inventive step – The invention relates to a computer-controlled system for ordering food and/or drink in a restaurant in which a projector mounted above the dining table is used to project plate shaped images of the actual food which can be ordered onto the surface of the table where customers are … Continue reading Compurants Ltd (Patent) O/187/12: IPO 4 May 2012
Entitlement, Inventorship, Striking out – The defendant requested that the reference under section 8 (now under section 35) be stuck out. The reasons given included that the claimant had delayed launching entitlement proceedings, had not filed any evidence and had misrepresented the invention in its statement of claim. The request to strike out was refused … Continue reading Andrew Cooke and Watermist Limited (Patent): IPO 8 Feb 2012
The description in a patent application’s specification must be of an invention. Citations: Ind Summary 28-Nov-1994 Statutes: Patents Act 1977 1(1) 72(1) Jurisdiction: England and Wales Cited by: Appeal from – Biogen Plc v Medeva Plc HL 31-Oct-1996 The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the … Continue reading Biogen Inc v Medeva Plc: CA 28 Nov 1994
IPO The application relates to a computer-controlled interactive food and/or drink ordering system for direct use by a customer where the prices are varied according to demand. It is known for restaurants and bars to vary the prices of food and/or drink. For example, the application refers to a ‘happy hour’ as a time when … Continue reading Compurants Ltd (Patent) O/282/11: IPO 11 Aug 2011
IPO The application relates to a computer-controlled interactive food and/or drink ordering system that can generate and print the bill at the request of the customer. In conventional restaurants, when requesting a bill, customers usually need to attract a waiter which can take some time to do. There may also be a further delay before … Continue reading Compurants Ltd (Patent) O/284/11: IPO 11 Aug 2011
IPO The application relates to a computer-controlled interactive food and/or drink ordering system that can prompt a customer to place an order. In conventional restaurants, a waiter will present a customer with a menu and then return a few minutes later to take his order. On some occasions, the customer may not have made up … Continue reading Compurants Ltd (Patent) O/283/11: IPO 11 Aug 2011
IPO The application relates to an arrhythmia model animal that enables an evaluation of the QT interval prolongation by a drug. The QT interval is the time period which elapses between the Q wave and the T wave in the electrical cycle of the heart. Some drugs can prolonging the electrocardiogram QT interval and induce … Continue reading Ina Research Inc (Patent): IPO 28 Jun 2011
IPO An uncontested application was filed by Toyota Jidosha Kabushiki Kaisha originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patents Rules 2007. It was found that that Steffen Nowotny and Siegfried Scharek should also be mentioned as joint inventors in relation … Continue reading Toyota Jidosha Kabushiki Kaisha, Yoshinori Ishikawa, Akio Sato, Steffen Nowotny and Siegfried Scharek (Patent): IPO 16 Dec 2008
(Patent) An uncontested application was filed by Smart Holograms Limited under rule 10(2) of the Patents Rules 2007 and section 13(3) of the Patents Act 1977. It was found that Roger Bradley Millington should be mentioned as sole inventor in relation to any patent granted for the invention and directed that an addendum slip mentioning … Continue reading Smart Holograms Limited,Millington, Lowe, Davidson, Blyth, Kabilan and Marshall: IPO 27 Nov 2008
IPO An uncontested application was filed by NATS (EN ROUTE) PLC originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patent Rules 2007. The applicants also filed an uncontested application under section 13(3). It was found that Stephen James Pember and Alison … Continue reading Nats (En Route) Plc, Brian Janes, Stephen James Pember and Alison Laura Udal Roberts (Patent): IPO 13 Oct 2008
IPO The application related to a device for generating electricity by pumping water to an impeller attached to a generator. The hearing officer upheld the examiner’s objection that the invention operated in a manner contrary to well-established physical laws and was therefore neither capable of industrial application nor sufficiently disclosed. Citations: [2008] UKIntelP o26608 Links: … Continue reading Norman Paterson and Nicholas Jones (Patent): IPO 30 Sep 2008
