Category: Intellectual Property

Rothenberger v EUIPO – Paper Point (Robox) (EU Trade Mark – Judgment): ECFI 15 Oct 2020

EU trade mark – Opposition proceedings – Application for the EU word mark ROBOX – Earlier EU word mark OROBOX – Relative ground for refusal – Likelihood of confusion – Independent subcategory of goods – Taking into consideration of a descriptive element – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

T-49/20, [2020] EUECJ T-49/20, ECLI:EU:T:2020:492

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660615

Pareto Trading v EUIPO – Bikor and Bikor Professional Color Cosmetics (Bikor Egyptian Earth) (EU Trade Mark – Judgment): ECFI 16 Dec 2020

EU trade mark – Invalidity proceedings – EU word mark BIKOR EGYPTIAN EARTH – Absolute ground for refusal – Bad faith – Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2020:630, T-438/18, [2020] EUECJ T-438/18

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660743

Facegym v EUIPO (Facegym) (EU Trade Mark – Order): ECFI 18 Dec 2020

EU trade mark – Application for EU word mark FACEGYM – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law

Citations:

ECLI:EU:T:2020:646, T-289/20, [2020] EUECJ T-289/20_CO

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 October 2022; Ref: scu.660715

Telefonakiebolaget LM Ericsson (Patent): IPO 2 May 2012

IPO This application relates to a method and arrangement for investigating an unknown calling party that has sent a communication request to a called party, in order to provide information on the relationship between the calling party and the called party. The called party can then use this information to decide whether to accept the call or not. The invention is executed on a presence server in an IP Multimedia Subsystem (IMS) network, where the presence server is adapted to provide additional relationship data.
Applying the Aerotel/Macrossan test, as modified by Symbian and the ATandT/CVON signposts, and also taking into account the Halliburton decision, the hearing officer found that the contribution of the invention relates to a computer programme executing a method in a presence server comprising receiving a relation query for the calling party from the called party, determining, for example, by searching the various contact lists on the presence server, if the called party is known and related to a third party, directly or indirectly, known and related to the called party from a group that has been defined for the called party. This contribution was found to relate only to excluded matter.
The invention was found to be a programme for a computer as such, which is matter excluded under s.1(2), and it was refused under s.18(3).

Judges:

Dr Lawrence Cullen

Citations:

[2012] UKIntelP o18412, O/184/12

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 31 October 2022; Ref: scu.460106

Russell Taylor v AQ Plc (Patent): IPO 1 May 2012

Entitlement – This was an uncontested entitlement action, the registered proprietor of the patent application having been dissolved. The Hearing Officer accepted that, on the balance of probabilities, the matter in the patent application belonged to the claimant. As the application was refused nearly three years ago, the Hearing Officer could not make an order under section 8(2) as sought by the claimant, but he did make an order under section 8(3) allowing the claimant to make another application within 3 months.

Judges:

Mr S Probert

Citations:

[2012] UKIntelP o18312, GB2430371A

Links:

Bailii

Statutes:

Patents Act 1977 8 8(3)

Intellectual Property

Updated: 31 October 2022; Ref: scu.460101

Bank of America Corporation (Patent): IPO 9 May 2012

IPO Excluded fields (refused) – The application relates to a method of retrieving financial information stored in a first database by using a second database, which contains data referencing the first database, as a dictionary or index. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and the decisions in ATandT and Cvon and Halliburton and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than a program for a computer and a method for doing business as such.

Judges:

Mr S Brown

Citations:

[2012] UKIntelP o19112, GB0918198.3

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 31 October 2022; Ref: scu.460090

Lucasfilm Entertainment Company Ltd, Michael Sanders, Kevin Wooley Colin Davidson, Steve Sullivan (Patent): IPO 19 Apr 2012

Application under section 13(1) was filed by Lucasfilm Entertainment Company Ltd to mention Michael Sanders and Kevin Wooley as joint inventors. Colin Davidson and Steve Sullivan were invited to file a counter-statement in relation to the proceedings but failed to do so. As such, the comptroller considered the application to be unopposed and found that Michael Sanders and Kevin Wooley should be mentioned as joint inventors in the granted patent for the invention. The comptroller also directed that an addendum slip be prepared mentioning Michael Sanders and Kevin Wooley as joint inventors for the granted patent for the invention

