Category: Intellectual Property

Pro Challenge Limited (Patent): IPO 2 Apr 2009

IPO The applicants filed restoration applications on four patents, but it later transpired that a fifth had been omitted in error from the application form. The applicants requested that the fifth patent be included in the original application for restoration ‘in accordance with s.117’. The HO had to decide this issue first. If he found in favour of that request, he would then include the fifth patent in his considerations under s.28(3) for the other four patents. If not, only those four need be considered under s.28(3).
The HO found that s.117 did not allow the fifth patent to be entered into the proceedings for consideration under s. 28(3). He concluded that if he were to find otherwise, he would in effect (because of the facts of this case) extend a period for filing restorations which by specific provision of the law cannot be extended, i.e. rule 41(1), but that in any event the request failed under s.117 because the applicants’ error was a procedural omission and as such cannot be corrected under s.117.
So only the four patents initially entered on the restorations application form were considered under s.28(3).
The proprietor of these four cases went into administration. An Administrator was appointed and was responsible for their renewal at the time all four of them became due for renewal and throughout the period in which they could have been renewed late with fines. The evidence showed that the Administrator was generally aware that the patents had to be renewed ‘some time after June 2006’ and that attempts were made to avail himself more specifically of the dates involved, but due to events outside his control this never transpired. However, the evidence showed that while the Administrator did not know the specific dates involved, he was aware that eventually a final date for payment for each would be reached. He was also aware that throughout the period the patents were in his care, no funds were available to make such payments. The HO concluded that in those circumstances, the failure to pay the renewal fees on time was not ‘unintentional’ as required by s. 28 (3) and as such the request to restore the patents was refused.

Citations:

[2009] UKIntelP o09009

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457332

Nokia Corporation (Patent): IPO 24 Apr 2009

IPO The application is concerned with developing the functionality of a mobile phone, particularly the networking functionality (i.e. the network connections) of the phone. In the invention, software applications for mobile phones are developed by connecting a desktop PC to a mobile phone via a network connection. A software developer uses the desktop PC to direct the software development process by inputting commands at the desktop PC which are then transferred to the phone in order to call individual modular software elements stored on the phone. In particular, the software developer uses the desktop PC to compose scripts that are transferred to the phone which execute under the control of a command interpreter and which combine two or more of the software modules resident on the phone.
In applying the Aerotel/Macrossan [2007] RPC 7 test for excluded matter, the Hearing Officer found that the invention does provide a technical contribution, as required by Symbian [2008] EWCA Civ 1066, and that consequently the invention does not fall solely within excluded matter. In particular, it was held that whilst the invention may be implemented in software it overcomes technical problems inherent in the prior art such that it is more than a program for a computer as such. It was also held that the invention did not relate to method for performing a mental act as such.
The Hearing Officer went on to find that the claims considered at the hearing were not supported by the application as filed. The applicant was given an opportunity to amend the application in order for it to comply with the act and rules.

Citations:

[2009] UKIntelP o10709

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457331

E I Du Pont De Nemours Co, Inc (Patent): IPO 9 Apr 2009

IPO An application for a paediatric extension of granted certificate SPC/GB/95/010 was filed. The preliminary view of the examiner was that this application did not meet the requirements of Article 8(1)(d)(i) of Regulation (EEC) No. 1768/92 as it did not include a copy of the statement of compliance with an agreed completed paediatric investigation plan as referred to in Article 36(1) of EC Regulation (EC) No. 1901/2006. This view was upheld by the Hearing Officer who considered the relevance of Articles 8, 23, 24, 29 and 36 of Regulation (EC) No. 1901/2006 and IPO decision BL O/035/09 (Merck and Co. Inc). He further found that the application did not fulfil the condition of Article 8(1)(d)(ii) of Regulation (EEC) No. 1768/92 to prove that the product was approved for use in all EU member states. This he found to be an explicit requirement under Article 36(3) when the Mutual Recognition Procedure (MRP), as set out in Articles 32-34 of Directive 2001/83/EC, is used to gain approval for variation of the marketing authorisation. The documents supplied, a commission decision under Article 29 of Regulation (EC) No. 1901/2006, a preliminary variation assessment report from the national competent authority of the reference member state and an opinion from the Paediatric Committee of the European Medicines Agency (EMeA) on compliance with an agreed completed paediatric investigation plan were not sufficient to meet the requirements under Article 36 of Regulation (EC) No. 1901/2006 regarding a statement of compliance with an agreed completed paediatric investigation plan and that the product was approved for use in all EU member states.