IPO An uncontested application was filed by Sankar K. Paul, Luis D. Borges and Allen F. Horn III, originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the patents Rules 2007. As a result, it was found that Sankar K. Paul, Luis D. … Continue reading World Properties Inc, Sankar K Paul, Luis D Borges and Allen F Horn Iii, Murali Sethumadhavan, Richard T Traskos and Michael E St Lawrence (Patent): IPO 7 Jul 2008
IPO The invention concerns the ranking of Internet search results in the context of mobile phone access to Internet content with content providers paying to improve their position in the ranking of search results. The invention takes into account the quantity of data to be transmitted, the cost of transmission and the payment offered by … Continue reading Cvon Innovations Ltd (Patent): IPO 28 Jul 2008
IPO An uncontested application was filed by MSP Corporation, originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patents Rules 2007. As a result, it was found that Nicholas C Miller should also be mentioned as a joint inventor in the published … Continue reading Msp Corporation, Nicholas C Miller, Virgil A Marple, Daryl L Roberts and Benjamin Y H Liu (Patent): IPO 16 Jul 2008
IPO An uncontested application was filed by ABB Research Ltd under rule 10(2) of the Patents Rules 2007. As a result, it was found that Sean Keeping, Roger Arnold, Martin Ashford and Steve Eeles should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning … Continue reading Abb Research Ltd, Sean Keeping, Roger Arnold, Martin Ashford, Steve Eeles and Others (Patent): IPO 18 Jul 2008
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 The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/186/08: IPO 30 Jun 2008
The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was did … Continue reading Komatsu Ltd (Patent) O/187/08: IPO 30 Jun 2008
IPO The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/188/08: IPO 30 Jun 2008
IPO The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/185/08: IPO 30 Jun 2008
IPO The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/184/08: IPO 30 Jun 2008
IPO The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/183/08: IPO 30 Jun 2008
IPO The application related to a double-layered sintered sliding member used for a connecting device, such as a thrust bearing, of a construction machine. The invention was characterized by compositional features of the alloy used. The hearing officer held that the characterization by means of percentage components of constituents present in a martensite phase was … Continue reading Komatsu Ltd (Patent) O/189/08: IPO 30 Jun 2008
IPO Mr. Farr applied under section 37 of the Patents Act 1977 to be named proprietor/inventor of EP 1268313. The proprietors, Orbis, responded by requesting summary dismissal of Mr. Farr’s claim on the grounds that he had no reasonable chance of success and that the reference was made out of time under section 37(5) of … Continue reading Kenneth Farr; Orbis Corporation (Patent): IPO 11 Jun 2008
IPO The invention related to a gaming apparatus and method in which 2D image data was converted into a 3D video image and displayed on a non-planar 3D screen. The examiner had objected that the contribution of the invention was excluded under the above categories, but (although it was not apparent from the specification as … Continue reading IGT (Patent) O/149/08: IPO 23 May 2008
IPO As a result of an uncontested application filed under section 13(1) of the Patents Act 1977 by MSP Corporation, the relevant provision now being rule 10(2) of the Patents Rules 2007, it was found that Nicholas C Miller should also be named as a joint inventor in the published patent application and granted patent … Continue reading MSP Corporation, Nicholas C Miller, Virgil A Marple, Daryl L Roberts and Benjamin Y H Liu (Patent): IPO 22 May 2008
The applications relate respectively to a plasma reactor and a laser, both dependent for their operation on a ‘new hydrogen species’. The new hydrogen species involves the electron (the hydrogen atom has one electron) existing in a lower energy state than the lowest possible energy state recognised in standard physics. This arrangement was described in … Continue reading Blacklight Power Inc (Patent): IPO 17 Apr 2008
IPO The application related to a new way of providing a bonus when playing a gaming machine. Applying the Aerotel test the hearing officer held that, irrespective of whether the invention was claimed as a method of operating a gaming device or as the device itself, the contribution was a way of playing a game … Continue reading IGT (Patent) O/068/08: IPO 5 Mar 2008
