Category: Intellectual Property

Joe Spiteri-Sargent (Patent): IPO 9 May 2008

The application concerns an apparatus for converting ‘hydraulic energy’ into kinetic energy. It describes a reciprocating vessel submerged in a tank of water.
In an earlier decision, the Hearing Officer allowed the applicant one month to amend the application to overcome objections that the invention was not capable of industrial application, and/or was not disclosed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the art.
Amendments were filed in the set period, but the Hearing Officer found that the amendments would have added matter to the application as filed, and could not be allowed. He therefore refused the application.

Citations:

[2008] UKIntelP o13408, O/134/08

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.457035

The Fruit The Whole Fruit and Nothing But Ythe Fruit (Trade Mark: Opposition) O/148/08: IPO 23 May 2008

IPO Section 5(4)(a): Opposition failed – Only the opponent filed evidence in these proceedings. It claimed to have coined the mark THE JUICE, THE WHOLE JUICE AND NOTHING BUT THE JUICE in 2001 and to have used it on labels and packaging from 2001 onwards. The opponent provided turnover figures which had increased to some andpound;1.4m by 2005 and promotion, mainly to trade outlets, of some andpound;72k by 2005.
The evidence filed by the opponent showed that it uses its sign as a slogan and it is not particularly prominent on the actual packaging of the goods, being some distance form the primary marks JUICE REPUBLIC and JUICE4U, or on the promotional material. In some instances it appears to be used as a type of guarantee. In relation to the goods the Hearing Officer considered this sign to be of weak distinctive character. N
The Hearing Officer accepted that the respective marks were quite similar and if the opponent could show that it had a reputation and goodwill in its mark then it would have a reasonable chance of success. However, the Hearing Officer decided the lack of distinctiveness of the opponent’s mark JUICE mark coupled with the style of use over a fairly short period meant that it was unlikely that use by the opponent of its FRUIT mark would be taken by trade customers or consumers as the goods of the opponent. Opposition under Section 5(4)(a) thus failed.

Judges:

Mr O Morris

Citations:

2406905, [2008] UKIntelP o14808, O/148/08

Links:

IPO, Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.457029

Rita Rusk Innovations Ltd and Wilson Gunn Llp (Patent): IPO 14 Apr 2008

A request to amend under Section 27 was opposed. No counterstatement was received from the Applicant and the opposition was treated as uncontested. The Opponent asked to be heard and argued that this situation was different to that in Norsk Hydro AS’s Patent [1997] RPC 1989 where the amendments had been treated as withdrawn where no counterstatement had been filed to an opposition. The Hearing Officer agreed and heard the opposition. The hearing officer concluded that the amendments did not cure the defect identified by the Applicant in that they did not distinguish the patent from the prior art. The amendments were refused.

Citations:

[2008] UKIntelP o10908

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457009

Shiroki Corporation, Takumi Okada, Jiro Inoue, Toshiya Kaneko and Takeshi Yoshimura (Patent): IPO 10 Apr 2008

As a result of an uncontested application filed under section 13(1) by Shiroki Corporation, it was found that Takumi Okada, Jiro Inoue and Toshiya Kaneko should be mentioned as joint inventors in the published patent application and granted patent for the invention and directed that an addendum slip mentioning them as such be prepared for the published patent application and granted patent.

Citations:

O/105/08, [2008] UKIntelP o10508

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.457011

Merck Co, Inc (Patent): IPO 14 Apr 2008

An SPC was sought for a product that was authorized in the period between 4 years and 6 months and 5 years after the filing date of the basic patent, as such having regard to Article 13(1) the resulting SPC would have no term. The application was made in the hope that compliance with the requirements of the paediatric regulation (EC) No. 1901/2006 may at some later date extend the SPC to give it a positive term. It was decided that an SPC must be granted in accordance with Article 10.

Citations:

[2008] UKIntelP o10808

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.457006

Witchcraft (Trade Mark: Opposition): IPO 6 Mar 2008

IPO (i) Comparison of the goods; ‘While ‘medicated’ goods within Class 5 are likely to be ones that fall within the definition of ‘medicinal product’ in Section 130 of the Medicines Act 1968, this is not necessarily so.’
(ii) Proof of Use Regulation
(iii) See also BL O/225/07
At first instance (see BL O/225/07) the Hearing Officer had found the opposition successful under Sections 5(2)(b) and 5(3). The applicant appealed to the Appointed Person, contending:- (i) the Hearing Officer had wrongly assessed the opponents evidence of use; (ii) was wrong to find more similarities than differences in the goods and (iii) wrong to concluded that the conceptual similarities the marks outweighed the differences. Having reviewed the Hearing Officer’s decision the Appointed Person found that although he had indeed been wrong in one aspect of his proof of use findings this did not materially affect the validity of his overall decision. The appeal was dismissed.

Judges:

Mr Richard Arnold QC

Citations:

2392932, [2008] UKIntelP o07008

Links:

IPO, Bailii

Citing:

See Also – Witchcraft (Trade Mark: Opposition) IPO 9-Aug-2007
IPO Trade Mark: Opposition – The application was in respect of ‘Eau de toilette, perfume, deodorant’. The opposition was based on registrations of a number of WITCH marks including WITCH DOCTOR and WITCH STIK.
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456986

Blacklight Power Inc (Patent): IPO 17 Apr 2008

The applications relate respectively to a plasma reactor and a laser, both dependent for their operation on a ‘new hydrogen species’. The new hydrogen species involves the electron (the hydrogen atom has one electron) existing in a lower energy state than the lowest possible energy state recognised in standard physics. This arrangement was described in a new theory of atomic physics. The hearing officer considered the likely validity of the new theory. He decided, on the basis of the experimental evidence provided and the acceptance of the theory by the physics community generally, that it was probably not valid. The applications were consequently refused for lack of industrial application and insufficiency.