Citations:

[2009] UKIntelP o09609

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457321

Sports Analysis Limited (Patent): IPO 23 Mar 2009

IPO In order to take account of frequent changes in the pin position on a golf hole and provide an up-to-date course guide, the invention took a GPS reading of the pin location and generated a printed map of the hole with graduations showing the distance between the pin and a fixed point on the hole; the method (but not the system) main claim required the graduations to be overprinted on to a card already having a graphic representation of the hole.
Applying the Windsurfing/Pozzoli test for inventive step, the hearing officer held the system claim obvious to the skilled person (a golf course cartographer with knowledge that GPS could be used to map the position of any feature on a hole including the pin, albeit usually for on-course guidance to golfers by electronic means), but held the method claim to involve an inventive idea however simple the overprinting might be to implement. The hearing officer discounted the commercial success of the invention.
Nevertheless, applying the Aerotel test on excluded invention and treating the application as refused, the hearing officer considered that the contribution of any invention present related solely to the presentation of information. The contribution was neither technical in nature nor did it solve a technical problem – even if technical means including use of GPS were needed to put it into effect, these means were wholly conventional.

Citations:

[2009] UKIntelP o07609

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457309

James Hans McRoberts (Patent): IPO 25 Mar 2009

IPO The invention purported to generate power continuously from a system of containers that were alternately filled with water at the top of their travel and emptied at the bottom, the water being pumped back to the upper level. 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:

[2009] UKIntelP o08109, O/081/09

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457303

William Duff and Joseph Brown (Patent): IPO 2 Mar 2009

IPO The claimant, Mr Duff, filed proceedings under section 8, 12 and 13(3) to the effect that he ought to be named as sole patent applicant and sole inventor in respect of patent application number GB 0419912.1 and international patent application number PCT/GB2004/003785. On the basis of written information provided, the comptroller concluded that the relevant parties agreed that claims 9 and 10 could be removed from the patent applications and that Mr Duff should be named as sole patent applicant and sole inventor.
The comptroller concluded there was no finding to make in relation to the section 8 reference given the agreement of the parties to the removal of claims 9 and 10, and the assignment of the application to Mr Duff. With regard to the section 13(3) application, he found that Joseph Brown should not be mentioned as a joint inventor in any subsequent patent granted for the invention and directed that claims 9 and 10 be removed from the application. In relation to the section 12 reference, he issued a declaration to the effect that Mr Duff is entitled to the invention the subject of international patent application number PCT/GB2004/003785 and as such should be named as sole patent applicant. He also found that Mr Duff should be recorded as sole inventor for each jurisdiction designated for the same reasons as outlined in relation to the GB patent application.

Citations:

[2009] UKIntelP o06109

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457314

Christopher Norris and Veronica Norris (Patent): IPO 2 Mar 2009

IPO The invention was a bed extension for a touring caravan which would increase the bed width by 50% and could be folded in half for storage with the legs folding flat. The hearing officer held that the skilled person was someone working in the field of beds and would not need specialised input from a caravan manufacturer. Accordingly the invention was obvious in relation to one of the citations disclosing a portable table folding in half and having inwardly folding legs which could be placed between the front and rear seats of a car to provide a sleeping surface, when considered against the common general knowledge (apparent from one of the citations) that a bed extension could be hooked to the side rail of a bed and supported by pivotal legs; making the extension to a particular size was merely a matter of routine workshop practice. Application refused.

Citations:

[2009] UKIntelP o06209

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457295

Derek Norman Green (Patent): IPO 27 Mar 2009

IPO The application was filed on 7 May 2008 in the name of Derrick Norman Green. The application was filed under Section 89A (3) of the Act 1977, requesting entry to the UK National Phase for international application PCT/GB2006/001054. The period prescribed by Rule 66(1) (b) for entry into the National Phase is 31 months from the earliest declared priority date. The international application had an international filing date of 22 March 2006 and an earliest priority date of 22 March 2005. The prescribed period for entry to the National Phase therefore expired on 22 October 2007. A Form 52 requesting an extension to the prescribed time limit and evidence in the form of a sworn statement were filed with the application. As the applicant had failed to comply with the requirements of Rule 66(1) (b) and the extension of time had not been filed in the time prescribed by Rule 108, the application was treated as withdrawn. The applicant was informed that reinstatement was the only option available if he wished to proceed. A Form 14 was duly filed by the applicant requesting reinstatement under s.20A and r.32.
The essential determination to be made under s.20A is that the Comptroller shall reinstate the application if he is ‘satisfied that the failure to comply [with s. 89A(3) in this case] . . was unintentional’. The applicant’s case for reinstatement is based on the argument that as a result of severe financial difficulties he was prevented from pursuing entry into the UK National Phase. The applicant contended that he fully intended to enter the National Phase but was prevented from doing so because of his financial circumstances. Evidence was provided showing the applicant’s financial position and his attempts to secure finances to be able to enter the application into the UK National Phase. The HO found that despite his underlying intention to enter the application into the UK National Phase and despite his on-going attempts and a last ditch attempt to secure finances to do this, the applicant’s final decision not to comply with the deadline set under Section 89A(3) and Rule 66)1)(b) was a conscious one based on his knowledge of his impecunious state. As such the failure to comply cannot have been unintentional. The request to reinstate the application was therefore refused.