IPO As a result of an uncontested application filed under section 13(1) by Antenova Limited, it was found that Scott William Spencer Tyler should be mentioned as a joint inventor in the published patent application and granted patent for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared … Continue reading Antenova Limited, Scott William Spencer Tyler, Devis Iellici, Steven Gregory O’Keefe, James William Kingsley, Simon Philip Kingsley (Patent): IPO 29 Feb 2008
Excluded fields (refused) – The application relates to apparatus and a method for processing payments between a business software system and a payment processor. More specifically it provides an intermediate payment processor that interfaces between the business system software and the payment processors and permits a business software system to be upgraded to support additional … Continue reading Everest Software Inc (Patent): IPO 18 Jan 2008
IPO The application is concerned with games such as poker in which a combination of cards makes up a winning hand, or slot machine symbols making a winning row. In the card variant, certain cards have associated with them other, different, cards; for example the seven of hearts could be associated with the ace of … Continue reading IGT (Patent) O/198/07: IPO 16 Jul 2007
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
IPO The claims were directed to a hydrophobic, pyrogenically produced silica having a tamped density of 55-200 g/l, hydrophobised by reaction with a halogen-free silane or siloxane and compacted by a roller compactor or belt filter press. In an oral decision, the hearing officer held that the claims lacked inventive step in the light of … Continue reading Degussa-Huls Ag (Patent): IPO 18 Jun 2004
A court no longer has the discretion as to whether to amend a patent upon application, but must, following European practice, do so when a proper application is made. This is the case despite the clear wording of the English Act. A judge at first instance should be careful to follow a line of cases … Continue reading Hadley Industries Plc v Metal Sections Limited, Metsec (UK) Limited: PatC 13 Nov 1998
IPO As a result of an uncontested application filed under section 13(1) by Michael Jones and Ian Henderson, it was found that they should be mentioned as joint inventors in the granted patent for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the granted patent for the … Continue reading Jones and Henderson v Protensive Limited (Patent) O-208-03: IPO 17 Jul 2003
PO Patent Office – Ex Parte Decisions – As a result of an uncontested application filed under section 13(1) by Koito Manufacturing Co Ltd, it was found that Akinori Matsumoto and Takayuki Iwaki should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them … Continue reading Koito Manufacturing Co Ltd and Akinori Matsumoto and Takayuki Iwaki (Patent): IPO 31 Mar 2003
IPO Judging from the various activities the proprietor was engaged in and the range of problems he was effectively dealing with during the period the eighth year renewal fee could have been paid, the stress the applicant was experiencing was not such as to prevent him from acting in a reasonable manner. Moreover, the applicants … Continue reading Interroof Products Limited (Patent): IPO 18 Jan 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
IPO The claims related to an apparatus for gaming which was networked to a host computer and allocated players to levels each with an associated amount beyond which a player would be given an award. The nearest prior art was the applicant’s published application which lay in the section 2(3) field and had been refused … Continue reading Acres Gaming Incorporated (Patent): IPO 18 Sep 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
IPO Crompton Lighting applied to revoke GB2059196B on the grounds that it was not new and did not involve an inventive step. The proprietor, Emergi-Lite Safety Systems, filed a counter-statement, but the two parties reached a settlement before any evidence was filed. Following the settlement, the applicant sought leave to withdraw from the revocation proceedings. … Continue reading Crompton Lighting Ltd v Emergi-Lite Safety Systems Ltd (Patent): IPO 18 May 2000
Citations: [1998] UKIntelP o02198 Links: Bailii Statutes: Patents Act 1977 Jurisdiction: England and Wales Intellectual Property Updated: 07 October 2022; Ref: scu.453129
