Category: Intellectual Property

Rajesh Kapur (Patent): IPO 12 Sep 2007

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.
The Hearing Officer applied the four step test from the Court of Appeal in Aerotel Ltd vs Telco Holdings Ltd (and others) and Macrossan’s application [2007] RPC 7. For GB0519365.1, which was agreed to be representative, the contribution made by the invention was identified as a document management system permitting the recovery both of documents that have been deleted and documents that have been overwritten and in which deleted and overwritten documents are stored separately. The Hearing Officer concluded that this contribution fell solely in excluded matter as a computer program as such and, if the claims covered manual implementation, to a mental act as such. The remaining applications were all refused on the same grounds.

Citations:

[2007] UKIntelP o26407

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456802

Samuel Raymond Hislop (Patent): IPO 14 Sep 2007

The patent application relates to a ‘gravity stick’ which the specification describes as being able to manipulate gravity and to facilitate interplanetary travel and communication. The hearing officer found that the specification did not comply with the requirement of section 14(3) that the application must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art, since it contained no description of any mechanism by which the stick might manipulate gravity, and because the described operation of the gravity stick relies upon a purported technology that is contrary to well established physical law. The application was consequently refused.

Citations:

[2007] UKIntelP o27107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456803

Taxassist Direct The Accountancy and Tax Service for Small Business: IPO 13 Sep 2007

(Trade Mark: Invalidity) The Hearing concerned requests for extensions of time in which to file corrected evidence and a request by the applicant that that evidence be struck out. The extensions of time were granted and the corrected evidence admitted.

Judges:

Mr R Colombo

Citations:

[2007] UKIntelP o26507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456807

James Campbell v Aberdeen University (Patent): IPO 13 Sep 2007

After the counterstatement was filed in these entitlement proceedings, the Hearing Officer directed that the parties attend a case management conference (CMC) in order for him to give directions with regard to the future management of these proceedings. The directions are concerned with focusing the statement and counterstatement on the issue(s) at stake, setting a timetable for the proceedings (eg. evidence rounds) and considering ADR (eg. mediation).

Citations:

[2007] UKIntelP o26907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456792

International Business Machines Corporation (Patent): IPO 18 Sep 2007

The application related to a system for managing transactions in a distributed computing system. The claims were concerned with managing work done in an application, such as a legacy database, which used an environment different from the overall distributed application architecture. A transaction wrapper was used to allow all the transaction control to be handled by the distributed architecture. The hearing officer followed the four-step approach to the assessment of patentability under section 1(2) approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371 in determining whether the invention was excluded from patentability. He held that the contribution defined by the claims was an improved transaction management system. This system being a collection of computer programs, he held that the claims were excluded.

Citations:

[2007] UKIntelP o27607

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456791

Immersion Corporation (Patent): IPO 13 Sep 2007

The claims before the hearing officer related to a handheld communications device with provision for the user to store a correlation of information about the sources of received signals with distinct haptic effects to be output. Following Aerotel/Macrossan [2006] EWCA Civ 1371, the hearing officer accepted that (as in Raytheon [2007] EWHC 1230) the contribution of the invention was a combination of aspects – (i) the use of a haptic effect in a communications device to indicate a feature of the communicated data and (ii) the customisation by the user of the haptic effect. He held that (i) related solely to the presentation of information and (ii) related solely to a computer program, and did not accept the applicant’s argument from the successful Aerotel appeal that (ii) provided a new physical hardware or combination of hardware. Even if (i) was not to be regarded as part of the contribution, the contribution would still relate solely to a computer program. The contribution therefore failed the third step of the Aerotel/Macrossan test and it was not necessary to consider whether it was technical in nature. The application was refused.

Citations:

[2007] UKIntelP o26807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456790

Christopher Mark Dale (Patent): IPO 18 Sep 2007

The application relates to apparatus for playing a game. The apparatus comprises a display area providing a number of game play areas which are arranged in stages. All stages are visible to the player at the same time and each stage is associated with a prize and a winning or losing area is revealed by removing an obscuring means. The stages are arranged such that the chance of losing increases as the player progresses through the stages. On winning a stage, the player can therefore choose to stick at that particular prize level or can decide to continue the game and take a gamble on the outcome of the next stage. The apparatus may be a scratch card, a machine as may be found in amusement arcades or a computer connected to the internet.
The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment, found the invention to be excluded as a method of playing a game and the presentation of information, and refused the application. She also held that the claimed invention was obvious and therefore refused the application as lacking an inventive step.

Citations:

[2007] UKIntelP o27507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456777

Geometric Device Takata (Trade Mark: Opposition) O-267-07: IPO 13 Sep 2007

IPO Opposition

Judges:

Mr G Salthouse

Citations:

2353215, [2007] UKIntelP o26707

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Geometric Device Takata (Trade Mark: Opposition) O-266-07 IPO 13-Sep-2007
IPO Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456786

Tan Chee Wei, City University of Hong Kong and Yan Cheong Chan (Patent): IPO 22 Aug 2007

As a result of an uncontested application filed under section 13(1) by Tan Chee Wei, it was found that he should also be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application for the invention.

Citations:

[2007] UKIntelP o24307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456769

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.
The Hearing Officer found points of similarity as well as points of difference in the respective sets of goods; (skincare preparations on the one hand and perfumes and deodorants on the other). Overall, he found the goods to be similar and he turned to a comparison of the marks. In the result, he found a likelihood of confusion and the opposition succeeded under both Sections.