Citations:

[2009] UKIntelP o08709

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457297

William Ford and Threeway Pressings Ltd (Patent): IPO 27 Feb 2009

IPO This was a decision on costs following withdrawal of an entitlement reference under Section 8 after evidence was filed by both sides but before the hearing. The claimant argued that he should not have to pay costs because he still believed he was entitled to the patent application but following legal advice believed the patent invalid and therefore that the reference was not worth pursuing. The hearing officer considered that as the defendant had still been put to expense, which could have been avoided even on the claimant’s argument if the claimant had sought legal advice earlier, an award was justified. He awarded pounds 1000 in favour of the defendants following the standard scale.

Citations:

[2009] UKIntelP o06009

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Costs

Updated: 21 October 2022; Ref: scu.457290

32Red Plc (A Gibraltar Company) v WHG (International) Ltd and Others: ChD 21 Jan 2011

The parties, online gaming companies, disputed the use of a trade mark.
Held: The claim succeeded.

Judges:

Henderson J

Citations:

[2011] ETMR 21, [2011] EWHC 62 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Principle Judgment – 32Red Plc v WHG (International) Ltd and Others ChD 12-Apr-2013
The court had found trade mark infringement by the defendant and now considered the quantification of damages. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 October 2022; Ref: scu.428194

Occlutech Gmbh v Aga Medical Corp: ChD 31 Jul 2009

The claimants sought a declaration of non-infringement of patents involving medial devices. The patent owner claimed infringement and the claimant also sought revocation of the patent for obviousness.
Held: The device did not infringe the patent. ‘i) The language of the patent is the starting point and is critical though not finally determinative.
ii) If there is a conventional meaning of a word or expression, either in the eyes of the skilled team, or in everyday language if the words have no special meaning to the team, then a conclusion that it has some unconventional meaning requires a rational basis.,br />iii) Even if a given limitation looks odd, in the sense that one cannot see why the patentee would have included it, there may nevertheless be an undisclosed reason for that oddity and one cannot assume that the oddity is unintended and betokens an unconventional meaning for words, or that the limitation should be disregarded.’ The court felt able to distinguish a conflicting decision in Germany. The patent claims were not however obvious and the patent stood.

Judges:

Mann J

Citations:

[2009] EWHC 2013 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – STEP v Emson Europe Ltd CA 1993
Hoffmann LJ said: ‘The well known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Cited – Pozzoli Spa v BDMO Sa and others PatC 21-Jun-2006
. .
Cited – Kirin-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: 21 October 2022; Ref: scu.371883

Nokia Corporation v Revenue and Customs: ChD 27 Jul 2009

Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for distribution within the EU, it had no power to detain them. The goods were agreed to be fake, but no evidence of the identities of the people involved had beeen established.
Held: Case law established that it was for the mark owner to establish that the goods would be districuted as required: ‘infringement of registered trade mark requires goods to be placed on the market and that goods in transit and subject to suspensive customs procedures do not, without more, satisfy this requirement.’
The Directive had not intended to extend the powers of mark owners in the way suggested. ‘in order for products bearing trade marks to be counterfeit goods within the meaning of the Counterfeit Goods Regulation they must in fact infringe someone’s trade marks in the territory in question. ‘

Judges:

Kitchin J

Citations:

[2009] EWHC 1903 (Ch), [2009] ETMR 59, (2009) 32(8) IPD 32054

Links:

Bailii

Statutes:

Council Regulation 1383/03, The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473), Council Regulation (EEC) No 2913/92, Council Directive 89/104

Jurisdiction:

England and Wales

Citing:

Cited – The Polo/Lauren Co LP v PT Dwidua Langgeng Pratama International Freight Forwarders Case ECJ 14-Apr-2000
Council regulations empowered customs officers of member states to seize goods suspected of being counterfeit or pirated and in breach of Trade Mark and other laws This applied even to goods which were merely seized in transit through a member . .
Cited – Montex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .
Cited – Rioglass and Transremar (Judgment) ECJ 23-Oct-2003
Motor car windows bearing the trade marks of a number of French motor car makers were lawfully made in Spain. Under a customs suspensive procedure they were being exported outside the EU to Poland. French Customs seized them whilst in transit in . .
Cited – Class International v Colgate Palmolive ECJ 18-Oct-2005
ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed . .
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Customs and Excise, European

Updated: 21 October 2022; Ref: scu.368643

Football Association Premier League Ltd and Others v QC Leisure (A Trading Name) and Others: ChD 13 Nov 2008

Football organisations applied to be joined to a case being remitted to the European Court for the purpose of giving their views on the questions raised. The European Court practice only allowed for states to act as interveners. The court had already recognised the significance of the question to be referred as to the licensing of programming rights for sports and outside sport within Europe.
Held: The rules allowed a party to be added in these circumstances, and it was desirable that the parties applying should be joined. Procedural orders and arrangements as to costs were made to reduce any procedural disadvantage to the respondents by addition of the new claimants.