IPO An uncontested application was filed by Beertech UK Limited originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patent Rules 2007. An uncontested application was also filed by Beertech UK Limited under section 13(3). It was found that Narendra Patel should … Continue reading Beertech UK Limited, Jolley, Comerford and Patel (Patent): IPO 26 Nov 2008
Challenge to validity of patent and defence and request for amendment. Judges: Sir Andrew Morritt, Richards, Patten LJJ Citations: [2011] EWCA Civ 382 Links: Bailii Statutes: Patents Act 1977 75 Jurisdiction: England and Wales Intellectual Property Updated: 06 September 2022; Ref: scu.431895
Lilly appealed against a finding that an Actavis drug had not infringed its patents to the limited extent of holding that there would be indirect infringement in four jurisdictions, but they agreed with the Judge that there would be no direct infringement. The appeal raised the issue of the correct approach under UK law (and … Continue reading Actavis UK Ltd and Others v Eli Lilly and Company: CA 25 Jun 2015
A constructive trust can only arise as against a legal owner only by virtue of an unconscionable act by the legal owner. A claim by an employee against an employer in respect of ownership of a patent was unlikely to succeed. Citations: Times 13-Nov-1998 Statutes: Patents Act 1977 39 Jurisdiction: England and Wales Intellectual Property … Continue reading French v Mason and Another: ChD 13 Nov 1998
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
An uncontested application was filed by Power-Sprays Limited, originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patents Rules 2007. As a result, it was found that Glyn Andrew Bosley should also be mentioned as a joint inventor in any patent granted … Continue reading Power-Sprays Limited, Ian G White and Glyn Andrew Bosley (Patent): IPO 18 Jun 2008
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
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 claimant had asserted a joint authorship of the song ‘A Whiter Shade of Pale’ written in the sixties. The defendant appealed saying that the claim had been brought too late, and that the finding ignored practice in the music industry. The copyright in the song had already been assigned by the authors before the … Continue reading Brooker and Another v Fisher: CA 4 Apr 2008
There is no reason in principle to exclude claims to computer programs from patentability under Art.52 where the claims to a method performed by running a suitably programmed computer or to a computer program to carry out the method are allowable. The question in each case is whether the technical effect produced by the invention … Continue reading Astron Clinica Ltd and others v The Comptroller General of Patents, Designs and Trade Marks: PatC 25 Jan 2008
The validity of a patent was challenged at the same time in both UK and European courts. Mummery LJ discussed the inherent consequences of a race between the jurisdictions: ‘the possibility of the duplication of proceedings contesting the validity of a patent granted by the EPO is inherent in the system established by the Convention. … Continue reading Glaxo Group Ltd v Genentech Inc and Another: CA 31 Jan 2008
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 court upheld the rejection of a patent application with regard to a computer program. Judges: Mann J Citations: [2006] EWHC 705 (Ch) Links: Bailii Statutes: Patents Act 1977 77 Jurisdiction: England and Wales Cited by: Cited – Blacklight Power Inc v The Comptroller-General of Patents PatC 18-Nov-2008 The applicant appealed against the refusal of … Continue reading Macrossan v Comptroller-General of Patents, Designs and Trade Marks 2005: ChD 3 Apr 2006
(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
Application to amend patent claims Judges: His Honour Judge Hacon Citations: [2022] EWHC 1031 (IPEC) Links: Bailii Statutes: Patents Act 1977 75 Jurisdiction: England and Wales Intellectual Property Updated: 03 June 2022; Ref: scu.677586
A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence. Held: The court considered the categories of exclusion in the context of what was said to be a discovery – namely the gene sequence which caused TPA to be expressed. A … Continue reading Genentech’s (Human Growth Hormone) Patent: CA 1989
The applicant sought patents for systems of document management. The applications had been rejected as being for computer programs as such. Held: The exclusion from protection created by the section was to be construed narrowly. In the absence of non-mental limitations, the product should not be excluded. Judges: Floyd J Citations: [2008] EWHC 649 (Pat), … Continue reading Kapur v Comptroller General of Patents, Designs and Trade Marks: PatC 10 Apr 2008