Judges:

Mr M Reynolds

Citations:

2392932, [2007] UKIntelP o22507

Links:

IPO, Bailii

Statutes:

Trade Marks Act 1994

Jurisdiction:

England and Wales

Cited by:

See Also – 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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456772

Geometric Device Takata (Trade Mark: Opposition) O-266-07: IPO 13 Sep 2007

IPO Opposition

Judges:

Mr G Salthouse

Citations:

2353215, [2007] UKIntelP o26607

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Geometric Device Takata (Trade Mark: Opposition) O-267-07 IPO 13-Sep-2007
IPO Opposition . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456785

Toolman Device (Trade Mark: Opposition): IPO 22 Aug 2007

The opponent provided evidence to show that it has traded under the marks TOOLMAN and TOOLMAN and device from 1997 onwards in respect of a range of tools and hand tools which are the same and similar goods as those of the applicant. While such user was modest in business terms and advertising was not extensive, the Hearing Officer accepted that by the relevant date, the date of application for registration by the applicant, the opponent had a protectable goodwill in the mark TOOLMAN in relation to a range of hand tools and tools for use with power tools.
The Hearing officer went on to conclude that under the terms of Section 5(4)(a) there would be confusion if the applicant used its mark with consequent damage to the opponent’s trade. Opposition thus succeeded.

Citations:

[2007] UKIntelP o24207

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456770

Symbian Ltd (Patent): IPO 20 Aug 2007

IPO The application relates to a method of enabling an application running on an operating system on a portable computing device to access files stored on removable storage medium. Memory on different devices is typically managed according to different directory structures. In practice, this means that a file request from a device running on one manufacturer’s operating system will not be recognized by a removable storage medium made by another manufacturer which uses a different memory directory structure. The invention addresses this problem of incompatibility by getting the file system to start looking from a different level in the hierarchy in the storage medium directory structure for the requested file without the need for string substitution. The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment, found the invention to be excluded as a computer program as such, and refused the application.

Judges:

Mrs S E Chalmers

Citations:

[2007] UKIntelP o23807, GB 0414075.2

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456768

Virgin Smile (Trade Mark: Invalidity): IPO 29 Aug 2007

Following the filing of an application for a declaration of invalidity, and the filing of a counterstatement by the registered proprietor, the applicant was allowed the normal period of six weeks to 11 January 2007 to file its evidence.
On 11 January 2007 a request for an extension of two months was requested to 11 March 2007 and this extension was granted by the Registry and not objected to by the proprietor. On 12 March 2007 the applicant requested an extension of time of one month to 11 April 2007. Again the Registry agreed and again the proprietor did not object. On 11 April the applicant requested a further period of one month to 11 May 2007 to file its evidence. Again the Registry was prepared to agree but the registered proprietor objected to the grant of any more time and requested a hearing.
By the time of the Hearing on 28 June 2007 the applicant had filed its evidence. At the hearing the reasons for the requests for extensions of time were examined and the Hearing Officer determined that the reasons given were satisfactory and allowed the extension to 11 may 2007 so that the applicant’s evidence could be accepted into the proceedings and that the proceedings should proceed to a conclusion.

Citations:

[2007] UKIntelP o25007

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456771

Zsl/Zsl/Zsl – Living Conservation (Trade Mark: Opposition): IPO 23 Aug 2007

The opposition, which was directed solely at the Class 25 goods, was based on two registrations of the mark YSL (stylised and in a monogram format). The Class 25 goods were identical. The Hearing Officer therefore addressed himself to the comparison of the marks and the likelihood of confusion. A number of issues arose in the course of the assessment including a review of whether a claim to enhanced distinctiveness has to be specifically pleaded. In the result the Hearing Officer found no likelihood of confusion and the opposition failed.

Citations:

[2007] UKIntelP o24507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456773

Allan Gill (Patent): IPO 17 Sep 2007

The application appears to relate to a pump of some sort comprising an enclosed arrangement of turbine blades, driven by a system of levers, whose motion is used to compress a gas or create a vacuum therebetween. The Hearing office held that the claims were unclear and that the invention was not sufficiently disclosed in a manner which was clear enough and complete enough for it to be performed by a person skilled in the art contrary to the requirements of sections 14(3) and 14(5)(b).

Citations:

[2007] UKIntelP o27307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456774

Caesar Nkonge (Patent): IPO 27 Sep 2007

The application related to an engine. 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:

[2007] UKIntelP o28507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456776

Chorkee (Stylised) Device (Trade Mark: Opposition): IPO 30 Aug 2007

IPO The opposition was based on various CHEROKEE marks registered in respect of goods which were similar. The Hearing Officer also found ‘a good deal of visual similarity between the respective marks’. Nevertheless, in his consideration of a likelihood of confusion the Hearing Officer concluded that the average consumer would ‘have conceptual hooks in relation to the earlier trade mark upon which the memory (could) hang’. Hence there was no likelihood of confusion. This finding in respect of the marks effectively finished off the Section 5(3) objection also.

Citations:

[2007] UKIntelP o25107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456747

Magic Home Chef (Trade Mark: Opposition): IPO 20 Aug 2007

The opposition was based on the opponents’ mark MAGIC CHEF and device, registered in respect of various items of electrical kitchen apparatus in Classes 7, 9 and 11. The applicant’s specification in Class 21 read ‘kitchen utensils for pressing and moulding food into rectangular blocks’.
Although all the opponents’ goods were electrical and the applicant’s goods non-electrical the Hearing Officer found a high degree of similarity in them and also in the respective marks. The opposition succeeded accordingly.

