Kastner v Rizla Ltd and Another: CA 23 Jun 1995

Patent specification construction to be purposive- following ‘Catnic’.

Citations:

Times 23-Jun-1995, [1995] RPC 585

Statutes:

Patents Act 1977, European Patents Convention 1973

Jurisdiction:

England and Wales

Cited by:

CitedRocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 January 2023; Ref: scu.82677

Woodstock (Trade Mark: Opposition): IPO 11 Sep 2019

Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Standard of proof (evidential issues)
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted

Citations:

[2019] UKIntelP o53519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 December 2022; Ref: scu.661113

CXO2 (Trade Mark: Opposition): IPO 17 Oct 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Well known mark claims
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair advantage of repute
Sections 5(1), 5(2) and 5(3) Dilution Cases – Detriment to repute
Procedural Issues – Costs – litigants in person, actual, security for

Citations:

[2018] UKIntelP o65818

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 December 2022; Ref: scu.631670

Regeneron Pharmaceuticals, Inc v Kymab Ltd and Another: CA 28 Mar 2018

The claimant R now appealed from a finding that its two patents involving transgenic mice were invalid. The ‘in situ replacement’ failed to comply.
Held: The appeal succeeded.

Judges:

Lord Justice Kitchin, LordJustice Floyd, Lady Justice Arden

Citations:

[2018] EWCA Civ 671

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal fromRegeneron Pharmaceuticals Inc v Kymab Ltd and Another PatC 1-Feb-2016
The parties disputed the validity of K’s patented mouse. R said that the specification was insufficient to allow reproduction, and that it was therefore incomplete.
Held: The specification was insufficient, and the patents invalid. The issue . .

Cited by:

Appeal fromRegeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
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 . .
Main CA JudgmentRegeneron Pharmaceuticals, Inc v Kymab Ltd and Another CA 23-May-2018
Leave to appeal to Supreme Court refused. Other post judgment issues – form of order. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Animals

Updated: 31 December 2022; Ref: scu.608354

Green v Broadcasting Corporation of New Zealand: 22 Sep 1988

(Court of Appeal of New Zealand) The plaintiff had created a hugely sucessful TV programme in the UK, called Opportunity Knocks. He now appealed against rejection of his claim in copyright alleging that the defendant had copied the format, and also in passing off.
Held: Courts have a discretion whether or not to order a new trial where fresh evidence is sought to be introduced and, in exercise of that discretion, they should apply the tests in Ladd v Marshall
Ongley J considered the claim to copyright in the words ‘Opportunity Knocks’ and held that copyright did not subsist in the title. His Honour noted that it is a difficult but not an impossible task to establish copyright in a title. He referred to the Privy Council decision in Francis

Judges:

Somers, Casey, Gallen JJ

Citations:

[1988] NZCA 180, CA40/84, [1988] 2 NZLR 490, (1988) 2 TCLR 701

Links:

Nzlii

Jurisdiction:

England and Wales

Citing:

AppliedLadd v Marshall CA 29-Nov-1954
Conditions for new evidence on appeal
At the trial, the wife of the appellant’s opponent said she had forgotten certain events. After the trial she began divorce proceedings, and informed the appellant that she now remembered. He sought either to appeal admitting fresh evidence, or for . .
CitedFrancis Day and Hunter Limited v 20th Century Fox Corporation Limited PC 12-Oct-1939
(Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not . .

Cited by:

Appeal fromGreen v Broadcasting Corporation of New Zealand PC 18-Jul-1989
Format of TV show not copyrightable
Court of Appeal of New Zealand – The plaintiff had developed the program ‘Opportunity Knocks’ on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand, and also in passing off. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 31 December 2022; Ref: scu.567719

Waterco Limited, Tandon and Cleine (Patent): IPEC 8 Apr 2015

An application under rule 10(2) of the Patent Rules 2007 was filed by Waterco Limited to mention Kenneth Cleine as a joint inventor along with Pradeep Kumar Tandon. Pradeep Kumar Tandon and Kenneth Cleine subsequently filed written consent in support of the application. As such, the comptroller considered the application to be unopposed and found that Kenneth Cleine should be mentioned as a joint inventor along with Pradeep Kumar Tandon in the granted patent for the invention and directed that an addendum slip mentioning Kenneth Cleine as a joint inventor be prepared for the granted patent for the invention.