Judges:

Kitchin J

Citations:

[2008] EWHC 2897 (Ch), [2009] 1 WLR 1603, [2009] Eu LR 373

Links:

Bailii

Statutes:

Civil Procedure Rules 19.2(2)

Jurisdiction:

England and Wales

Citing:

Cited – Casagrande v Landeshauptstadt Munchen (Judgment) ECJ 3-Jul-1974
The question of whether or not a person is a party must be decided according to the criteria of national law. . .
Cited – Regina v Minister of Agriculture Fisheries and Food ex parte Anastasiou (P) Ltd ECJ 1-Aug-1994
Turkish Cypriot produce was not acceptable for import without a proper origin label. A certificate from a non-community country was not acceptable, there being no standards of control. . .
Cited – Ramondin and Ramondin Capsulas v Commission (State Aid) ECJ 11-Nov-2004
Where the European Courts has power to permit interventions in direct actions they exercise the power in a restrictive manner, and allow interventions only by those persons able to establish a direct interest in the ruling on the specific act whose . .
See Also – The Football Association Premier League Ltd v QC Leisure and others ChD 18-Jan-2008
The court considered interlocutory applications in an action for copyright infringement alleging the unauthorised broadcast of football matches. . .
See Also – Football Association Premier League Ltd and others v QC Leisure and others ChD 24-Jun-2008
Three actions were heard in which the claimants alleged copyright infringement in the use of decoder cards to broadcast foreign transmissions of live Premier League football matches. . .

Cited by:

See Also – Football Association Premier League Ltd and Others v QC Leisure and Others ChD 3-Feb-2012
The claimant complained that in using decoders imported from Greece, the defendants had infringed their copyrights. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European, Litigation Practice

Updated: 21 October 2022; Ref: scu.374396

Dyson Technology Ltd v Strutt: ChD 25 Nov 2005

The claimant sought to restrain the defendant, one of its former engineers from working for a competitor and using the confidential knowledge he had obtained when working for them.
Held: The court set out the difficulties for a leaving employee in maintaining confidential information of his former employer when working for a new employer.

Judges:

Sir Donald Rattee

Citations:

[2005] EWHC 2814 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Dyson Technology Ltd v Strutt ChD 24-Jul-2007
. .
Cited – Caterpillar Logistics Services (UK) Ltd v Huesca De Crean QBD 2-Dec-2011
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other . .
Lists of cited by and citing cases may be incomplete.

Employment, Intellectual Property

Updated: 21 October 2022; Ref: scu.374045

Levi Strauss and Co and Another v Tesco Stores Ltd and Others: ChD 31 Jul 2002

Pumfrey J discussed the principle of European law disallowing so called grey imports in breach of trade mark law, as set out in EMI v CBS, and said that it: ‘could hardly be clearer. It has formed, with the principle of exhaustion, the basis for the application of the principles of free movement in the context of trade marks and other intellectual property rights.’

Judges:

Pumfrey J

Citations:

[2002] 3 CMLR 11, [2002] ETMR 95, [2002] Eu LR 610, [2003] RPC 18, [2002] EWHC 1625 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – EMI Records v CBS United Kingdom ECJ 15-Jun-1976
ECJ Neither the rules of the Treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common . .

Cited by:

Approved – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European, Commercial

Updated: 21 October 2022; Ref: scu.346767

L’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 infringement, and the legislation remained unclear. Many of the direct sellers were held to be selling in infringement of the claimants marks. Guidance from the ECJ was required to establish whether the first defendants were also infringing. eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable.

Judges:

Arnold J

Citations:

[2009] EWHC 1094 (Ch), [2009] RPC 21, [2009] ETMR 53

Links:

Bailii

Statutes:

Trade Marks Act 1994, First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 5, Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products

Jurisdiction:

England and Wales

Citing:

Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Cited – Quads 4 Kids v Campbell 2006
. .
Cited – Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik ECJ 23-Feb-1999
The expressions complained of as trade mark infringements were ‘BMW specialist,’ ‘Specialised in BMWs’ and ‘Repairs and maintenance of BMWs’.
Held: The Court proceeded on the basis that this was an Art.5(1)(a) case of identical marks and . .
Cited – Arsenal Football Club plc v Reed ECJ 12-Nov-2002
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade . .
Cited – Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH ECJ 16-Jul-1998
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. . .
Cited – 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 . .
Cited – Sebago and Maison Dubois et Fils SA v GB-Unic SA ECJ 1-Jul-1999
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual . .
Cited – Robelco v Robeco Groep NV ECJ 21-Nov-2002
Europa Directive 89/104/EEC – Article 5(5) – Provisions on protection against use of a sign other than for the purposes of distinguishing goods or services – Extent of such protection – Signs similar to the mark. . .
Cited – Adam Opel AG v Autec AG, intervener: Deutscher Verband der Spielwaren-Industrie eV (Approximation Of Laws) ECJ 25-Jan-2007
Europa Reference for a preliminary ruling Trade Marks Article 5(1)(a) and (2), and Article 6(1)(b) of the First Directive 89/104/EEC Right of a trade mark proprietor to prevent use by a third party of a sign . .
Cited – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
Cited – Celine SARL v Celine SA (Approximation Of Laws) ECJ 18-Jan-2007
Celine SA, set up before 1945, traded in Paris creating and marketing clothes and accessories, and had a French registered trade mark Celine for clothes and shoes. Celine Sarl was set up in 1992 as successor to a business selling clothing and . .
Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another ECJ 8-Apr-2003
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving . .
Cited – Peak Holding AB v Axolin-Elinor AB (formerly Handelskompaniet Factory Outlet i Loddekopinge AB) ECJ 30-Nov-2004
ECJ (Approximation Of Laws) Trade marks – Directive 89/104/EEC – Article 7(1) – Exhaustion of the rights conferred by a trade mark – Putting on the market of the goods in the EEA by the proprietor of the trade . .
Cited – Montex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .
Cited – Bristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
Cited – Pharmacia and Upjohn SA, formerly Upjohn SA v Paranova A/S ECJ 12-Oct-1999
ECJ Trade-mark rights – Pharmaceutical products – Parallel imports – Replacement of a trade mark. . .
Cited – Loendersloot v Ballantine and Son and others ECJ 11-Nov-1997
ECJ Article 36 of the EC Treaty – Trade mark rights – Relabelling of whisky bottles. . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Societe industrielle lingerie (SIL), Societe industrielle lingerie (SIL) ECJ 23-Apr-2009
ECJ Directive 89/104/EEC – Trade-mark law Exhaustion of the rights of the proprietor of the trade mark – Licence agreement – Sale of goods bearing the trade mark in disregard of a clause in the licence agreement . .
Cited – Boehringer Ingelheim KG and Others v Swingward Ltd and Another ECJ 23-Apr-2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied.
Held: The prohibition of quantitative restrictions on imports . .
Cited – Michael Holterhoff v Ulrich Freiesleben ECJ 14-May-2002
A trade mark was found to have been used to describe a method of cutting precious stones, rather than to identify their producer. . .
Cited – Boehringer Ingelheim KG v Swingward Ltd ECJ 6-Apr-2006
Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .

Cited by:

Cited – Twentieth Century Fox Film Corporation and Another v Newzbin Ltd ChD 29-Mar-2010
The defendant operated a web-site providing a search facility of the Usenet news system which allowed its users to locate copies of films online for downloading. The claimant said this was an infringement of its copyrights.
Held: The defendant . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 21 October 2022; Ref: scu.346317

Allmanna Svenska Electriska A/B v The Burntisland Shipbuilding Co Ltd: 1952

The question whether an the invention was obvious was ‘a kind of jury question’. As such, an appellate court should be reluctant to disturb it. If it was so obvious, the patent was invalid.

Judges:

Jenkins LJ

Citations:

(1952) 69 RPC 63

Jurisdiction:

England and Wales

Cited by:

Cited – 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 molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 October 2022; Ref: scu.184325

Ms Penelope Mary Townsend Hugh David Niblock Hunter Boot Limited (Patent): IPO 24 Feb 2009

The patent relates to a sock for a boot, the sock having three defined parts: a lower foot portion, an upper portion for fitting snugly around the inside of the upper portion of the boot, and an outer portion for fitting snugly around the outside of the top of the boot. The proprietor of the patent has applied for a review under section 74B of the Patents act of opinion 01/08; that opinion had concluded that a proposed design of sock did not infringe the patent. The proprietor challenged the examiner’s interpretation of claim 1 and the specification, both the approach and conclusion under purposive construction.
The hearing officer found that the opinion examiner had followed the appropriate law in interpreting claim 1 and the specification and that the conclusion in the opinion was a reasonable one.