Citations:

[2007] UKIntelP o23507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456759

Mecca (Trade Mark: Opposition): IPO 24 Aug 2007

The opponent owns registrations for the mark MECCA in Classes 41 and 42 in respect of, respectively, betting and gaming services and restaurant cafe and catering services. Its opposition relates only to Classes 28, 29, 30 and 32.
The opponent filed extensive evidence to show that it has used its mark over many years in relation to bingo, slot machines and more recently, internet gambling. It operate at 117 sites where it also provides a range of food and drinks to its clients. The Hearing Officer accepted that the opponent had an enhanced reputation in its mark in relation to its gaming and gambling activities.
Under Section 5(2)(a) the Hearing Officer noted that essentially identical marks were at issue and went on to compare the respective goods and services. Insofar as Class 28 as concerned the Hearing Officer decided that games and playthings included goods which could be used in the opponent’s gambling establishments and thus must be considered similar and complementary to such services. Opposition succeeded in respect of such goods.
As regards the goods of Classes 29, 30 and 32 the Hearing Officer was not convinced that these goods were similar to the opponent’s restaurant and cafe services and opposition failed in respect of these Classes.
Application allowed to proceed for classes 9, 29, 30, 31, 32 and 35 and for a restricted specification in Class 28.
Section 5(3) ground not considered.

Citations:

[2007] UKIntelP o24607

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456760

Judge Sabatier Device Stellar Sabatier Device (Trade Mark: Invalidity): IPO 1 Aug 2007

The applications were brought based on three registrations of PROFESSIONAL SABATIER, LION SABATIER and SABATIER. The Hearing had first to deal with an application for a stay of proceedings pending the outcome of invalidation proceedings launched against the applicants’ earlier marks. In the result he refused a stay and proceeded to a consideration of the main matter.
The question of similarity in the marks centred around the presence of the word SABATIER in all of them. This word however (although distinctive in itself) was incorporated into a number of marks used by different traders. This was likely to focus attention on the other elements and overall there was no likelihood of confusion. The application for invalidation failed accordingly.

Citations:

[2007] UKIntelP o21507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456758

Megz (Stylised) Device (Trade Mark: Opposition): IPO 20 Aug 2007

The opposition was based on the opponents’ mark MEGS, registered in Class 25. The Hearing Officer found a ‘reasonably high degree of similarity’ in the marks and turned to a comparison of the goods and services. No written submissions had been made in support of the alleged similarity. The Hearing Officer could find no obvious basis for finding functional or aesthetic complementarity between the Class 16 and 25 goods. They were dissimilar. If there was any similarity between the Class 25 and 28 goods it would be ‘at a very low level’. In the result the Hearing Officer found no likelihood of confusion

Citations:

[2007] UKIntelP o23707

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456761

Device Only Mark (Trade Mark: Opposition): IPO 14 Aug 2007

IPO The opponent owns two registrations in respect of identical goods as those of the applicant in Classes 29 and 30. The first mark a label mark consisting of the words PODRAVKA, VEGETA, a device of a Chef and a representation of vegetables. The second mark is also a label mark consisting of a device of a Chef and a representation of foodstuffs.
The opponent filed evidence of use of its marks but the evidence was poorly focused in that there was no explanation as to whether the turnover and promotional figures provided related to the UK market only and there was no breakdown in respect of the individual marks. In relation to this evidence the Hearing Officer was unable to conclude that the opponent’s marks had an enhanced reputation because of any use which might have been made of them.
The applicant disputed the opponent’s claim to a reputation in its marks and said that a search at a number of supermarkets had failed to find any of the opponent’s goods. The applicant also claimed that devices of Chefs are widely used in relation to items of foodstuffs.
Under Section 5(2)(b) the Hearing Officer noted that identical goods were at issue and went on to compare the respective marks. As regards the opponent’s first mark which incorporates the words PODRAVKA and VEGETA the Hearing Officer decided that there was little similarity. As regards the second mark where the distinctive feature is the device of a chef, the Hearing Officer compared the respective devices carefully and also looked at individual get-up and presentation of the respective marks. He concluded that as devices of chefs are not particularly distinctive in relation to the goods at issue the surrounding elements of the respective marks would also have an impact. Overall the Hearing Officer concluded that the respective marks were not so similar that consumers would be deceived as to origin. Opposition thus failed under Section 5(2)(b).
The lack of properly focused and detailed evidence from the opponent also meant that it failed in its opposition under Sections 5(3) and 5(4)(a).

Citations:

[2007] UKIntelP o22807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456751

Microscience Technologies Ltd and Crp Group Limited (Patent): IPO 20 Aug 2007

The reference under section 8 was made by Microscience Technologies Ltd (MST) in relation to unpublished patent application GB 0607356.3 bearing the title ‘Coated microspheres and method and apparatus for manufacturing same’. MST argued that the application in question relates to processes for coating microspheres that were developed by MST, and that CRP obtained the information in confidence from MST. Held that MST is solely entitled to the application.
CRP’s request that all the documents submitted by MST in these proceedings be treated as confidential was refused.