Citations:

[2015] UKIntelP o15415

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 December 2022; Ref: scu.545470

Central Research Laboratories Ltd v Intelligent Clothing Ltd and Alan Magill (Patent): IPO 24 Jul 2000

IPO The parties had entered into an agreement under which CRL agreed to take the patent application into the national phase in designated countries and in return IC would make two payments to CRL. The agreement included a default clause whereby IC would assign 30% of the patent application and any subsequent published patents to CRL if IC did not make the first and second payments.
IC argued that the default clause only came into play if both the first and the second payments were not made. The Hearing Officer found that the default clause must be construed as coming into play if any of the payments were not made and that therefore IC had defaulted on the agreement.
Neither party had any clear idea of the intended meaning of the default clause. CRL suggested either that they could be co-patentees (which would effectively give them a 50% share) or, since it was unlikely that either party would themselves manufacture the invention, that the parties could share in the proportions 70:30 any royalties which might accrue from licensing the technology. The other side suggested that it could mean a non-exclusive licence.
The Hearing Officer held that the clause was incapable of proper interpretation without further agreement between the parties in order to implement it and therefore it was void for uncertainty. IC was not relieved of its obligation to pay the money but CRL would have to look elsewhere for redress.

Citations:

[2000] UKIntelP o25600

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.453874

Central Research Laboratories Ltd v Intelligent Clothing Ltd and Alan Magill (Patent): IPO 29 Sep 2000

IPO In his decision dated 24 July 2000 the HO gave Mr Magill 6 weeks to indicate whether or not he wished to resist an order to assign the patent application to Intelligent Clothing Ltd.. In the absence of a response Mr Magill was ordered to assign the application within 6 weeks. The order does not extend to the US patent over which the HO had no jurisdiction.

Citations:

[2000] UKIntelP o36200

Links:

Bailii

Statutes:

Patents Act 1977 12

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.453937

Thomas Marshall (Exports) Ltd v Guinle: ChD 1979

The managing director defendant had resigned before the end of the contractual term. There was an express covenant in his contract against using or disclosing the company’s confidential information during or after his employment. It was submitted that this was a repudiation which brought the contract to an end and with it any obligation to observe the restrictive covenants.
Held: Sir Robert Megarry VC considered the power of a court to prevent a wrongdoer from benefiting from his wrong: ‘Above all, I think the courts must be astute to prevent a wrongdoer from profiting too greatly from his wrong. If without just cause a servant who has contracted to serve for a term of years refuses to do so, it is easy to see that the court is powerless to make him do what he has contracted to do: neither by decreeing specific performance nor by granting an injunction can the court make the servant perform loyally what he is refusing to do, however wrongfully . . But why should the court’s inability to make a servant work for his employer mean that as soon as the servant refuses to do so the court is forthwith disabled from restraining him from committing any breach, however flagrant, of his other obligations during the period of his contract? I would wholly reject the doctrine of automatic determination, whether in its wide form or in its narrowed version.’
As to whether information was confidential, Sir Robert Megarry VC said: ‘If one turns from the authorities and looks at the matter as a question of principle, I think (and I say this very tentatively, because the principle has not been argued out) that four elements may be discerned which may be of some assistance in identifying confidential information or trade secrets which the court will protect. I speak of such information or secrets only in an industrial or trade setting. First, I think that the information must be information the release of which the owner believes would be injurious to him or of advantage to his rivals or others. Second, I think the owner must believe that the information is confidential or secret, i.e., that it is not already in the public domain. It may be that some or all of his rivals already have the information: but as long as the owner believes it to be confidential I think he is entitled to try and protect it. Third, I think that the owner’s belief under the two previous heads must be reasonable. Fourth, I think that the information must be judged in the light of the usage and practices of the particular industry or trade concerned. It may be that information which does not satisfy all these requirements may be entitled to protection as confidential information or trade secrets: but I think that any information which does satisfy them must be of a type which is entitled to protection.’

Judges:

Sir Robert Megarry VC

Citations:

[1979] Ch 227, [1978] 3 All ER 193, [1978] ICR 950, [1978] 3 WLR 116

Jurisdiction:

England and Wales

Cited by:

CitedSG and R Valuation Service Co v Boudrais and others QBD 12-May-2008
The claimant sought to require the defendants not to work during their notice period to achieve the equivalent of garden leave despite there being no provision for garden leave in the contracts. It was said that the defendants had conspired together . .
CitedSociete Generale, London Branch v Geys SC 19-Dec-2012
The claimant’s employment by the bank had been terminated. The parties disputed the sums due, and the date of the termination of the contract. The court was asked ‘Does a repudiation of a contract of employment by the employer which takes the form . .
CitedGunton v Richmond-upon-Thames London Borough Council CA 1980
The plaintiff college registrar had been the subject of disciplinary proceedings, but the defendant had not followed the contractual procedure. The judge had ordered an inquiry as to damages on the basis that the Plaintiff was entitled to remain in . .
CitedLancashire Fires Ltd v S A Lyons and Co Ltd CA 1996
It was claimed that a loan to the employee from a customer of the employer coupled with an exclusive supply agreement by the employee as and when the competing business becomes operative was in breach of an non-compete clause.
Held: The . .
CitedFaccenda Chicken Ltd v Fowler CA 1986
Nature of Confidentiality in Information
The appellant plaintiff company had employed the defendant as sales manager. The contract of employment made no provision restricting use of confidential information. He left to set up in competition. The company now sought to prevent him using . .
Lists of cited by and citing cases may be incomplete.

Torts – Other, Contract, Intellectual Property

Updated: 20 December 2022; Ref: scu.270349

Saltman Engineering Co v Campbell Engineering Co Ltd: CA 1948

The plaintiffs instructed the defendant to make tools for the manufacture of leather punches in accordance with drawings which the plaintiffs provided to the defendant for this purpose. The defendant used the drawings to make tools, and the tools to make leather punches, on their own account. The finished product (i.e. the leather punches) were readily available to buy in the shops; and the defendants could have bought one and reverse engineered it. But they did not.
Held: Equity will protect trade secrets that have been divulged in breach of a confidential relationship, but the obligation not to use confidential information attaches only to information which has the necessary element of confidentiality and continues only so long as the information remains confidential.
Lord Greene MR said: ‘The defendants knew that those drawings had been placed in their possession for a limited purpose, namely, the purpose only of making certain tools in accordance with them, the tools being tools required for the purpose of manufacturing leather punches . . I need not go into the law, which I think is correctly stated in a formula which Mr Heald himself accepted. I will read it: ‘If a defendant is proved to have used confidential information, directly or indirectly obtained from a plaintiff, without the consent, express or implied, of the plaintiff, he will be guilty of an infringement of the plaintiff’s rights.” and
‘I think that I shall not be stating the principle wrongly if I say this with regard to the use of confidential information. The information, to be confidential, must, I apprehend, apart from contract, have the necessary quality of confidence about it, namely, it must not be something which is public property and public knowledge. On the other hand, it is perfectly possible to have a confidential document be it a formula, a plan, a sketch, or something of that kind, which is the result of work done by the maker upon materials which may be available for the use of anybody; but what makes it confidential is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process.
What the defendants did in this case was to dispense in certain material respects with the necessity of going through the process which had been gone through in compiling these drawings, and thereby to save themselves a great deal of labour and calculation and careful draftsmanship. No doubt, if they had taken the finished article, namely, the leather punch, which they might have bought in a shop, and given it to an expert draftsman, that draftsman could have produced the necessary drawings for the manufacture of machine tools required for making that particular finished article. In at any rate a very material respect they saved themselves that trouble by obtaining the necessary information either from the original drawings or from the tools made in accordance with them. That, in my opinion, was a breach of confidence.’

Judges:

Lord Greene MR

Citations:

[1948] 65 RPC 203

Jurisdiction:

England and Wales

Cited by:

CitedVenables and Thompson v News Group International, Associated Newspapers Ltd, MGN Ltd QBD 4-Dec-2001
An order had been made requiring all newspapers not to publish anything which might lead to the identification of the claimants or their whereabouts. The defendant newspaper published information as to their last known whereabouts. They argued that . .
CitedArklow Investments Ltd and Another v Maclean and Others PC 1-Dec-1999
PC (New Zealand) Land was offered for sale. A potential buyer, the appellant was approached by a merchant bank with a proposal for finance. When he sought finance elsewhere, a company associated with the bank . .
AppliedSuhner and Co AG v Transradio Ltd 1967
The claimants complained at the defendant having registered a company under the name ‘Suhner’. The defendants gave no justification for using the word ‘Suhner’ as part of their name. They claimed that they had the right to form a company in order to . .
CitedEPI Environmental Technologies Inc and Another v Symphony Plastic Technologies Plc and Another ChD 21-Dec-2004
The claimant had developed an additive which would assist in making plastic bags bio-degradable. They alleged that, in breach of confidentiality agreements, the defendants had copied the product. The defendants said the confidentiality agreement was . .
CitedHome Office v Hariette Harman HL 11-Feb-1982
The defendant had permitted a journalist to see documents revealed to her as in her capacity as a solicitor in the course of proceedings.
Held: The documents were disclosed under an obligation to use them for the instant case only. That rule . .
CitedCoco v A N Clark (Engineers) Ltd ChD 1968
Requirememts to prove breach of confidence
A claim was made for breach of confidence in respect of technical information whose value was commercial.
Held: Megarry J set out three elements which will normally be required if, apart from contract, a case of breach of confidence is to . .
CitedDouglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
CitedLondon Regional Transport, London Underground Limited v Mayor of London Transport for London CA 24-Aug-2001
The claimants sought an interlocutory injunction restraining the defendants from publishing a report in breach of a contractual duty of confidence. This was granted but then discharged on the defendant undertaking only to publish a redacted version. . .
CitedMersey Care NHS Trust v Ackroyd QBD 7-Feb-2006
The trust, operators of Ashworth Secure Hospital sought from the defendant journalist disclosure of the name of their employee who had revealed to the defendant matters about the holding of Ian Brady, the Moors Murderer, and in particular medical . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 20 December 2022; Ref: scu.182937

Daily Ritual (Trade Mark: Opposition): IPO 10 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Sections 5(1), 5(2) and 5(3) Dilution Cases – Unfair disadvantage of distinctive character
Revocation / Proof of Use – Dates – genuine use

Citations:

[2019] UKIntelP o61319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661125

Securicor (Trade Mark: Opposition): IPO 6 Jun 2019

Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date
Revocation / Proof of Use – Dates – calculation of dates
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Dates – use for export / goods in transit

Citations:

[2019] UKIntelP o32219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.660959

Ayurvedic Up Go (Trade Mark: Opposition): IPO 3 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Full decision O/514/19 PDF document382Kb

Citations:

[2019] UKIntelP o51419

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661067

CBD Scotland (Trade Mark: Opposition): IPO 17 Oct 2018

Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Section 5(4) Earlier Rights – Relevant date
Section 5(4) Earlier Rights – Standard of proof (evidential issues)
Section 5(4) Earlier Rights – Trivial v minimal goodwill

Citations:

[2018] UKIntelP o65918

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631668

Avaya Inc (Patent): IPEC 16 Feb 2015

The application relates to a method for assigning a customer service agent to a customer when, for example, the customer contacts a call centre. The Hearing Officer applied the Aerotel test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the decisions in ATandT Knowledge Ventures LP and CVON and HTC Europe Co. Ltd. v Apple Inc. and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than some combination of a business method and a program for a computer as such.
The Hearing Officer also considered the issue of novelty and concluded that the application was novel over the disclosure of US7231034 B1.
Finally, the Hearing Officer considered inventive step and, following the steps set out in Windsurfing (as restated in Pozzoli), concluded that the invention lacked an inventive step over the disclosure of US7231034 B1.

Citations:

[2015] UKIntelP o07115

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.545459

Peter Robert Goodall (Patent): IPEC 16 Mar 2015

On 25 January 2011 a combined search and examination report was issued raising a number of substantive issues and setting a response date of 23 July 2012. The applicant did not reply until 24 December 2014 when he requested that he be allowed to file a late response. The examiner refused.
At the hearing the applicant provided a written timeline explaining his circumstances between January 2012 and the end of December 2014. He also provided additional information and detail orally. The hearing officer accepted that this showed that the applicant had experienced a series of unfortunate and unusual events spanning the vast majority of the period of time from before the specified response date to the present day. The hearing officer also accepted that the applicant’s reasons for responding late were peculiar to him and his application and that they were sufficient in terms of severity and extent to justify the exercise of discretion in this case. The hearing officer thus decided to allow a late response.
The hearing officer gave the applicant one month to file his response to the examination report. If he does not do so within this time then the application will be refused under section 18(3).

Citations:

[2015] UKIntelP o11315

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.545465

O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited: ECJ 12 Jun 2008

Use of trade mark in coparative advertising

Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a trade mark – Comparative advertising Directives 84/450/EEC and 97/55/EC Article 3a(1) Conditions under which comparative advertising is permitted Use of a competitor’s trade mark or of a sign similar to that mark.

Citations:

[2008] EUECJ C-533/06, Times 17-Jun-2008, [2008] ECR I-4231, [2008] 3 CMLR 14, [2009] Bus LR 339

Links:

Bailii

Jurisdiction:

European

Citing:

Advocate General’s OpinionO2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited ECJ 31-Jan-2008
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability . .

Cited by:

CitedL’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 December 2022; Ref: scu.277760

Dorset Dpc (Trade Mark: Opposition): IPO 25 Sep 2019

Section 3(1) Descriptiveness / Distinctiveness – Descriptiveness – geographical signs
Section 3(1) Descriptiveness / Distinctiveness – Descriptiveness – other characteristic of goods or services
Section 3(1) Descriptiveness / Distinctiveness – Customary in the language etc. – customary in the language
Section 3(1) Descriptiveness / Distinctiveness – Customary in the language etc. – trade name for goods or services
Section 3(1) Descriptiveness / Distinctiveness – Customary in the language etc. – acquired distinctiveness

Citations:

[2019] UKIntelP o56519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661071

Rubyware (Trade Mark: Opposition): IPO 13 Aug 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element

Citations:

[2019] UKIntelP o47219

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661055

Premia Naturals (Trade Mark: Opposition): IPO 16 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2019] UKIntelP o54619

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661096

Silky Miracle (Trade Mark: Opposition): IPO 23 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – State of the register
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Other Issues – Survey evidence
Revocation / Proof of Use – Dates – sales to trade intermediaries
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Citations:

[2019] UKIntelP o42319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661007

Billions London (Trade Mark: Opposition): IPO 3 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations

Citations:

[2019] UKIntelP o59319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661118

Recycoola Insulative Packaging System (Trade Mark: Opposition): IPO 12 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2019] UKIntelP o39919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.661001

Luv Injection Sound (Trade Mark: Opposition): IPO 27 Jun 2019

Section 3(6) Bad Faith – Breakdown of former business relationship
Section 3(6) Bad Faith – Partnership issues
Section 3(6) Bad Faith – Music groups
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link

Citations:

[2019] UKIntelP o35919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.660951

Fathers Justice (Trade Mark: Opposition): IPO 30 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions

Citations:

[2019] UKIntelP o44519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.660980

Just Airports London (Trade Mark: Opposition): IPO 17 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues
Other Issues – Domain name / company name
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Dates – use outside the relevant periods
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Citations:

[2019] UKIntelP o41319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.660987

Lagoniassa Device Mark (Trade Mark: Opposition): IPO 18 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)

Citations:

[2019] UKIntelP o41519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.660989

The Cellular Clothing Co Ltd v Maxton and Murray: HL 27 Apr 1899

An action of interdict was raised by the makers of a certain fabric which they had advertised and sold for some years under the name of ‘cellular cloth,’ for the purpose of preventing a rival trader from using the term ‘cellular’ to designate goods not made and sold by the pursuers.
The House of Lords (aff. the judgment of the First Division) refused to grant interdict, in respect that the pursuers had failed to prove (1) that the defenders had, otherwise than by the use of the term ‘cellular,’ done anything to induce the belief that the goods offered by them were goods of the pursuers’ manufacture, or (2) that the term ‘cellular’ had acquired in the trade any technical or secondary meaning different from its ordinary meaning as a term descriptive of the goods, so as to entitle the pursuers to claim its exclusive use.

Judges:

Lord Chancellor (Halsbury), and Lords Watson, Shand, and Davey

Citations:

[1899] UKHL 605, 36 SLR 605

Links:

Bailii

Jurisdiction:

Scotland

Intellectual Property

Updated: 20 December 2022; Ref: scu.631832

Matchfit Conditioning (Trade Mark: Opposition): IPO 7 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted
Revocation / Proof of Use – Partial revocation – arriving at a fair description of goods / services

Citations:

[2018] UKIntelP o78418

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631778

Lima (Trade Mark: Opposition): IPO 6 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations

Citations:

[2018] UKIntelP o78218

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631776

Timehealth (Trade Mark: Opposition): IPO 20 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Identification of
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels
Sections 5(1), 5(2) and 5(3) Average Customer – Purchasing process
Sections 5(1), 5(2) and 5(3) Distinctive Character of Earlier Trade Mark – Any unusual issues

Citations:

[2018] UKIntelP o81918

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631786

Primal Instinct (Trade Mark: Opposition): IPO 21 Aug 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation

Citations:

[2018] UKIntelP o51418

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 December 2022; Ref: scu.631594

PLG Research Ltd and Another v Ardon International Ltd and Others: CA 1995

As to Catnic: ‘Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down by the Protocol. If the two approaches are the same, reference to Lord Diplock’s formulation is unnecessary, while if they are different it is dangerous.’