Citations:

[2012] UKIntelP o16712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460078

Vmware Inc (Patent): IPO 25 Apr 2012

IPO Inventive step – The application is concerned with installing software on a computer system and resolving any dependencies that arise by making copies of dependant resources. The examiner’s inventive step objection was based on two sets of citations, the first set showing that it is known to copy shared resources and the second set showing that handling multiple dependencies in a run-time environment is well-known in the art. The hearing officer found that none of the citations disclosed or suggested copying shared resources when a dependency or conflict is detected, and concluded that the claims do involve an inventive step. The attorney offered to amend claim 12 in order to clarify the scope of the invention; once amended, the application could be granted.

Judges:

Mr H Jones

Citations:

[2012] UKIntelP o17112, GB0821774.7

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(b)

Intellectual Property

Updated: 31 October 2022; Ref: scu.460089

Compurants Ltd (Patent) O/187/12: IPO 4 May 2012

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 able to select the food they wish to order by touching the appropriate images on the table. In particular, the projected images are intended to show how the food would like on a plate thereby aiding, for example, the visually impaired in ordering their food.
The Hearing Officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to the presentation of information, a business method and a computer program as such, and having found no technical contribution refused the application under Section 18(3). The Hearing Office also applied the Windsurfing/Pozzoli test in respect of claim 1 and found the invention to lack an inventive step.

Citations:

[2012] UKIntelP o18712, GB1105406.1

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 31 October 2022; Ref: scu.460092

Vmware Inc (Patent): IPO 9 Mar 2012

IPO The decision considered whether the inventions claimed in two similar applications were excluded as computer programs. The applications related to the deployment of software applications to the runtime environment of a computer. The hearing officer, applying the test set out in Aerotel/Macrossan found that the inventions involved, in both cases a technical contribution and as such were not excluded as computer programs as such. The cases were remitted back to the examin

Citations:

[2012] UKIntelP o09612

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460058

Jagwood Inc (Patent): IPO 9 Mar 2012

IPO Patent application GB 0910818.4, entitled ‘Process of and apparatus for notification of financial documents and the like’, concerns a payments advice system and its method of use. This system allows a payer to send a payment to a payee and associate it with a document stored on the advice system. To enable the payee to access the document, the payer provides an address in the form of a short uniform resource identifier as a reference in the payment. This allows the payee to view the reference on their bank statement and use it to access the document. Thus, the necessary documents can be associated directly with each financial transaction. A short uniform resource indicator is a means to describe how to access the relevant document and describes where it is and how to identify it, for example, a web address in the form of traditional and standard domain name address combined with a reference number. The use of such short uniform resource indicators was suggested to give the application the necessary ‘technical character’ as a document retrieval system.
Applying the Aerotel/Macrossan test, as modified by Symbian, the hearing officer found that contribution made by the claims of the application is a means of sending a payment from a payer to a payee wherein the payment detail includes a payment amount and a reference, the reference being an internet address that can be used to access a document associated with the transaction. This contribution as a whole lies in the area of excluded matter as a method of doing business, which is matter excluded under s.1(2). The application was refused under s.18(3). The Hearing officer also found that the invention was excluded as a programme for a computer.

Citations:

[2012] UKIntelP o11412

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460035

Gm Global Technology Operations Llc, Siegfried Duwensee, Salvador Climent and Franz Sabo (Patent): IPO 9 Mar 2012

IPO An uncontested application was filed by GM Global Technology Operations LLC. As a result, it was found that Siegfried Duwensee should be named as a joint inventor along with the currently named inventors, Salvador Climent and Franz Sabo. It was also directed that an addendum slip mentioning Siegfried Duwensee as a joint inventor be prepared for the granted patent for the invention.

Citations:

[2012] UKIntelP o11512

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460032

Logined BV (Patent): IPO 5 Mar 2012

The decision considered whether the invention was excluded under section 1(2). The application relates to a method of generating a ‘decision tree’ to show the decisions taken as well as other factors considered when modeling the performance of oil reservoirs. Applying the four-stage test set out in Aerotel/Macrossan the hearing officer found the invention to relate solely to the presentation of information and to a computer program as such. The hearing officer could find no saving amendments hence he refused the application under section 18(3).