Citations:

[2007] UKIntelP o23407

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456762

The Drunken Monkey (Series of 3 Marks) (Trade Mark: Opposition): IPO 20 Aug 2007

IPO The opposition was based on the opponents’ CTM ‘drunkenmunky’ registered in classes 25. The Hearing Officer found the marks ‘similar to a high degree’. However, despite submissions that there was ‘complementarity’ between clothing on the one hand and entertainment services, nightclubs etc on the other, and that they shared a common group of users, the Hearing Officer found no similarity in the goods/services.
The Section 5(2)(b) objection failed accordingly.
The evidence filed in support of the Section 5(3) objection referred only to use in the UK and did not establish a reputation in the Community. It did not in any case, establish a UK reputation to the requisite standard. This objection failed als

Citations:

[2007] UKIntelP o23607

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456752

Roger Colston Downs (Patent): IPO 15 Aug 2007

The matter was unopposed and (there being parallel proceedings before the court in respect of other intellectual property) a consent order containing an assignment of the EP application to the claimant had been sealed by the court. However the application had lapsed for failure to pay renewal fees, and the proceedings before the comptroller had been stayed to await advice from the European Patent Office as to what rights the claimant might still have. The EPO advised that, provided the claimant had been recognised by a final decision as entitled to the grant of a European patent on the original application, it could file a new application for the same invention under EPC Art 61(1)(b).
Having regard to the terms of the consent order agreed by the parties, the hearing officer determined under s.12(1) that the claimant was entitled to the grant of a patent for the invention in EP 1123774 and certified under ss.13(3) and 78(2) that the inventors named in that application ought not to have been so mentioned. However he did not consider that s.13(1) gave him power to require designation, for the purposes of EPC r.18(2) in any new application under EPC Art 61, of the persons agreed instead to be inventors.

Citations:

[2007] UKIntelP o23207

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456763

R S Brookhouse Engineering (Evesham) Ltd v Pro-Tek Engineering Ltd (Patent): IPO 6 Aug 2007

The matter was unopposed and (there being parallel proceedings before the court in respect of other intellectual property) a consent order containing an assignment of the EP application to the claimant had been sealed by the court. However the application had lapsed for failure to pay renewal fees, and the proceedings before the comptroller had been stayed to await advice from the European Patent Office as to what rights the claimant might still have. The EPO advised that, provided the claimant had been recognised by a final decision as entitled to the grant of a European patent on the original application, it could file a new application for the same invention under EPC Art 61(1)(b).
Having regard to the terms of the consent order agreed by the parties, the hearing officer determined under s.12(1) that the claimant was entitled to the grant of a patent for the invention in EP 1123774 and certified under ss.13(3) and 78(2) that the inventors named in that application ought not to have been so mentioned. However he did not consider that s.13(1) gave him power to require designation, for the purposes o f EPC r.18(2) in any new application under EPC Art 61, of the persons agreed instead to be inventors.

Citations:

[2007] UKIntelP o21807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456766

Energyshop (Trade Mark: Opposition): IPO 13 Aug 2007

IPO The opposition was based on two Canadian registrations, ENERGYSHOP and ENERGYSHOP.com. The Hearing Officer therefore had to assess the claim that these were ‘well-known’ marks in the terms of the Paris Convention or the WTO agreement concerning such marks. The evidence however failed to support such a claim and the opposition failed.

Citations:

[2007] UKIntelP o22707

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456753

CICA (Trade Mark: Invalidity): IPO 9 Aug 2007

At first instance (see BL O/099/06) the application had failed because the applicants had not provided evidence of use of the mark relied on. Following an appeal to the Appointed Person the matter had been remitted to the Registrar for further consideration (see BL O/371/06).
Following the re-hearing, the Hearing Officer ruled that the application for invalidation had succeeded for the most part and the specification was reduced accordingly.
However, in case he should be found wrong in respect of one of the trade marks in the series and correct in respect of the other, he went on to consider the question of invalidation of a series of trade marks ; a matter on which he had invited and received written submissions.

Citations:

[2007] UKIntelP o22407

Links:

Bailii

Statutes:

Trade Marks Act 1994

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456748

Gareth Williams and Surfactant Technologies Limited (Patent): IPO 14 Aug 2007

IPO In an action for revocation of the GB patent, the defendant requested a stay to await the outcome of an opposition to the equivalent European Patent, in the European Patent Office. The hearing officer refused to allow a stay in the circumstances, in particular because a key factor in the GB action was the discretionary issue relating to the allowability of the amendments. This could not be at issue in the EPO opposition and would have to be decided whether or not there was a stay.

Citations:

[2007] UKIntelP o22907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456754

Stuart Morrison and Seetru Limited (Patent): IPO 28 Aug 2007

In decision BL O/133/07 the hearing officer found the patent invalid for lack of novelty and inventive step. The Defendant was given two months to file amendments and both parties were given the same period to make submissions on costs. No amendments were submitted and the patent was revoked. The Claimant, as the successful party, made no submissions on costs so no order for costs was made.

Citations:

[2007] UKIntelP o24907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456767

Heritage (Trade Mark: Opposition): IPO 22 Aug 2007

IPO This was an appeal of the Hearing Officer’s decision dated 16 January 2007 (BL O/022/07). In his decision the Hearing Officer had concluded that the opponent had ‘just about’ established a protectable goodwill at the relevant date and therefore the application should be refused in respect of cider in Class 33.
On appeal the applicant submitted that the Hearing Officer had given undue weight to the opponent’s evidence and that in fact there was insufficient evidence to establish that the opponent had a protectable goodwill at the relevant date.
The Appointed Person carefully reviewed the Hearing Officer’s decision and noted that the had considered all the relevant points and taken full account of the fact that the opponent’s evidence was not as detailed or focused as it should have been. However, he had concluded that at the relevant date the opponent had established a protectable goodwill. The Appointed Person accepted that there was some reservations with regard to the opponent’s evidence but there had been no formal challenge by the applicant and no request to cross-examine the opponent’s witness. In all the circumstances the Appointed Person believed that the Hearing Officer had reached an acceptable decision and he dismissed the appeal.

