Category: Intellectual Property

Nalan Uktu, The Brigham and Womens Hospital, Inc and Edgar L Milford (Patent): IPO 5 Jun 2007

IPO As a result of an uncontested reference and application filed under section 13(1) and 37(1) by The Brigham and Women’s Hospital, Inc, it was found that they should be mentioned as a co=proprietor in the granted EP (UK) patent and that Edgar L Milford should be mentioned as a joint inventor. It was directed that the patents register be updated and an addendum slip reflecting the finding prepared for the granted patent.

Citations:

[2007] UKIntelP o15307

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456694

O2M8 (Trade Mark: Invalidity): IPO 1 Jun 2007

IPO The application was based on registrations of the mark O2 and O2 in respect of mobile phones and telecommunications services. Having compared the respective marks the Hearing Officer found them to be ‘similar to a moderate degree’. A comparison or the goods/services and an overall assessment left the Hearing Officer with a finding of likelihood of confusion in respect of some, only, of the goods in Class 9 and none of the services in Class 42. The application under Section 5(2)(b) was successful therefore to that limited extent.
The Hearing Officer went on to find that the applicants had failed to establish a case under Section 5(3) in respect of the dissimilar goods and services.
In view of the partial success achieved by both sides the Hearing Officer made no award of costs.

Citations:

[2007] UKIntelP o14707, O/147/07

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456695

Pucci (Trade Mark: Opposition): IPO 13 Jun 2007

IPO Result
Section 5(2)(b): Opposition failed. Appeal dismissed. Section 5(3): Opposition failed. Appeal dismissed.
Points Of Interest
See also Hearing Officer’s decision dated 11 September 2006 (BL O/256/06).
Summary
In his decision dated 11 September 2006 (BL O/256/06) the Hearing Officer decided that the opponent failed on all four grounds of its opposition. The opponent appealed to the Appointed Person in respect only of the grounds under Sections 5(2)(b) and 5(3).
On appeal the opponent submitted that (1) The Hearing Officer had not properly assessed the reputation of its mark. (2) Had misconstrued the applicant’s specifications. (3) Had not compared the respective marks properly. (4) Had not considered the matter of detriment properly in the light of the respective goods. (5) Had not considered the evidence as a whole and failed to take account of admissions made by the applicant. (6) The Hearing Officer was predisposed against the opponent’s case.
The Appointed Person reviewed the Hearing Officer’s decision in detail, taking account of the grounds of appeal. He concluded that the Hearing Officer had approached the conflict between the parties in the correct manner and had considered all the evidence that was before him and had taken all the relevant factors into account. Overall the Appointed Person concluded that the Hearing Officer was entitled to reach the decision he had made under Section 5(2)(b) that there was no likelihood of confusion. Appeal dismissed.
As regards the appeal under Section 5(3) the Appointed Person decided that in view of the decision under Section 5(2)(b) there was nothing in the opponent’s evidence or submissions which identified an independent basis for an objection under Section 5(3). Appeal dismissed.

Judges:

Mr Richard Arnold QC

Citations:

2372279, [2007] UKIntelP o16807

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456697

Fisher -Rosemount Systems Inc (Patent): IPO 1 Jun 2007

IPO The application related to a process control system which used program objects corresponding to components of the process to provide information to an operator, in terms of an overview of the process operation. 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 claims to a workstation with the objects stored on it were excluded as claims to a computer program, but claims to a process control system comprising the objects were held not to be excluded provided the claims were clarified to indicate the nature of the information provided.

Citations:

[2007] UKIntelP o15007

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456682

IGT (Patent) O/167/07: IPO 13 Jun 2007

IPO The application is concerned with a method of operating gaming machines in which players are offered games in which they can exercise a level of skill, strategy or risk. A proportion of the award (whether won or lost) from this play is fed into a steadily increasing jackpot, and the player is then able to win the jackpot in games based only on chance. The underlying idea is that regular players are attracted by the element of skill, strategy and risk, but new players who will be less successful where this element is involved, are not disadvantaged in the long run. 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 or doing business, and refused the application.

Judges:

Mr P Marchant

Citations:

[2007] UKIntelP o16707, O/167/07, GB 0504887.1

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456688

Ian Popeck v Runaway Technology, Inc (Patent): IPO 24 May 2007

The hearing officer had deferred a decision on whether to order the claimant to give security for costs in revocation proceedings (see O/345/06) in order to allow either party to request a written opinion. The claimant so requested and the proceedings were stayed to await the opinion. This found that all claims lacked novelty over one document, but that no objection arose in respect of the other documents referred to. The hearing officer considered the claimant’s case sufficiently meritorious for him not to be forced into a premature withdrawal for lack of funds. He therefore resumed the revocation proceedings and set the evidence rounds, but made no order for security for costs (although without prejudice to the defendant being able to make a further request if circumstances changed). He also invited the claimant to conside r whether he wished to maintain his case in its entirety and gave a period for him to request amendment of his statement if he so wished. The proceedings and the hearing officer’s order would be stayed in the event of an appeal or of a request for a review of the opinion under section 74B.

Judges:

Mr R C Kennell

Citations:

[2007] UKIntelP o13707, O/137/07, EP(UK) 0852363

Links:

Bailii

Statutes:

Patents Act 1977 &72 74A 74B

Intellectual Property

Updated: 19 October 2022; Ref: scu.456654

DNA Electronics Ltd, Christofer Toumazou, Bhusana Premanode and Leila Shepherd (Patent): IPO 14 May 2007

As a result of an uncontested application filed under Section 13(1) by DNA Electronics Ltd, it was found that Leila Shepherd should be mentioned as a joint inventor in any patent granted for the invention and directed that an addendum slip be prepared mentioning her as a joint inventor for the published patent application for the invention.