Citations:

[2009] UKIntelP o05509

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457281

Research Affiliates, Llc (Patent): IPO 2 Feb 2009

IPO The invention related to the generation of an index of financial entities for the passive management of a securities portfolio. Applying the Aerotel test in the light of Symbian, the hearing officer held that the contribution was the generation of an index which was built and non-equally weighted on the basis of metrics which did not depend on market capitalization or share price, thus avoiding the volatility inherent in conventional market capitalization-based indexes. Refusing the application, he held that the contribution was solely a business method (analogous to the Macrossan invention in Aerotel) and (in the light of Symbian) a mental act but not solely a mathematical method or computer program, and was not technical in nature. The hearing officer did not accept (i) that the commercial success of the invention and its recognition as a significant advance by industry experts were relevant to whether the invention was excluded, (ii) that because the invention might be said to result in a ‘tradeable product’ it avoided exclusion, or (iii) that because the invention required the technical skills of a ‘financial engineer’ to devise it the contribution became technical in nature.

Citations:

[2009] UKIntelP o03209

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457283

Research Affiliates, Llc (Patent): IPO 19 Feb 2009

IPO The application relates to a method for the construction of a stock market index. In creating the index accounting data found in a standard company annual report and accounts is used to select a particular stock. These stocks are then weighted according to the accounting data to create an index. The main advantage claimed of using this method is to reduce the volatility of the index when compared to an index based on price or market capitalization such as the FTSE , Dow Jones or NASDAQ indices. These indices are based on the market value or capitalization of a particular stock. In these cases the stocks are weighted according to their share price or market value in order to produce an index. The application in hand does not use the market value or capitalization but is based on the use of accounting data found in the company reports or accounts. One example of such data given in the specification is pre-exemption profits. The claimed advantages of using such an index, is that it removes the volatility associated with the use of share prices for example.
The hearing officer held that the invention having failed the third step of the Aerotel/Macrossan [2006] EWCA Civ 1371 test was excluded, as the contribution, related to no more than a business method and made no technical contribution. The application was refused.

Citations:

[2009] UKIntelP o04809

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457284

Massachusetts Institute of Technology (Mit) (Patent): IPO 20 Feb 2009

IPO Supplementary Protection Certificate number SPC/GB/01/013 in the name of Massachusetts Institute of Technology (MIT) (‘the holder’) had been granted contrary to the conditions laid down by Article 3 of Council Regulation (EEC) No. 1768/92 (‘the Regulation’). The holder was informed that this granted certificate was considered to be invalid under Article 15(1)(a) of the Regulation and that the Office would not accept any fees should the applicant attempt to pay them. The holder did not respond to the Official letter dated 18 May 2007 or to a further Official letter dated 10 September 2007 within the period specified for reply nor did they request a hearing. In the absence of any response from the holder, the Hearing Officer concluded that the conditions of Article 15(1)(a) of the Regulation have been met and that granted Supplementary Protection Certificate number SPC/GB/01/013 was invalid.

Citations:

[2009] UKIntelP o05009

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457278

Merck Co, Inc (Patent): IPO 6 Feb 2009

IPO An application for an extension to the duration of granted SPC/GB/02/002 was made under Article 7 of Regulation (EC) 1768/92 to obtain the reward provided under Article 36(1) of Regulation (EC) 1901/2006 for completing studies on medicinal products in the paediatric population. The preliminary view of the examiner was that this application did not meet the requirements of Article 8(1)(d)(i) of Regulation (EC) 1768/92 as it did not include a copy of the statement of compliance with an agreed completed paediatric investigation plan as referred to in Article 36(1) of EC Regulation (EC) 1901/2006. This view was upheld by the Hearing Officer who considered the relevance of Articles 8, 23, 28 and 36 of Regulation (EC) 1901/2006 in deciding if the documents provided by the applicant fulfilled the requirement of Article 8(1)(d)(i) of Regulation (EC) 1768/92. An opinion of the Paediatric Committee of the European Medicines Agency (EMeA) on compliance with an agreed completed paediatric investigation plan was considered not to be sufficient as a the statement of compliance with an agreed completed paediatric investigation plan. A copy of an updated marketing authorisation granted by a competent authority under Regulation (EC) 1901/2006 is required. The applicant was allowed a period of time within which to rectify the irregularity with his application.

Citations:

[2009] UKIntelP o03509

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457279

Rajesh Kapur (Patent): IPO 6 Feb 2009

IPO The applications form a series of applications filed by Mr Kapur relating to Document Management Systems where documents can be recovered following deletion or overwrite operations; working systems can be recovered after a fault occurs in a system having some redundancy; or system changes can be tested offline before being implemented in a live system.
These cases had been refused by a previous hearing officer’s decision (O/264/07) but that decision had been partly overturned on appeal to the Patents Court. The judge upheld the previous decision that the claims were excluded as computer programs as such but overturned the finding that a manual implementation would be excluded as a mental act and the applications were remitted for further processing. That further examination led to the present hearing where, with the exception of some additional dependent claims in one application, the claims on the applications were the same as had been previously considered.
The hearing officer held that as a result of the previous litigation, estoppel by record prevented Mr Kapur from arguing that the claims escaped exclusion as computer programs as such. This applied both to the original claims and the proposed amended claims, which still related to a computer implementation, on which the first hearing officer’s decision had been upheld

Citations:

[2009] UKIntelP o03309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457280

MeadWestVaco Corp v Montreuil Offset (Patent): IPO 20 Feb 2009

IPO The patent relates to packaging for optical discs. The initial application for revocation was based on allegations of lack of novelty and inventive step, as well as insufficiency and added matter. The hearing officer allowed amendments which had been offered to address the issues of insufficiency and added matter, and held that the attacks on the thus amended patent based on allegations of lack of inventive step and insufficiency failed.