Citations:

[2007] UKIntelP o24707

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456756

Greasemania (Stylised) (Trade Mark: Invalidity): IPO 21 Aug 2007

IPO Both parties filed evidence in the proceedings and the applicant’s evidence of use of an identical or very similar mark to that of the registered proprietor pre-dated the date of application of the mark in suit. The Hearing Officer concluded that by the relevant date the applicants had a reputation and goodwill in their mark and that the opposition succeeded on the Section 5(4)(a) ground.
As regards the ground under Section 3(6) the Hearing Officer noted that the applicants user was not extensive and it was not clear that the registered proprietor would have been aware of such use when it adopted and applied for the mark in suit. Opposition failed on this ground.

Judges:

Mr M Foley

Citations:

2348098, [2007] UKIntelP o24007

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456755

Peter Joseph Crowley (Patent): IPO 1 Aug 2007

IPO Industrial application – The application relates to an arrangement for producing power. The Hearing office held that (i) the invention was not capable of industrial application because its alleged mode of operation was contrary to well-established physical laws, and (ii) that the specification was not sufficient to enable the skilled man to produce a device which operated as described and claimed. The application was refused.

Judges:

Mr P Slater

Citations:

[2007] UKIntelP o21607, GB0621147.8

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(c) 14(3)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456765

Device of A Tick (Trade Mark: Opposition): IPO 3 Aug 2007

IPO The opposition was based on registrations of a ‘tick’ device, registered in Class 25 (inter alia). The goods were identical; the matter therefore turned on a comparison of the marks. In the result, the Hearing Officer found no likelihood of confusion. The differences between the marks (one comprising two parallel lines of stitching in the form of a tick, the other a solid black line in the form of a tick) decided the matter.

Citations:

[2007] UKIntelP o22107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456750

Countrywide Surveyors Ltd (Patent): IPO 30 Aug 2007

IPO The application relates managing survey workflow across a distributed system, the system including a requesting party connected to a network, a central office system and portable client systems, with the central office system managing the workflow of a requested survey instruction and the resulting survey performed on a portable device by an assigned user. The Hearing Officer considered the recent Court of Appeal judgment in Aerotel/Macrossan and decided that the actual contribution made by the invention fell within the exclusion a method of doing business and to a program for a computer. It was not formally necessary to consider whether the contribution was technical in nature as set out in the fourth step of the Aerotel/Macrossan test. The application was refused.

Citations:

[2007] UKIntelP o25307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456749

X1Recall (Trade Mark: Opposition): IPO 9 Jul 2007

IPO The opponent is the owner of a Community Trade Mark registration in Class 9 in respect of the mark X1 covering ‘software for locating electronic files stored on local network drives’. The applicant’s mark covers computer software at large in addition to a range of software for specific functions.
The opponent had used its mark for a short period prior to the relevant date but such user was modest and did not impact on the Hearing Officer’s decision.
The Hearing Officer compared the respective goods and concluded that they were identical and similar to a greater or lesser degree. As regards the respective marks the Hearing Officer believed that the applicant’s mark would be seen as X1 RECALL as the word RECALL has a clear meaning and could have an illusion to software which has a retrieval function. Thus the respective marks are very similar and the Hearing Officer went on to find the opponent successful in its Section 5(2)(b) ground.

Citations:

[2007] UKIntelP o19007

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456735

Zenith (Trade Mark: Opposition): IPO 20 Jul 2007

IPO The opposition was based on the opponents’ registration of the identical mark ZENITH ;evidence of their use of the mark however, which they were required to show, was described by the Hearing Officer as ‘thin to say the least’ and did not establish use on any goods other than watches.
These, he found, were not similar to the sunglasses and spectacles in the applicants’ specification ,despite a claim that there was a ‘fashion-accessory’ link.
Overall, he found no likelihood of confusion and the S5(2)(a) ground failed accordingly.
Neither was the Hearing Officer convinced as to any claim of erosion or dilution and the Section 5(3) ground failed also.

Citations:

[2007] UKIntelP o20307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456736

Arion (Trade Mark: Opposition): IPO 2 Aug 2007

IPO The opposition was based on the opponents’ mark ARIEL, registered in respect of goods which the Hearing Officer found to be identical with or similar to those specified in the application. There was also a ‘moderate degree of similarity’ in the marks. However, overall the Hearing Officer did not find a likelihood of confusion and the opposition failed accordingly.

Citations:

[2007] UKIntelP o21907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456738

Anduraguard (Trade Mark: Opposition): IPO 28 Aug 2007

The opponent in these proceedings owns a registration for the mark DURAGARD HY-BUILD in Class 2 in respect of identical and similar goods as those of the applicant.
Under Section 5(2)(b) the Hearing Officer noted that identical and similar goods were at issue and went on to compare the respective marks. In relation to the opponent’s mark the Hearing Officer decided that the DURAGUARD element was more distinctive than the element TY-BUILD which appeared to have descriptive connotations in respect of the goods at issue. The Hearing Officer also decided that DURAGUARD would be recognised as an element within the applicant’s mark ANDURGUARD. Looked at overall the Hearing Officer concluded that the respective marks were similar to the extent that even if not confused directly, consumers could well assume that the respective goods came from economically linked undertakings. Opposition thus successful under Section 5(2)(b).

Citations:

[2007] UKIntelP o24807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456737

Storm (Trade Mark: Revocation): IPO 4 Jul 2007

Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email
Result
Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its registration
Points Of Interest
The filing of documents by email is allowed
Summary
An application for revocation of the mark in suit was filed and the proprietor was allowed until 16 January 2007 to file a defence. On 16 January the registered proprietor filed the first page of Form TM8, a counterstatement and exhibits by way of email. The registry indicated that the papers and method of filing were not acceptable and the proprietor’s attorney filed a properly completed TM8 on 25 January 2007. Following further correspondence the registered proprietor requested a hearing.
After hearing the two parties the Hearing Officer indicated by letter that the filing of documents by email was not precluded by the Trade Marks Act and Rules. She also went on to exercise the Registrar’s discretion under Section 31(3) to allow the registered proprietor a short period to put its evidence into acceptable format and to defend its registration. The applicant for revocation asked for a statement of the grounds for the Hearing Officer’s decision.
The Hearing Officer dealt with the acceptability of the filing of document by email, by comparison with the filing of documents by facsimile, and decided that this method was not precluded. She took account of the fact that this method has been allowed by the Courts since the introduction of The Civil Procedure (Amendment) rules 2002 (Rule 4).

