Category: Intellectual Property

British Telecommunications Plc, Regina (on The Application of) v BPI (British Recorded Music Industry) Ltd and Others: CA 6 Mar 2012

Appeal against an order made by Kenneth Parker J in judicial review proceedings relating to the compatibility of the online infringement of copyright provisions

Judges:

Arden, Richards, Patten LJJ

Citations:

[2012] EWCA Civ 232, [2012] 2 CMLR 23, [2012] WLR(D) 63, [2012] Bus LR 1766

Links:

Bailii, WLRD

Statutes:

Digital Economy Act 2010, Copyright (Initial Obligations) (Sharing of Costs) Order 2011

Jurisdiction:

England and Wales

Cited by:

Cited – Secretary of State for The Home Department v Davis MP and Others CA 20-Nov-2015
The Secretary of State appealed against a ruling that section 1 of the 2014 Act was inconsistent wih European law.
Held: The following questions were referred to the CJEU:
(1) Did the CJEU in Digital Rights Ireland intend to lay down . .
Cited – NT 1 and NT 2 v Google Llc QBD 13-Apr-2018
Right to be Forgotten is not absolute
The two claimants separately had criminal convictions from years before. They objected to the defendant indexing third party web pages which included personal data in the form of information about those convictions, which were now spent. The claims . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 October 2022; Ref: scu.451801

Gomboc (Trade Marks – Judgment): ECJ 23 Apr 2020

Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Refusal or invalidation of registration – Three-dimensional mark – Article 3(1)(e)(ii) and (iii) – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Sign consisting of the shape which gives substantial value to the goods – Consideration of the perception of the relevant public

Citations:

C-237/19, [2020] EUECJ C-237/19, [2020] WLR(D) 247, [2020] Bus LR 1716, ECLI:EU:C:2020:296

Links:

Bailii, WLRD

Jurisdiction:

European

Intellectual Property

Updated: 23 October 2022; Ref: scu.660121

Renovo Limited, Ledwith, Williams Ferguson, O’Kane, Fairlamb and Mason (Patent): IPO 27 Jan 2011

IPO An uncontested application was filed by Renovo Limited. As a result, it was found that Ann Helena Ledwith should be mentioned as a joint inventor in the published patent application and granted patent for the invention along with the currently named inventors, Mark William James Ferguson, Sharon O’Kane, David Fairlamb and Tracey Mason. It was also directed that an addendum slip mentioning Ann Helena Ledwith as a joint inventor be prepared for the published patent application and granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2011] UKIntelP o02311, GB 2457965

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 23 October 2022; Ref: scu.458196

Protecting Kids The World Over (PKTWO) Limited (Patent): IPO 23 Dec 2010

IPO The invention concerned a system for monitoring an electronic communication on the internet such as a chat room, e.g. being used by a child. Words and phrases in the electronic communication were matched with those stored in a dictionary in a hash table. An aggregate alert level was generated based on these matches, and a message was generated and sent to a user (e.g. a parent) if the alert level reached a certain level. The user could then send back a response indicating that one of a number of actions be taken in response to that alert. The hearing officer applied the Aerotel test and concluded that the actual contribution lay solely in the excluded field and was therefore excluded from patentability as a program for a computer as such and a mental act as such.

Judges:

Mr B Micklewright

Citations:

[2010] UKIntelP o43910, GB0723964.3

Links:

Bailii

Cited by:

Appeal from – Re Protecting Kids The World Over (PKTWO) Ltd PatC 26-Oct-2011
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 October 2022; Ref: scu.458169

I2 Technologies US, Inc (Patent): IPO 7 Dec 2010

IPO The application is concerned with a computer-implemented system and method for supply chain planning in which the user is provided with a visual representation of the supply chain network and a high level plan display. These are interactive and the user can switch between them – for example to determine the effect of a change in production target on the supply chain or to investigate a stock supply problem. The results can then be used to generate a new plan.
The Hearing Officer applied the four part test set out in the Aerotel/Macrossan judgment, found the invention to be excluded as a computer program and as a method of doing business as such, and refused the application. She did not consider the invention provided a technical contribution of the type found in Symbian. In particular, a computer with the program of the present application did not provide, as a matter of practical reality, a ‘faster and more reliable computer’.

Judges:

Mrs S E Chalmers

Citations:

[2010] UKIntelP o42410, O/424/10, GB 0600191.1

Links:

Bailii

Statutes:

Patents Act 1977 1(2)(c)

Intellectual Property

Updated: 23 October 2022; Ref: scu.458158

Azam and Livesey (Patent): IPO 22 Dec 2010

IPO Just before the parties were due to be heard in a dispute over ownership of an application under the Patent Co-operation Treaty, the issue was raised of the validity of an assignment which appeared to cover all rights to the inventive matter contained in the application. As this was a point of central importance to the matter in dispute, and it concerned pure contract law, the Hearing Officer decided that overall the question would more properly be determined by the court and declined to deal with it. A request to allow three months for starting a claim in the court (as opposed to the normal two weeks specified under the Civil Procedure Rules) was refused on the grounds that there were no special circumstances in this case to justify departing from the normal procedure.