Citations:

[2009] UKIntelP o05309

Links:

Bailii

Statutes:

Patents Act 1977 72 75

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457262

Epic Systems Corporation (Patent): IPO 20 Feb 2009

IPO The invention related to the electronic generation of orders for patient care in an acute care environment. It recognised that that in most cases the parameters making up an order belonged to a predictable set and therefore filtered the information in the database of a record system to present the user with a limited set of order templates and parameters, thus avoiding having to enter the parameters as text. This reduced the amount of data to be entered and transferred across the network, and increased the efficiency of data processing by reducing the likelihood of error. The invention was variously claimed as a dynamic order composer device, a method of manufacturing a product (the order), and a graphical user interface.
Applying the Aerotel test and treating the application as refused, the hearing officer held that in all cases the contribution as a matter of substance was a computer program, not a new physical system (since the hardware was conventional) or method of manufacture (even if the data represented real physical entities and the order was output in physical form). Considering, in accordance with Symbian, the practical reality of what the program achieved, the hearing officer held that it was merely a program for carrying out a better administrative procedure and therefore made no technical contribution. It was therefore excluded as both a computer program and a business method.

Citations:

[2009] UKIntelP o04909

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457271

Fisher-Rosemount Systems Inc (Patent): IPO 25 Feb 2009

IPO The application related to a modeling system for use in modeling the flow of material between items or modules of processing plant along connecting ‘entities’ such as conveyor belts or in pipes. This system also facilitates provision of a graphical display of the modelled process to an operator. Objects referred to as ‘smart process objects’ are adapted to control, simulate, and display, the elements of the process plant. A number of such ‘smart process objects’ may be connected together to model different items, modules or sub-systems of a large process plant. Monitored data was collected and used to provide a simulation of elements of the process plant. The system facilitated the combining of modeled and real data for use by an operator. Claims were made to a modeling system and to a method of modeling process plant.
Following Aerotel/Macrossan [2006] EWCA Civ 1371, the hearing officer found that the independent claims covered two possible situations. The first related solely to a computer program as the data utilized was potentially pre-gathered and used offline independently of the process plant from which it was gathered, and, as such, this contribution was merely the processing of data. In the second, the contribution was to utilize real time online data and, as it was embedded within the process system, to use this data to contribute to an improved processing system. On the basis of the first situation, the hearing officer found that the claims on file related to excluded matter. A possible way forward to address this problem by amendment was discussed.
However, in considering this possible way forward, it emerged that the compliance period for putting the application in order had expired. In looking into the circumstances around the handling of the case and the expiry of the compliance period, it was found that an error had occurred on behalf of the office in its processing of this case. As a consequence, the hearing officer considered that it was appropriate for the Comptroller to exercise his discretion under rule 107, to allow the applicant a period of time to put his application in order.

Citations:

[2009] UKIntelP o05709

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457272

Astellas Pharma Inc (Patent): IPO 20 Feb 2009

IPO A combination of active ingredients emodepside and praziquantel, referred to as Profender (RTM), was the subject of supplementary protection certificate (SPC) application number SPC/GB/06/002 (‘the application’). The marketing authorisation on which the application is based is for the combination product emodepside and praziquantel. However, the patent on which the application is based clearly discloses the active ingredient emodepside but gives no indication, specific or generic, of the other active ingredient praziquantel. For the purposes of Article 3(a) of Council Regulation (EEC) No. 1768/92 (‘the Regulation’), the product, emodepside and praziquantel (Profender) is not protected by the designated basic patent.
In addition, a request by the applicant to change the product definition to read ‘A product comprising Emodepside’ was found to be contrary to Article 3(b) of the Regulation. Article 1(b) of the Regulation dictates that the authorised combination of emodepside and praziquantel is a different product from emodepside alone. Thus the proposed product is not athorised and Article 3(b) is not complied with.
Since in accordance with Article 10(3) an opportunity to correct the irregularities with this application have been given, the application, as required by Article 10(4), was rejected.