Judges:

Mrs A Corbett

Citations:

[2007] UKIntelP o18607, O/186/07

Links:

Bailii

Statutes:

Trade Marks Act 1994 31(3)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456730

Artbox (Stylised) Device (Trade Mark: Opposition): IPO 22 Aug 2007

IPO The opposition (which was solely in respect of the Class 16 goods) was based on use of the mark ARTBOX (in various formats). Having reviewed the evidence of use filed by the opponents the Hearing Officer ‘albeit with some hesitation’ came to the conclusion that it was not sufficient to establish the necessary goodwill or reputation. The opposition failed accordingly.

Citations:

[2007] UKIntelP o24107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456739

Brilliance (Trade Mark: Opposition): IPO 7 Aug 2007

IPO The opposition was based on the opponents’ CTM ‘BRILLIANCE’, registered in respect of ‘electrical cables and wires; electronic cables and wires; microphone cables for sound and audio applications’. The marks being identical the Hearing Officer proceeded to a comparison of the goods. In the result, he concluded that there was ‘a considerable difference between an extremely complex piece of advanced medical equipment and a piece of cable’ the opposition failed accordingly.

Citations:

[2007] UKIntelP o22307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456741

Simon Bibby Bernard Ward (Patent): IPO 19 Jul 2007

IPO This was an entitlement dispute over a patent, between the two (joint) proprietors and inventors. Before the entitlement and inventorship issues reached a hearing, one of the joint-proprietors applied to revoke the patent, and the other joint-proprietor chose not to defend the patent.
The patent was therefore revoked for want of defence on grounds of invalidity and insufficiency. With no bone to fight over, the entitlement and inventorship proceedings abated.

Citations:

O/195/07, [2007] UKIntelP o19507

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.456727

Budweiser (Trade Mark: Invalidity): IPO 2 Aug 2007

IPO There has been a long running dispute between these two party’s dating back to the early 1980’s. The mark in suit was applied for on 28 June 1989 and was opposed by the current applicant all the way to the Court of Appeal, who allowed registration under Section 12 of the 1938 Trade Marks Act (as amended). The application for invalidation was filed on 18 May 2005 which was within five years from the date of registration of the mark in suit.
Both parties filed evidence which consisted essentially of a statement of use of the respective marks. The applicant claimed use from 1974 and the registered proprietor from 1973.
As regards the issue of Cause of Action/Issue Estoppel the Hearing Officer determined that the applicant was not debarred from making the application for invalidity even though it had been unsuccessful in its opposition.
As regards the matter of acquiescence the Hearing Officer noted that there was a clear distinction between English Common Law and the wording of the Directive on which the 1994 Act is based. As a consequence the procedures outlined in the Directive had to be followed and the defence claimed in the counterstatement be dismissed. As the mark in suit had not been a registered mark for a period of five years when the application was made the provisions of Section 48(1) (acquiescence) could not be of assistance to the registered proprietor.
The matter of abuse of process was also considered in detail but the Hearing Officer concluded that, as these are new proceedings and not a continuation of existing proceedings, the making of an application for invalidation was not an abuse of process.
The Hearing Officer went on to apply the provisions of Section 5(1) of the 1994 Act taking account of the fact that the applicant had a registration of an identical mark for identical goods. Invalidation allowed.
The ground under Section 5(2)(b) failed as the applicant did not provide ‘proof of use’ in relation to its BUD mark relied upon in the application.

Citations:

[2007] UKIntelP o22007

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456742

Bayer Healthcare Ag,Aicuris Gmbh Co Kg, Hans-Dieter Volk and Others (Patent): IPO 21 Aug 2007

IPO As a result of an uncontested application filed under section 13(1) by Bayer HealthCare AG, it was found that Hans-Dieter Volk should also be mentioned as a joint inventor in the granted patent for the invention and directed that an addendum slip mentioning him as a joint inventor be prepared for the published patent application and granted patent for the invention.

Citations:

[2007] UKIntelP o23907

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456740

CFPH LLC (Patent): IPO 10 Aug 2007

IPO In apparatus for electronic trading a spreadsheet application calculated a series of trading commands from incoming market data and stored them in a queue to be sent at predetermined intervals to an electronic trading system (ETS); since the commands might not be synchronised with market conditions by the time they were transmitted they were updated before transmission in response to the receipt of further market data. Applying the test in Aerotel/Macrossan [2006] EWCA Civ 1371, the hearing officer accepted the applicant’s argument that the contribution of the invention included an aspect related to the field of communication handling (which the applicant had derived by stripping the trading aspects from the claims and reducing them to the underlying supposedly technical features), but thought that it could not be divorced from trading. He accepted that these underlying features solved a physical problem caused by the limitations of the computer at the ETS end of the transmission so that the contribution did not relate solely to either a business (trading) system or method or a computer program, even though the invention was dependent on programming to update the commands. The contribution having passed the third step of the Aerotel/Macrossan test, the hearing officer, applying the fourth step, held the contribution to be technical in nature because it overcame the physical limitations of the ETS computer. He accordingly held that the invention was not excluded under section 1(2).