Judges:

Millett LJ

Citations:

Times 25-Nov-1994, [1995] RPC 287

Jurisdiction:

England and Wales

Citing:

Appeal fromPLG Research Ltd and Another v Ardon International Ltd and Others ChD 25-Nov-1994
A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. . .
CitedCatnic Components Ltd and Another v Hill and Smith Ltd HL 1982
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 . .

Cited by:

CitedKirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 December 2022; Ref: scu.218735

Kitechnology BV v Unicor GmbH: CA 1995

The plaintiffs owned confidential information relating to novel plastic coated pipes; the defendants were German companies and individuals domiciled in Germany, who it was alleged had used the plaintiffs’ confidential information. One issue the court had to consider was whether, in relation to (non-contractual) claims for breach of confidence, the claims arose in tort, thus giving the court jurisdiction under Article 5(3) of the Brussels Convention (which provided that a person domiciled in a Contracting State may be sued in another Contracting State in matters relating to tort, delict or quasi delict in the courts for the place where the harmful event occurred).
Held: Evans LJ said that the classification of the claims for English law was the starting point for consideration of whether they fell within Article 5(3). It was clear that such claims did not arise in tort.

Judges:

Evans, Waite LJJ, Sir Donald Nicholls VC

Citations:

[1995] FSR 795, [1995] IL Pr 568

Statutes:

Private International Law (Miscellaneous Provisions) Act 1995

Jurisdiction:

England and Wales

Citing:

AppliedMetal und Rohstoff AG v Donaldson Lufkin and Jenrette Inc CA 27-Jan-1989
The claimants sued for negligent advice and secured judgment. The defendant company became insolvent, and so the plaintiff now sued the US parent company alleging conspiracy. The court considered a tort of malicious prosecution of a civil claim, . .

Cited by:

CitedDouglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
CitedGoogle Inc v Vidal-Hall and Others CA 27-Mar-2015
Damages for breach of Data Protection
The claimants sought damages alleging that Google had, without their consent, collected personal data about them, which was resold to advertisers. They used the Safari Internet browser on Apple products. The tracking and collation of the claimants’ . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Torts – Other

Updated: 12 December 2022; Ref: scu.225464

Whisky Viking (Trade Mark: Opposition): IPO 26 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2019] UKIntelP o56819

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661111

Waggy Doggy (Trade Mark: Opposition): IPO 10 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services

Citations:

[2019] UKIntelP o53319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661110

Vetro (Trade Mark: Opposition): IPO 3 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Revocation / Proof of Use – Variant forms of marks – stylistic / presentation differences

Citations:

[2019] UKIntelP o51319

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661109

Red Inside (Trade Mark: Invalidity): IPO 19 Jul 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Particular visual / aural / conceptual considerations
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels

Citations:

[2019] UKIntelP o41919

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661002

Afterpay (Trade Mark: Opposition): IPO 24 Oct 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection
Sections 5(1), 5(2) and 5(3) Issues To Do With Goods / Services – Goods v retail services
Sections 5(1), 5(2) and 5(3) Average Customer – Consumer attention levels

Citations:

[2019] UKIntelP o64119

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661117

Device (Trade Mark: Opposition): IPO 19 Sep 2019

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word and device marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Sections 5(1), 5(2) and 5(3) Likelihood of Confusion – Effect of concurrent use
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Revocation / Proof of Use – Dates – genuine use
Revocation / Proof of Use – Variant forms of marks – use with another mark
Revocation / Proof of Use – Variant forms of marks – use with matter added or subtracted

Citations:

[2019] UKIntelP o54519

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.661070

Workingwall (Trade Mark: Opposition): IPO 20 Dec 2018

Section 3(1) Descriptiveness / Distinctiveness – Devoid of character – slogans
Section 3(1) Descriptiveness / Distinctiveness – Descriptiveness – geographical signs
Section 3(1) Descriptiveness / Distinctiveness – Customary in the language etc. – customary in the language
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2018] UKIntelP o82118

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.631791

Jun Fan (Trade Mark: Opposition): IPO 8 Aug 2018

Section 3(6) Bad Faith – No intention to use
Section 3(6) Bad Faith – Knowledge of opponent’s use in the UK
Section 5(4) Earlier Rights – Passing off (Issues arising from Registry proceedings)
Procedural Issues – Costs – litigants in person, actual, security for

Citations:

[2018] UKIntelP o49218

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.631582

Mr Easy (Trade Mark: Opposition): IPO 20 Dec 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Importance of first element
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Conceptual distinctions
Sections 5(1), 5(2) and 5(3) Dilution Cases – Reputation
Sections 5(1), 5(2) and 5(3) Dilution Cases – Link

Judges:

Ms C Boucher

Citations:

[2018] UKIntelP o81618

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.631780

Oomf! (Trade Mark: Opposition): IPO 6 Aug 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Composite word marks
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Imperfect recollection

Citations:

[2018] UKIntelP o48718

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.631589

Daletech Electronics Limited v Jemella Limited (Patent): IPO 27 Nov 2014

The patent relates to an electric hair iron which overcomes the problem of condensation associated with operating an iron at low temperatures, the iron having a control circuit which prevents the supply of power to the heating elements when a temperature sensor detects that the temperature is below a minimum threshold. The claimant was commissioned by the respondent to carry out a variety of tasks relating to the design and testing of electronic circuits within the respondent’s hair irons, including work related to the technology of the patent. The claimant argued that all the development work leading to the invention was theirs alone and that there was no written agreement between the parties to assign any rights in the inventions to the respondent. They also claimed that one of the named inventors and a former employee of the respondent played no part in devising the invention.
The hearing officer found that the former employee had played a part in devising the invention and that both parties were entitled to the patent. However, although there was no written agreement in place between the parties concerning intellectual property rights in the work carried out by the claimant on behalf of the respondent, the general working arrangement of the two companies and their actions leading up to and subsequent to the filing of the patent application, was consistent with both sides assuming that the respondent alone would be entitled to the patent. The hearing officer dismissed the claim and awarded costs to the respondent.

Citations:

[2014] UKIntelP o50114

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543157

Aspenbio Pharma, Inc (Patent): IPO 13 Nov 2014

The issue concerns whether the patent in suit should be restored under section 28 of the Act for the failure to pay a renewal fee. The renewal fee in respect of the 5th year of the patent was not paid by the due date, nor during the subsequent 6 months allowed for late payment. The patent therefore ceased and an application for restoration of the patent was filed.
The intention of the proprietors was to validate the European patent in all countries which were deemed to be of commercial interest. The original list of countries included the UK. Prior to the due date for validation in relevant countries, in late 2011, an internal determination was made by the proprietors to establish which European countries should proceed to validation. This determination was based on various criteria and to help them do this the applicants employed a consultant in the field covered by the patent. In late 2011 he advised them not to validate or renew the patent in the UK.
In early 2013, a licensee selected by the applicants told them that the patent was in fact of value in the UK and that they had been wrongly advised by the consultant in 2011. The applicants filed the restoration arguing that they had made their decision not to renew the patent in February 2012 based on incorrect advice. Had they have been in receipt of the correct advice, they would have renewed the patent and as such the failure to pay the renewal fee had been unintentional.
The HO decided that the applicants had taken steps to determine what to do with this patent and had entrusted the consultant to advise them. They never questioned his advice at the time and based on this, albeit what transpired to be incorrect advice, they made a conscious decision not to renew the patent. The advice they later received outside the period in which the patent could have been renewed had no relevance. As such the HO found that the failure to pay the renewal fee cannot be said to have been unintentional and he refused the application for restoration.

Citations:

[2014] UKIntelP o48514

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543156

Dark 3D Pete Limited and Peter Cuffe (Patent): IPO 30 Sep 2014

The claimant sought entitlement to a patent application (subsequently withdrawn) to an invention created by the defendant and filed in his name. The claimant claimed there had been an oral agreement between four individuals, including the defendant, that the claimant would be set up and would file the patent application for the defendant’s invention.
The hearing officer found that there had been an oral agreement to set up such a company, with a 60% shareholding by the defendant. However, the claimant company did not possess any of the attributes of the company agreed on, and thus was not entitled by the agreement to ownership of the patent application.

Citations:

[2014] UKIntelP o41314

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543147

Michael Torr Todman (Patent): IPO 14 Aug 2014

Application number GB0623079.1 was filed on 20 November 2006 in the name of Michael Torr Todman. On 22 November 2010, the IPO sent the examination report under s.18(3) of the Act to Mr Todman. Within that report, the r.30(2)(b) compliance date by which to bring the case in to order for grant was stipulated as 22 November 2011. Mr Todman replied to that report on 24 March 2011. The next official action was a letter issued on 1 August 2011 followed by an official letter issued on 16 November 2011, the latter explained that as the application had not been put in order for grant on 22 November 2011, it had been treated as having been refused.