Citations:

[2009] UKIntelP o05209

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457264

The Australian National University and The Commonwealth of Australia (Patent): IPO 20 Feb 2009

IPO The claimant, The Australian National University, filed proceedings under section 37 to the effect that they should be named as co-proprietor by virtue of the employment of Friedrich Gert Stange and an assignment agreement with Naig le Bouffant, both named as inventors with Javaan Singh Chahl. The reference was supported by The Commonwealth of Australia, the named proprietor, and in the absence of any counter-statements from each of the named inventors, was considered unopposed. The comptroller ordered that The Australian National University should be named as co-proprietor with The Commonwealth of Australia in respect of patent number GB 2406396 and directed that the register be rectified to reflect the order and an addendum for the patent be prepared.

Citations:

[2009] UKIntelP o05409

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457265

Strix Ltd and Otter Controls Ltd (Patent): IPO 2 Jan 2009

IPO The opponent opposed the patentee’s request under section 27 of the Patents Act 1977 for amendment of the patent, arguing, inter alia, that the patentee had delayed excessively before bringing the request to amend. The patentee sought the striking out of this ground following the amendment to the Patents Act which required the Comptroller to have regard to corresponding practice under the European Patent Convention. The hearing officer, following the reasoning in Markem v Zipher [2008] EWHC 1379 (Pat), held that the conduct of the patentee was no longer grounds for refusing amendment under section 27. As a result, he struck out that part of the opponent’s statement of case.

Citations:

[2009] UKIntelP o34408

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457256

Weatherford / Lamb Incorporated (Patent): IPO 30 Jan 2009

IPO The applicant had stated a clear intention to file a divisional application, and had asked to be given at least one month’s notice before the application in suit was granted. The Office did not respond to this request and granted the patent soon afterwards. Over two years later, the attorneys for the applicant contacted the Office to seek a divisional filing. The hearing officer took the view that the Office’s failure to respond to the applicant before granting the patent was an omission, and so rule 107 applied. Following Howmet, he found on the balance of probabilities that the Office’s omission led to the applicant’s failure to file the intended divisional application, and that in the circumstances of the case there were no good reasons why discretion under rule 107 should not be exercised favourably. Rule 107 could be used to rescind the patent, extend the necessary time periods, and so allow a divisional application to be filed. However, he found it appropriate, as a condition of exercising this discretion, to impose third party terms in respect of any matter protected by a divisional application.

Citations:

[2009] UKIntelP o02809

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457259

Dr Gareth Williams v Surface Active Solutions (Holdings) Limited (Patent): IPO 13 Feb 2009

IPO The applicants for revocation stated that they no longer wish to pursue the application. The proprietor submitted proposals for amendments. The amendments were allowed and no order for revocation was made.

Citations:

[2009] UKIntelP o04309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457268

Espeed, Inc (Patent): IPO 12 Jan 2009

IPO The invention related to an electronic trading system in which first and second users could issue commands to a trading system by means of game controllers with greater speed and accuracy than by using a keyboard and mouse. An interface was connected to a memory storing sets of controller signal relationships which associated first and second types of game controller with the first and second users respectively, and allowed a signal from a game controller to be converted into a trading system command according to both the particular user and the particular type of controller.
Except for claims relating to providing a further set of relationships associated with the second user and the first type of controller, the hearing officer held all the claims to lack inventive step over a specification disclosing the use of a game-type controller (although not specifically a game controller) adapted to issue trading commands.
However the hearing officer held that that the invention was excluded under section 1(2) as both a computer program and a method in the light of Symbian [2008] EWCA Civ 1066 and Aerotel [2007] RPC 7. He considered that the contribution lay in the interface and did not lie in a new combination of hardware even if it allowed a trading system to be controlled by two game controllers in a way not possible before. The contribution was merely a better program which did not produce any technical improvement in the operation of the hardware, and was still a contribution to business method even if the trading commands were fed into a conventional trading system.

Judges:

Mr R C Kennell

Citations:

[2009] UKIntelP o00909, GB 0802593.4

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.457242

Schlumberger Holdings Limited (Patent): IPO 22 Jan 2009

IPO The invention provided quality control indicators of improved reliability by processing sonic well logging data to generate a slowness vs frequency dispersion curve at each of a number of depths, and from that a projection log of curve data against depth. Although the invention was claimed as a method of performing a quality control analysis, the specification did not appear to contemplate anything more than visual inspection of the data.
Refusing the application, the hearing officer (following Symbian and Aerotel) held that the contribution was the processing of acquired sonic data to generate the dispersion curves and presenting the information in the form of the projection log. He held that this was excluded either as a mathematical method or as a mathematical method plus presentation of information, even though it did not set out a precise series of mathematical steps, and was not technical. This was because the contribution did not go beyond manipulating data, albeit technical data, and presenting information from the manipulation to the operator; see related decisions above, and compare Vicom EPO T 0208/84. However the hearing officer did not consider the contribution to be excluded as a computer program, this being merely one way of implementing the invention.

Citations:

[2009] UKIntelP o01609

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457253