Judges:

Mrs S Williams

Citations:

[2007] UKIntelP o12507, O/125/07, GB 2416210

Links:

Bailii

Statutes:

Patents Act 1977 13(1)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456647

IGT (Patent) O/120/07: IPO 9 May 2007

IPO In a computer networked system for monitoring gaming machines and tables in a casino, information on player activity is sent to casino employees on portable handheld computers linked to the system allowing them to monitor play, identify the location of players and make awards of free games, goods or services. The contribution was assessed, under the four part test in the Aerotel and Macrossan case, as the use of a known hardware configuration to provide information to staff for them to locate players and output award amounts. The contribution was considered to fall within excluded subject matter as being for a method of doing business. The fact that this particular hardware configuration gives advantages when used for this purpose did not affect that determination.

Judges:

Mr P Marchant

Citations:

[2007] UKIntelP o12007, O/120/07, GB 0307663.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456655

IGT (Patent) O/099/07: IPO 5 Apr 2007

IPO This application relates to an electronic gaming machine such as a ‘slot machine’ wherein players receive monetary awards which are displayed, for example, in the form of a three digit number. The player can then choose whether to keep the original award or to modify or gamble the award. A number of methods are provided for modifying the award, one of which is to re-arrange or scramble the original three digits to form a new number e.g. the digits 416 may be scrambled to become 614, 164 etc. Alternatively, the machine may modify the original award by regeneration i.e. generating a complete new set of digits, by adding or subtracting a digit, or by applying a predetermined multiplier.
The hearing officer held that the invention failed the third step of the Aerotel/Macrossan [2006] EWCA Civ 1371 test because the contribution, ‘a method selected and used to modify the award, and in particular the operation of regenerating or scrambling the digits to produce a new award’, related to no more than a scheme, rule or method for playing a game and a program for a computer as such.

Judges:

Mr P Slater

Citations:

[2007] UKIntelP o09907, O/099/07, GB0404737.9

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456627

IGT (Patent) O/097/07: IPO 5 Apr 2007

IPO This application relates to an electronic gaming machine such as a ‘slot machine’ wherein players begin the game by pulling an arm or pushing a button which in turn rotates a series of reels or an equivalent video representation thereof, if when the reels stop, a winning arrangement of symbols is displayed, the player receives a monetary award, the value of which is determined by the player, who is presented with a series of three masked digits which he is allowed to position in any order. Once positioned, the digits are revealed to show the value of the award.
The hearing officer held that the invention failed the third step of the Aerotel/Macrossan [2006] EWCA Civ 1371 test because the contribution, ‘the method used to determine the value of the award, and in particular the way in which the player is allowed to arrange the order of the digits.’, related to no more than a scheme, rule or method for playing a game and a program for a computer as such.

Judges:

Mr P Slater

Citations:

[2007] UKIntelP o09707, O/097/07, GB0404739.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456626

The Dental Practice Device of A Crocodile (Trade Mark: Opposition): IPO 24 May 2007

IPO Section 5(2)(b): Opposition failed. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed
The opponent appealed the Section 5(2)(b) ground to the Appointed Person. In her decision dated 12 December 2004 (BL O/361/07) the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal.
The opponent owns a number of marks consisting of a device of a crocodile and it filed evidence of use of its marks. The evidence indicated extensive use but it was poorly focussed in that marks were not identified or linked to particular goods or turnover. The Hearing Officer was unable to assume that any particular mark had an enhanced reputation because of the use made of it.
Under Section 5(2)(b) the Hearing Officer decided that the opponent’s best case rested on its registration of a device of a crocodile covering services in Class 44 which included medical services. She concluded that such services included dentistry services, the applicants services, and therefore identical services were at issue. As regards the respective marks the Hearing Officer noted differences in the device elements but the main difference was the presence of the words THE DENTAL PRACTICE in the applicant’s mark. Overall she concluded that the respective marks were not confusingly similar and that opposition failed under Section 5(2)(b).
Opposition also failed on the remaining grounds because the respective marks were not similar, the evidence of use was of only limited assistance and the activities of the two parties appeared to be very different.

Judges:

Mrs A Corbett

Citations:

[2007] UKIntelP o13807, O/138/07

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456645

IGT (Patent) O/077/07: IPO 15 Mar 2007

IPO Excluded fields (refused) – In a gaming machine, different results were classified into sets producing the same outcome, all results producing the same outcome being in the same set; the results were numbered and stored in a memory with the outcomes; and a processor randomly selected one of the outcomes and one of the numbers producing that outcome and displayed the corresponding result. Applying the four-step test in Aerotel/Macrossan [2006] EWCA Civ 1371 the hearing officer held that the contribution of the invention was the provision and setting of a paytable in a way which improved the structuring of outcomes provided to players of gaming machines. The applicant argued that the invention was patentable because it provided a technical solution to a technical problem by enabling a large variety of results to be provided whilst retaining control over the frequency of various levels of outcome (eg large, medium and small awards). However, distinguishing Sun Microsystems O/057/06, the hearing officer held the invention excluded because it failed the third Aerotel/Macrossan step in that it related solely to a computer program and (following the decisions in Acres Gaming O/112/06 and IGT O/211/06) to a method or rule for playing a game. In any case he did not think the contribution of the invention was technical in nature. The application was refused.

Judges:

Mr R C Kennell

Citations:

[2007] UKIntelP o07707, O/077/07, GB 0501495.6

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456605