Mr Todman rang the office on 6 December 2012 and explained that he did not receive the official letters of 1 August 2011 and 16 November 2011, but it was explained to him that it was now too late to apply for reinstatement under Section 20(A). Mr Todman wrote to the office saying that he can only conclude that some error occurred in the IPO and requested reinstatement of the application. When this was initially refused, Mr Todman requested to be heard in the matter.
As Mr Todman could not point to a specific failure within the office, the HO found that there was no evidence of any irregularity within the IPO under the terms of r.107. However on the evidence, he found that on the balance of probabilities Mr Todman did not receive the official letters of 1 August 2011 and 16 November 2011 and as such the failure to file a response to the official letter of 1 August 2011 was wholly attributable to a failure in the communication service and the failure to put the application in order for grant by the compliance date was in the very least mainly attributable to a failure in the communication service. Therefore the request for reinstatement succeeded under the provisions of rule 111.

Citations:

[2014] UKIntelP o36514

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543143

Jeffrey Johnson Clawson (Patent): IPO 27 Jan 2015

The invention is concerned with a computer-based system and method for assisting an emergency dispatcher in responding to emergency calls. A diagnostic tool used by the dispatcher collects symptom information systematically over the telephone, particularly to identify a pandemic illness. A message with symptom information is then sent to the responder, allowing them to treat the patient appropriately and take any necessary precautions to reduce the spread of the illness. The invention may also receive geographical location information and analyse it to identify patterns and relationships within the data received to track the spread of a pandemic illness.
The hearing officer followed the steps set out in Aerotel in order to determine whether the invention was excluded from patentability. He concluded that the contribution made by the invention lay not in reducing the spread of a pandemic illness but in an improved way of obtaining and analysing medical information from a caller, by using a diagnostic tool to structure diagnostic questions in relation to existing medical understanding of symptoms and pandemic illnesses. This ensured that a dispatcher can obtain the required information and store it consistently for passing to the responder.
He concluded that the collating and ordering of medical data in a way which is different from prior art systems, and then sending (in a conventional technical way) a message containing that data, did not offer a technical effect on a process outside the computer. He considered that the first ATandT/CVON signpost did not point to patentability and distinguished this case on its facts from PKTWO. The contribution was also held to be a business method, since it was concerned with administrating, codifying, organising and then outputting the diagnostic information. An argument that section 4A indicated that the invention did not fall within excluded matter was also rejected.

Citations:

[2015] UKIntelP o04215

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543126

Jiri George Frank Krizek and Jan David Krizek (Patent): IPO 14 Oct 2014

The issue concerns whether the request to reinstate the application was filed within the time allowed by Rule 32(1) and if so should it then be reinstated under the provisions of Section 20A.
The applicants failed to place the application in order for grant before the compliance period expired on 30 April 2013, so the application was terminated on 01 May 2013.
The applicant posted their Form 14 to apply for reinstatement on 30 April 2014 but did not submit the accompanying fee until 06 May 2014. An official letter was issued by the Office on 12 June 2014 informing the applicants they had filed their application for reinstatement out of time and because of this it had been refused. The applicants requested to be heard on this matter.
The applicants’ claimed they were informed by someone in the Office that as long as they filed their Form 14 on time they could file the fee sometime after the official deadline and their application would still be deemed to have been filed on time. As they had been provided with incorrect information they alleged that a procedural irregularity had occurred and asked the Hearing Officer to consider deeming the application for reinstatement to be filed in time under rule 107 of the Patents Rules 2007.

The applicants could not remember the name of the person who had provided them with this information nor did they have any written evidence that this was exactly what they were told. In contrast the Hearing Officer was able to point to two separate instances where the Office had provided the applicants with the correct information, clearly stating in writing that the Form 14 and the accompanying fee must be filed at the same time.
As the only hard evidence regarding this application pointed to the fact that the applicants were correctly informed by the Office they needed to file their Form and accompanying fee at the same time the Hearing Officer concluded that no procedural irregularity had occurred.
As no procedural irregularity had occurred the Hearing Officer deemed that the application for reinstatement was not filed within the time allowed by Rule 32(2)(a) and as that is a non extendable period the application must be refused.
As the application was not filed within the permitted time, the HO did not consider whether the failure to comply with Rule 28(2) and Rule 108 was unintentional.

Citations:

[2014] UKIntelP o44214

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 09 December 2022; Ref: scu.543151