Citations:

[2012] UKIntelP o09712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460040

Thomas Michael Anderson (Patent): IPO 9 Mar 2012

IPO The decision concerns whether the contribution made by the invention falls within the excluded fields as a scheme, rule or method for playing a game.
The invention comprises a word game in which single vowels are added to or subtracted from a word (presented in the form of an anagram) in order to produce longer or shorter dictionary-defined words. The examiner had objected that the claimed invention was excluded under section 1(2)(c) as a scheme, rule or method for playing a game and/or performing a mental act, and/or the presentation of information. The examiner had also informed the applicant that he was unable to see anything in the application which could form the basis of a patentable claim.
Applying the Aerotel test, the hearing officer concluded that the contribution made by invention fell solely within excluded matter as it related to the rules for playing the particular game. In addition, upon reviewing the application as a whole the hearing officer concluded there were no possible amendments which could support a patentable claim, since any apparatus used to play the game was already known. Given that the application wholly fell within the ‘games’ exclusion, the hearing officer saw no need to consider other excluded fields.

Citations:

[2012] UKIntelP o11212

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460045

Lexis Nexis Risk Solutions Fl Inc (Patent): IPO 30 Mar 2012

IPO The invention relates to systems and methods for improved database queries where records may be incomplete and/or confidential and/or duplicated, to combine records in a way such that when a search query is executed multiple possible matches are returned. Each match is assigned a confidence score, and a test of the ratio between a highly ranked result and the next result, or sum of the other results in formed, and if the confidence score exceeds a threshold the result is output. The output identifies the records in a ‘foreign’ database which should be retrieved.
The Hearing Officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to methods and systems for making database queries with returned values having a high confidence level. The Hearing Officer found the contribution to relate to a computer program as such and could find no technical contribution and so refused the applications under Section 18(3).

Judges:

Miss J Pullen

Citations:

[2012] UKIntelP o14312, O/143/12

Links:

Bailii

Intellectual Property

Updated: 31 October 2022; Ref: scu.460039

Forensic Science Service Limited (Patent): IPO 5 Mar 2012

The invention relates to a method of analysing samples containing mixed source DNA to establish mixing proportions for the sources and establish likely genotypes for the source. The output of the sample analysis is subjected to a further iterative analysis which involves creating simulated outputs where the contributory factors are known and comparing these to the actual output to see if they match. Each time a better match is acquired this is assumed to be the best match. The method continues until the optimum explanation of the output is acquired. Such information is useful in a variety of legal and law enforcement applications. The hearing officer found that the contribution lay in the field of data processing and related to a computer program as such. The application was therefore refused.

Citations:

[2012] UKIntelP o09912

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 31 October 2022; Ref: scu.460030

Raytheon Company (Patent): IPO 3 Feb 2012

IPO The invention relates in general to a system for remotely accessing records stored in a distributed database. The system includes a number of federated databases which may be located at separate locations and are interconnected by a network such as the Internet. Remote users can access the system via a conventional web browser. In order to retrieve records from the system, users submit queries via their web browser which include various filtering criteria such as keywords, time or geospatial indicators which can be compared with the contents of records stored within the various databases to extract those records which match the specified criteria. The process of filtering records to find those which match a user’s query is facilitated by the use of a metadata database containing metadata records which represent corresponding records within each of the federated databases but include much less data. By searching the metadata records only, far less data is being processed which enhances the speed by which queries can be executed and data records extracted. Furthermore, user queries are stored in a data event agent which periodically repeats the filtering of metadata records to identify any new records which have been added to the database and any additions or modifications to existing records which meet the original user query. In this way, the user can be supplied with a continuous feed of data records which match their original request. Therefore, if the databases are incomplete or not responding when the initial query is made, any missing or modified data records are supplied to the user as they become available. This means that remote users are no longer required to re-submit their query to obtain any additional records which may become available sometime in the future following their initial request as was the case in prior-art federated databases.
The Hearing Officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and having considered the signposts set out in ATandT/CVON, found the contribution to relate to a computer program as such, and having found no technical contribution refused the application under Section 18(3).

Judges:

Mr P Slater

Citations:

[2012] UKIntelP o04612, O/046/12, GB0901322.8

Links:

Bailii

Intellectual Property

Updated: 31 October 2022; Ref: scu.460012