Judges:

Mr R C Kennell

Citations:

[2007] UKIntelP o22607, GB 0313122.4

Links:

Bailii

Statutes:

Patents Act 1977 1

Jurisdiction:

England and Wales

Citing:

Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456746

Camellia Device Japanese Letters (Trade Mark: Opposition): IPO 1 Aug 2007

IPO Aside from the objections on absolute grounds, the opponents also claimed to have used the symbol of a camellia on a wide variety of items, including some in the applicants’ specification.
The Hearing Officer dealt firstly with the objection under 3(1)(d), which he dismissed since there was no evidence that the word was customary in the common parlance or practices of the trade; in any case the additional device of ‘Katakana’ symbols meant that the mark did not ‘consist exclusively of’ – as required by that Section.
Under Sections 3(1)(b) and (c) however, CAMELLIA had to be regarded as a word descriptive of goods that were representations of that shrub or flower; notionally, all of the goods specified. The opposition brought on those grounds succeeded therefore.
Under Section 5(4)(a) the opposition failed; the opponents had successfully shown that other traders produced goods in the shape of camellias; such use therefore could not have been exclusive to them.

Citations:

[2007] UKIntelP o21707

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456743

Symbian Ltd (Patent): IPO 30 Jul 2007

IPO The application relates to a method of operating a computing device to access data held in a dynamic link library (DLL) which has two parts, each part containing a number of functions. In operation, an executable program directly links to the functions in the first part through the ordinal numbers. To access the functions in the second part, the executable program links to the DLL indirectly through an interface which comprises a further library containing additional functions. The provision of the interface enables an executable program to access the functionality available on the computing device, regardless of any additions or amendments made to the available functionality by a third party. The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment, found the invention to be excluded as a computer program, and refused the application.

Judges:

Mrs S E Chalmers

Citations:

[2007] UKIntelP o20907, GB 0325145.1

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Cited by:

Appeal from – Symbian Ltd v Comptroller General of Patents PatC 18-Mar-2008
The company appealed against rejection of its patent application, the objection being as to the invention’s patentability. The EPO had granted a European Patent. . .
At IPO – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Appeal from – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 20 October 2022; Ref: scu.456731

Canon Europa Nv (Patent): IPO 30 Aug 2007

IPO The invention provided for communication between a plurality of electronic devices (such as office equipment) to be maintained and one or more remote maintenance systems in which a maintenance computer took the necessary action on the basis of status information about the devices. A central server received the status information, stored it in a central database, and sent a message to the appropriate maintenance system if necessary, so that a user at that end could access the database and transfer information from it to the maintenance computer. The applicant argued that in the light of the Aerotel appeal allowed in Aerotel/Macrossan [2006] EWCA Civ 1371 the contribution of the invention was a new physical combination of hardware providing a new interface between the service management system and a central database.
Noting that the reasoning in the Aerotel appeal was not directed to the computer program exclusion, the hearing officer held that the contribution arose from a new computer program for communicating between the devices and the maintenance organizations and was not a new physical combination of hardware. The contribution was therefore excluded both as a computer program and as a scheme or method for running an equipment maintenance business. It therefore failed the third step of the Aerotel/Macrossan test and it was not necessary to consider whether it was technical in nature. The application was refused.

Citations:

[2007] UKIntelP o25207

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456744

Vodka O2 Rush Vodka O2 Premium Sparkling Vodka (Trade Mark: Invalidity): IPO 12 Jul 2007

IPO Following the filing of invalidity proceedings the registered proprietor did not respond or file a counterstatement. The invalidity application was allowed in the Registrar’s decision dated 11 May 2006 (BL O/122/06).
Outside the period for lodging an appeal the Registered Proprietor contacted the Registry to say that there had been an error in procedure due to the fact that there had been a change of address and it had not received the relevant documentation. Following an interlocutory hearing the Registrar refused to re-open proceedings and refused to set aside the decision of 11 May 2006. Decision dated 4 January 2007 (BL O/203/07).
In February 2007 the registered proprietor’s new legal representatives sought examination of the Registry file relating to the above proceedings and subsequently filed a request for a back dated extension of time so that the registered proprietor could appeal the decision of 11 May 2006. They also asked that the decision be set aside because of an irregularity in procedure in that the registered proprietor had not been advised of his right to make submissions and/or request a hearing. Following an interlocutory hearing the Hearing Officer found as follows:
1. The Registrar was not functus in respect of Mr Maitland’s request for an extension of time.
2. The request for the extension of time was refused because of the delay in making the request and because it would not have been just and equitable to exercise the registrar’s discretion in Mr Maitland’s favour.
3. While there were procedural irregularities in relation to the proceedings they were not material in their effect and thus it was not appropriate to set aside the decision of 11 May 2007.
4. The applicant was entitled to an award of costs.

Citations:

[2007] UKIntelP o19407

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456734

TEC Armech Limited Et Al (Patent): IPO 26 Jul 2007

IPO The applicant filed three PCT applications on 15 December 2006 at the UK Office acting as receiving Office under the PCT. On 11 January 2007 the Office received fee sheets in relation to the applications but there were at that time insufficient funds in the agent’s deposit account to pay the fees. A cheque topping up the account was received on 12 January 2007 but no fee sheets or other instructions indicating that the cheque should be used to pay the outstanding PCT fees were included with the cheque. The one month deadline for paying the fees subsequently expired and the Office indicated that late payment fees were therefore now due. Mr. Brooks paid the fees together with the late payment fees but requested that the late payment fees be refunded as the Office had both a request to take the fees (the 11 January fee sheets) and the money itself (the 12 January cheque) by the 15 January deadline for paying the fees. The Office disagreed, arguing that the fax sent on 11 January 2007 indicated that there were insufficient funds available and that new fee sheets should be sent with any subsequent top-up. Moreover they argued that they had acted in accordance with their Terms and Conditions for the Operation of Deposit Accounts. The hearing officer held that the Office had acted fairly and in accordance with its Terms and Conditions in this case. The fees had therefore not be paid on time and thus late payment fees were payable. The Office should not therefore refund the late payment fees.