Judges:

Mr A C Howard

Citations:

[2010] UKIntelP o43810, O/438/10, PCT/GB2008/000706

Links:

Bailii

Statutes:

Patents Act 1977 12

Intellectual Property

Updated: 23 October 2022; Ref: scu.458148

Duncan Parfitt and Axium Process Ltd and Ceres Power Ltd (Patent): IPO 12 Nov 2010

IPO Mr Parfitt requested a review of opinion 1/10. That opinion had concluded that neither Axium Process nor Ceres Power were infringing Mr Parfitt’s patent. Mr Parfitt argued that the opinion should be set aside because the examiner has misinterpreted the patent and in particular had failed to give due weight to a particular feature of the invention. The Hearing Officer found that the examiner had not misinterpreted the patent and so did not set aside the opinion.

Citations:

[2010] UKIntelP o39410

Links:

Bailii

Intellectual Property

Updated: 22 October 2022; Ref: scu.458139

Charalambous (Patent): IPO 29 Nov 2010

Third party terms – Patent GB2310274 was announced as ceased in the Patents Journal due to a failure to pay the 14th year renewal fee. The Office had however failed to process a notification of a change of address for service correctly which had resulted in the renewal reminder being sent to the wrong address. The Office was prepared to reinstate the patent under rule 107 but considered it necessary to impose conditions to protect the interests of third parties who may have proceeded on the basis of the announcement that the patent had ceased. The patentee did not agree to the conditions. The hearing officer decided that in exercising discretion under rule 107 the comptroller should impose these conditions, and that the appropriate conditions were those set out in section 28A of the Patents Act 1977 in relation to restorations. The reinstatement was subject to payment of outstanding renewal fees.

Judges:

Mr B Micklewright

Citations:

GB2310274, [2010] UKIntelP o40810

Links:

Bailii

Statutes:

Patents Rules 2007 107

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.458137

Semitel Limited (Patent): IPO 19 Oct 2010

The decision concerns a review of opinion 33/09. The opinion concluded that there was no infringement of the patent. The exclusive licensee requested that the opinion be set aside. The request was unopposed – no counterstatement was filed. One of the grounds for setting aside was not permitted by rule 98(5), but the Hearing Officer accepted that there were other, permissible grounds for a review. He accepted the requester’s argument that the opinion had not interpreted one part of the patent specification correctly. The opinion was set aside.

Citations:

[2010] UKIntelP o35710

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.458111

Steven Mclellan, Distribuidora Internacional De Medicamentos Y Equipo Medico, SA De CV, Richard Paul Hayes-Pankhurst, Graham Keith Lacy, Julian Francis Ralph Swan (Patent): IPO 14 Oct 2010

IPO An uncontested application was filed by Steven McLellan under rule 10(2) of the Patents Rules 2007. As a result, it was found that he should be mentioned as a joint inventor in the published patent application along with Richard Paul Hayes-Pankhurst, Graham Keith Lacy and Julian Francis Ralph Swan, and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application.

Judges:

Mrs S Williams

Citations:

O/350/10, [2010] UKIntelP o35010, GB 0905015.4

Links:

Bailii

Intellectual Property

Updated: 22 October 2022; Ref: scu.458112

Polytan Planungs-Und Baugwsellschart Fuer Sportlagen Mbh Co, Edel Grass BV and Fieldturf Holdings Inc (Patent) O/412/10: IPO 30 Nov 2010

IPO This is the consolidation of two individual actions for the revocation of two GB patents held by Fieldturf, GB 2329910 and its divisional GB 2350843. Fieldturf applied to amend these two patents under s75 during the course of these actions. As a result of the applicants for revocation stating that they no longer wish to pursue their applications for revocation under section 72, it was considered whether to pursue revocation in the public interest. The Hearing Officer found that revocation should not be pursued as there was no clear lack of novelty or inventive step in the claims as proposed to be amended. Despite some earlier reservations as to their clarity being expressed on behalf of the Comptroller, the Hearing Officer was satisfied that the proposed amendments to the claims were allowable in respect of issues other than novelty and inventive step. Therefore the Hearing Officer allowed the patents to be amended in the form sought by the proprietor and made no orders for revocation of the patents.

Judges:

Mr A Bartlett

Citations:

[2010] UKIntelP o41210, GB 2350843, GB 2329910

Links:

Bailii

Statutes:

Patents Act 1977 72

Intellectual Property

Updated: 22 October 2022; Ref: scu.458120