The rejection of an opposition claim to a European Patent by the European Patents Office, did not create an estoppel for an English Court looking at a similar issue. Judges: Roch, Aldous LJJ Citations: Times 03-Apr-1998, [1998] 2 All ER 960, [1998] EWCA Civ 509 Links: Bailii Statutes: Patents Act 1977 72 Jurisdiction: England and … Continue reading Buehler Ag v Chronos Richardson Ltd: CA 20 Mar 1998
Peter Prescott QC J set out the four steps to be taken: ‘The approach is in four steps: ‘(1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.’ (see Aerotel at … Continue reading Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks: PatC 4 Sep 2013
The company appealed against the rejection of its claim for a patent. Held: Lewison J said: ‘The manipulation of data stored on a computer (whether on the computer in use or on a remote computer) is unlikely to give rise to a contribution that exists independently of whether it is implemented by a computer’ Judges: … Continue reading Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks and Designs: PatC 6 Feb 2008
A patent was not infringed by a sale of goods because the property in the goods had already passed before they arrived in this country. Citations: [1982] FSR 406 Statutes: Patents Act 1977 Jurisdiction: England and Wales Intellectual Property Updated: 07 May 2022; Ref: scu.273186
The court rejected an application for a patent for, inter alia, a ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal’. Held: Falconer J said: ‘In my judgment, where an invention for which a patent is sought involves any of the matters … Continue reading Merrill Lynch’s Application: ChD 1988
Harris was the manager of the Wey valve department of his employer. In August 1978 he was told he would be made redundant, and left in December. In the meantime he devised an improvement to the Wey valve and applied for a patent in January 1979. The employer claimed to be entitled to the invention … Continue reading Harris’ Patent: 1985
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not identify an optimal dosage regime. A pharmaceutical company, which had acquired the patent, conducted … Continue reading Actavis Group PTC EHF and Others v ICOS Corporation and Another: SC 27 Mar 2019
The claimant professor had invented a pump mechanism which came to be used by his employers for the sale of pumps used to manage diabetic testing. He appealed against refusal of statutory compensation. Judges: Patten, Briggs, Sales LJJ Citations: [2017] EWCA Civ 2, [2017] WLR(D) 32, [2017] Bus LR 883, [2017] RPC 15 Links: Bailii, … Continue reading Shanks v Unilever Plc and Others: CA 18 Jan 2017
Revocation proceedings were brought before the Comptroller General of Patents, Designs and Trade Marks. The revocation proceedings were withdrawn, but the Comptroller decided to continue his examination. The patent owner sought to challenge this decision. Held: There is a difference between proceedings before the Comptroller conducted under the Manual of the Patent Office, and proceedings … Continue reading Regina (Ash and Lacy Building Products Ltd) v Comptroller General of Patents, Designs and Trade Marks: ChD 1 Feb 2002
A threats of an infringement claim regarding acts of the addressee between the Patent application being filed and the grant of the patent are actionable under the threat action procedure. Citations: Ind Summary 18-Apr-1995 Statutes: Patents Act 1977 70(1) 70(2) Jurisdiction: England and Wales Cited by: Appeal From – Brain v Ingledew Brown Benson and … Continue reading Brain v Ingledew Brown Benson and Garrett and Another: ChD 18 Apr 1995
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
Appeal from refusal of patent under section 1(2)(c) Judges: Mann J Citations: [2006] EWHC 705 (Pat) Links: Bailii Statutes: Patents Act 1977 97 Jurisdiction: England and Wales Intellectual Property Updated: 01 February 2022; Ref: scu.380358
These appeals are concerned with the validity and infringement of a patent concerning tadalafil. Lewison, Kitchin, Floyd LJJ [2017] EWCA Civ 1671, 159 BMLR 108 Bailii England and Wales Cited by: At CA – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of the test … Continue reading Actavis Group Ptc EHF and Another v Teva UK Ltd and Others: CA 1 Nov 2017
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 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
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and Spain. Held: Eli Lilly’s appeal succeeded. The Actavis products directly infringed the respondent’s patents. The Court … Continue reading Eli Lilly v Actavis UK Ltd and Others: SC 12 Jul 2017