Judges:

Mr B Micklewright

Citations:

[2007] UKIntelP o20807, O/208/07

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.456732

Cellarman Limited (Patent): IPO 17 Aug 2007

IPO The invention relates to a computer network for ordering stock in which a central server is connected to a number of remote servers. The central server stores a complete inventory of those items which may be ordered by users at each of the remote servers. The inventory or a subset thereof is transferred and stored at each of the remote servers, and is tailored to a specific user by central or remote filtering. Each remote server acts as a stand alone system via which users can place orders which are subsequently transferred to the central server when a predetermined number of orders have been made or at a predetermined time, hence there is no requirement for a permanent connection between the remote and central server. Pricing data and data relating to deliveries is also exchanged between remote and central servers where it may be stored and used to reconcile orders and deliveries for accounting purposes. The invention provides users with relevant information about goods and services available to them, enables them to join together in orders to obtain volume discounts, provides them with up-to-date pricing information and an improved system for auditing stock and linking deliveries with specific orders.
The hearing officer held that the invention failed the third step of the Aerotel/Macrossan [2006] EWCA Civ 1371 test because the contribution, related to no more than a method for doing business and/or a computer program as such. Any advantage in speed or robustness of the network having been achieved by what is clearly a business decision on behalf of the systems proprietor, to provide the end user with less information and to send orders less frequently.

Citations:

[2007] UKIntelP o23307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456745

Dean Corrigan and Victoria Louise O’Donoghue (Patent): IPO 10 Jul 2007

IPO As a result of an uncontested application filed under section 13(3) by Dean Corrigan, the comptroller found that Victoria Louise O’Donoghue should not have been mentioned as a joint inventor in the published patent application. The decision serves as a certificate to this effect. The comptroller also directed that an addendum slip be prepared stating that Victoria Louise O’Donoghue should not have been mentioned as a joint inventor.

Citations:

[2007] UKIntelP o19107

Links:

Bailii

Intellectual Property

Updated: 20 October 2022; Ref: scu.456710

Skyner (Patent): IPO 23 Jul 2007

The invention is concerned with wall mounted light switches incorporating an electronic timer for switching the lights on and off. The timer can be set by push buttons or by a remote control unit and can be overridden by use of the normal light switch. The hearing officer considered novelty and obviousness of the claims in the light of prior art which had been cited by the examiner during the application process. He found that claims 1 and 7 lacked novelty and that all the claims lacked inventive step. There was no further disclosure in the specification upon which valid claims could be based. The application was therefore refused.

Citations:

[2007] UKIntelP o20507

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 20 October 2022; Ref: scu.456716

IGT (Patent) O/198/07: IPO 16 Jul 2007

IPO The application is concerned with games such as poker in which a combination of cards makes up a winning hand, or slot machine symbols making a winning row. In the card variant, certain cards have associated with them other, different, cards; for example the seven of hearts could be associated with the ace of diamonds. When playing the game, if the player found the seven of hearts in his hand, and was able to remember that its associated card was the ace of diamonds, he would have the option of substituting one for the other to give himself a better hand. Similarly with slot machine symbols. The hearing officer applied the four part test set out in the Aerotel and Macrossan judgment, found the invention to be excluded as a method of playing a game, and refused the application.

Judges:

Mr P Marchant

Citations:

[2007] UKIntelP o19807, O/198/07, GB 0417719.2

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456721

Astron Clinica Limited, Cyan Holdings Plc Surfkitchen Inc, Inrotis Technologies Limited, Software 2000 Ltd: IPO 4 Jul 2007

IPO (Patent) This decision is concerned with claims to computer programs for carrying out patentable methods; sometimes called ‘program on a carrier’ claims. For many years, such claims have been allowed under the Patents Act. However, following the Aerotel and Macrossan case in the Court of Appeal, the Office issued a practice notice which gave its interpretation of the judgment as disallowing claims of this sort. The hearing officer considered the issue of program claims in these six applications, in the light of UK court judgments since Aerotel and Macrossan and in the light of European practice, and found that they should be disallowed.

Citations:

[2007] UKIntelP o18507

Links:

Bailii

Statutes:

Patents Act 1977

Intellectual Property

Updated: 20 October 2022; Ref: scu.456708

IGT (Patent) O/184/07: IPO 4 Jul 2007

IPO All three applications (which were unrelated) related to ways of determining the awards and bonuses to be paid to players of gaming machines, and were refused. Applying the four-step Aerotel/Macrossan test in the light of the recent judgments in Oneida Indian Nation and IGT( [2007] EWHC 0954, 1341) the hearing officer held that, irrespective of whether it was implemented in software, the contribution in each case was on all fours with the decision in IGT and was concerned solely with the gameplay on the machine. The contributions therefore fell within the excluded area of a scheme, rule or method for playing a game, and it was not necessary to consider whe ther they were technical in nature. The hearing officer had some doubt about whether the inventions related solely to a computer program in the light of Oneida and IGT. He made no decision on whether they were excluded as business methods notwithstanding the decision in Oneida finding certain claims to gaming machines excluded on this ground.

Judges:

Mr R C Kennell

Citations:

[2007] UKIntelP o18407, O/184/07

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 20 October 2022; Ref: scu.456720