Judges:

Mr P Marchant

Citations:

[2008] UKIntelP o11408

Links:

Bailii

Statutes:

Patents Act 1977 1

Intellectual Property

Updated: 20 October 2022; Ref: scu.456990

City University, Nikola Rudi Stosic, Ahmed Kovacevic and Ian Kenneth Smith (Patent): IPO 7 Mar 2008

IPO As a result of an uncontested application filed under section 13(1) by City University, it was found that Nikola Rudi Stosic and Ahmed Kovacevic should be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the published patent application.

Citations:

[2008] UKIntelP o06908, O/069/08

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.456963

IGT (Patent) O/068/08: IPO 5 Mar 2008

IPO The application related to a new way of providing a bonus when playing a gaming machine. Applying the Aerotel test the hearing officer held that, irrespective of whether the invention was claimed as a method of operating a gaming device or as the device itself, the contribution was a way of playing a game in which an award was dependent on the correct prediction or picking by a player of a selected one of a number of component symbols, the award being based on the particular symbol and possibly also on a ‘modifier’, ie a multiplier whose value could be changed to reflect the player’s predictions. The hearing officer did not accept the applicant’s argument that the contribution was a new mechanism providing a new functionality analogous to the ‘special exchange’ of Aerotel: the invention provided a new way of playing a gaming machine, not a new gaming machine. He therefore held that the invention was excluded as a method for playing a game, although not as a program for a computer, and did not see any basis on which to distinguish the cases in IGT( [2007] EWHC 0954 (refusal upheld on appeal from O/211/06) or to depart from his reasoning in an earlier decision O/184/07 on a similar argument from the applicant. Although it was not necessary to decide the point, he did not consider the contribution to be technical in nature.

Judges:

Mr R C Kennell

Citations:

[2008] UKIntelP o06808, O/068/08, GB 0419337.1

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456973

Blacklight Power Inc (Patent): IPO 14 Mar 2008

IPO The applications concerned a method and system for providing a new and more accurate way of describing the properties of electrons in atoms or ions (such as their energy levels) and representing those properties on a display.
Having deferred consideration of inventive step, the hearing officer applied the four step test set out in the Aerotel/Macrossan judgment and found that the contribution resided in the theorem for describing the properties of electrons in atoms and ions and a computer program for generating and displaying the results of the equations representing that theorem. The contribution was found to fall solely within excluded matter being a combination of a scientific theory and a computer program (and a mathematical method).

Judges:

Mr A Bartlett

Citations:

[2008] UKIntelP o07608, GB 0705155.0, GB 0614467.9

Links:

Bailii

Statutes:

Patnts Act 1977 1(1) 1(2)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456962

Saville Holdsworth (Trade Mark: Revocation): IPO 29 Feb 2008

IPO Award of costs: Additional sum of andpound;500 in relation to late filed evidence.
Points Of Interest
See earlier decision dated 22 February 2008 (BL O/050/08)
Summary
In his decision dated 22 February 2008 the Hearing Officer made no award of costs to the applicant. This was because he had allowed late evidence filed by the registered proprietor into the proceedings and he had allowed the applicant time to give details of costs incurred in relation to this late evidence.
In the event the applicant estimated the additional costs to be andpound;520 and the Hearing Officer included the figure of andpound;500 in a costs award in relation to the five consolidated applications for revocation.

Judges:

Mr D Landau

Citations:

[2008] UKIntelP o06208, O/062/08

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.456951

Shaw Pittman Llp (Patent): IPO 8 Feb 2008

IPO The invention was for a method of analysing and displaying business operations in the context of an outsourcing operation, on the basis of user input concerning the processes involved, the elements subject to the processes, and the actors assigned to the processes and elements. Although claimed as a method of controlling a display, the hearing officer did not accept that there was any contribution in the control of the electrons in a CRT which could form the basis of a patentable claim analogous to Halliburton [2006] EWHC 1623 and to the control of a robot in Touch Clarity (BL O/198/06). Applying the test in Aerotel [2006] EWCA Civ 1371 and refusing the application, the hearing officer held the contribution to be excluded as a computer program and as the presentation of information, but was doubtful whether the business method exclusion applied (except possibly to some subsidiary claims) since the invention was analytical tool for informing subsequent outsourcing decisions rather than a way of running a business or outsourcing operation.

Citations:

[2008] UKIntelP o03608

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456953

Sony Computer Entertainment Inc (Patent): IPO 13 Feb 2008

ICO The application is concerned with data processing, for example, in the field of electronic games. It is often the case that where a data processor has been upgraded to a new ‘generation’, the manufacturer will still want software relating to the older generation device to be handled. One way of achieving this is for the newer generation device to run emulation software which acts upon instructions relating to the older generation device. The invention does this by dividing the emulation of an emulated processing unit between two or more emulating processing units and using a single emulating processing unit to emulate two or more emulated processing units. This method is said to provide faster and more efficient communication and reduced message traffic. There were four independent claims to a data processor, a method of data processing, a computer program and a computer program on a carrier.
The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment and found the invention claimed in the apparatus and method claims to be excluded as a computer program. Following the judgment of Astron Clinica, the computer program and program on a carrier claims were not excluded solely because they related to a computer program or a program on a carrier; such claims were allowable if the method performed by running that program was allowable. However, since the hearing officer found that the contribution provided by the apparatus and method claims fell solely within the computer program exclusion, it followed that the contribution made by the invention defined in the computer program or a program on a carrier claims must likewise fall within the computer program exclusion. Thus those claims were also excluded. The application was refused.

Citations:

[2008] UKIntelP o04008

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456954