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
Patents relating to tadalafil [2016] EWHC 1955 (Pat) Bailii England and Wales Cited by: At First Instance – 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 Actavis and Others v Eli Lilly and Company: PatC 10 Aug 2016
Appeal from dismissal of application for revocation of patent. Lord Clarke of Stone-cum-Ebony MR, Jacob, Richards LJJ [2009] EWCA Civ 1362, (2010) 33(2) IPD 33007, [2010] RPC 9 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 … Continue reading Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Company Ltd: CA 18 Dec 2009
The company appealed against refusal of patentunder the provision restricting such for ‘uses of human embryos for industrial or commercial purposes’ Held: The matter was referred to the ECJ. Henry Carr QC [2013] EWHC 807 (Ch), [2013] 3 CMLR 14, [2014] RPC 2, BL O/316/12, [2013] 3 CMLR 14, [2014] RPC 2 Bailii Patents Act … Continue reading International Stem Cell Corporation v Comptroller General of Patents: ChD 17 Apr 2013
Parties had together applied to register a trade mark. Later one applied and the other opposed, and application. At various times they had been represented by trade mark agents and solicitors. Protection against discovery was now sought as to communications with the trade mark agents. Held: Nourse J refused to extend the protection of legal … Continue reading Dormeuil Trade Mark: ChD 1983
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
cw Inter Partes Decisions – Patents – The reference under section 8(1) concerning entitlement to the application was treated as unopposed following the failure of the applicant for the patent to provide a counter-statement. The application was due to be, but had not actually been, treated as withdrawn for failure to file an abstract and … Continue reading Marine Contractors Limited v Barnes: PO 25 Apr 2002
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
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
An uncontested application was filed by the proprietor Lysanda Limited under section 13(3) of the Patents Act 1977. As a result, it was found that Emmanouil Hatiris should not be mentioned as a joint inventor in the published patent application and granted patent for the invention and directed that an addendum slip removing him as … Continue reading Lysanda Limited, Alexandra Willard and Emmanouil Hatiris (Patent) O00815: IPO 7 Jan 2015
In English law a breach of statutory duty, is actionable as such by a private individual to whom loss or damage is caused by a breach of that duty. Lord Diplock said that it was quite unarguable: ‘that if such a contravention of Article 86 gives rise to any cause of action at all, it … Continue reading Garden Cottage Foods Ltd v Milk Marketing Board: HL 1984
The invention in this case was an improved ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal.’ Held: More than one exclusion can be in play in relation to the same application. Inventive excluded matter cannot count as a technical advance. Fox … Continue reading Merrill Lynch’s Application: CA 1989
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
The inventor company appealed against rejection of its application for a patent for a computer program. Held: The appeal failed: ‘on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which could already be done without a computer. It has no relevant technical effect. Accordingly, the … Continue reading Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks: CA 13 Nov 2014
Unilever claimed infringement of its patent. The court was asked whether there was a good arguable case against the United States parent company of the existing defendant sufficient to justify the parent company to be joined as a defendant and to serve proceedings out of the jurisdiction. Held: Section 60(1) of the 1977 Act, described … Continue reading Unilever Plc v Gillette (UK) Limited: CA 1989
AI created Invention is not Patentable The case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions – correct processing of application Held: The appeal failed. On the face of the Form 7s he filed, Dr Thaler did not comply with either of the requirements laid down by section 13(2), … Continue reading Thaler v Comptroller General of Patents Trade Marks and Designs: CA 21 Sep 2021
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 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
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
