Category: Intellectual Property

Micron Europe Limited (Patent): IPO 20 Sep 2006

IPO Excluded fields (allowed) – The applications relate to the use of parallel processing in active memory applications. Following the CFPH approach, the Hearing Officer was able to identify an advance in the art that lay outside the description of an invention in the sense of Article 52 of the EPC. However, he could find no support for such an advance in the claims as currently filed. The Hearing Officer gave the applicant a further two months in which to submit amended claims.

Judges:

Mr H Jones

Citations:

[2006] UKIntelP o26406

Links:

Bailii

Statutes:

Patents Act 1977 1(2)(c)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454841

William W Jeswine (Patent): IPO 8 Aug 2006

IPO In 1995 Mr Jeswine sold certain rights in the patent to Eagle Premier (‘Eagle’) who were a holding company for emerging technology. In 1996/7, he entered into an agreement with Eagle in which, inter alia, they were responsible for payment of renewal fees, while he looked after the technical side. Much of the agreement was verbal and not formalised to save on costs. Mr. Jeswine employed Seed IP to send reminders to Eagle, but were only to pay the fees on specific instructions to do so from Eagle. A pattern of late response and payment by Eagle built up between them and Mr. Jeswine, often resulting in replies/payment on the final day. This sort of arrangement existed, but worked well enough for over five years and resulted in renewals of the patent at the EPO and once (in the 7th year) in the UK, where the fee was paid some two months late with surcharges. In the 8th year renewal in suit, Seed IP received no response from Eagle to their April 2003 reminder, so alerted Mr. Jeswine. He was not overly concerned at this stage, because of his previous experience of Eagle, but from May to September he sent letters by post to them in an attempt to prompt them, but with no response. He had no other contact details for Eagle. By late September he was concerned enough about the non-response from Eagle to ask Seed IP to send all correspondence to him directly. Mr. Jeswine continued to write to Eagle weekly until early December, but with no reply. Despite his growing concerns and other adverse indications, Mr. Jeswine took no action to pay the renewal fees himself, relying on his hope that Eagle would eventually pay. The HO accepted that Mr. Jeswine had put a reasonable renewal system in place, but that despite strong indications that it had broken down in this period, he chose to wait until after it had lapsed to take further action. This was not reasonable care in the circumstances and the application for restoration was refused.

Citations:

O/223/06, [2006] UKIntelP o22306

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454823

Acres Gaming Incorporated (Patent): IPO 18 Sep 2006

IPO The claims related to an apparatus for gaming which was networked to a host computer and allocated players to levels each with an associated amount beyond which a player would be given an award. The nearest prior art was the applicant’s published application which lay in the section 2(3) field and had been refused in an earlier decision BL O/112/06 as a method of playing a game. The hearing officer did not accept the applicant’s argument that section 1(2) did not bite in such a situation, and did not think that, for the purpose of assessing what was the advance made by the invention in the present case, anything turned on whether a document in the section 2(3) field should be disregarded.
Applying the test in CFPH LLP’s Application, the hearing officer considered that the advance was excluded as a method of playing a game for the same reasons as in O/112/06. He did not accept arguments (i) that the advance differed from the earlier case because the assigning of player levels with an associated reward constituted a technical advance which avoided the complexity of entering different variables for every player as in the earlier case, (ii) that the advance took the invention into away from playing the game as such and into the area of giving a reward after the game had been played, and (iii) that the earlier case was distinguished because it centred on decisions made during the game itself. Distinguishing Macrossan’s Application, the hearing officer also held that the invention was excluded as a method for doing business, being much more about how the gaming system was set up by a casino operator to encourage particular patterns of play than it was about providing a tool or an end product. He also held the invention excluded as a computer program finding no technical contribution over and above a programmed computer; in his view the ‘little man’ test in CFPH broke down in a case like this where the little man supposedly operating the controls could not be brought into play without defeating the purpose of the invention.

Judges:

Mr R C Kennell

Citations:

[2006] UKIntelP o29306, GB 0427297.7

Links:

Bailii

Statutes:

Patents Act 1977 1(2) 2(3)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454826

Windows “R” Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed
Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed
The applicant in these proceedings is the owner of a number of registered marks (UK and CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc in a range of classes. It also claimed extensive user of its marks, particularly TOYS ‘R’ US, but the evidence filed to support this claim was not well focused. In its evidence it also provided brief details of a number of disputes where a decision had been in its favour.
In these proceedings the registered proprietor did not respond to the filing of the application for invalidity.
Under Section 5(2)(b) the Hearing Officer accepted that there was some similarity between the respective marks because of the presence of the element ‘R’US but he was unable to find any goods of services within the applicant’s specifications which were identical or similar to the building elements in the registered proprietor’s Class 19 registration. He, therefore, went on to find that the applicant failed on this ground.
As regards the ground under Section 5(3) the Hearing Officer noted that the applicant had supplied very limited information about the extent of its reputation in the UK. However, even if he accepted that it had the necessary reputation in its mark TOYS’R’US, which he knew was likely to be the case from his own knowledge, he considered that there were considerable differences between the respective marks and bearing in mind the differences in the respective goods, he did not see that there was any likelihood that the registered proprietor would gain an unfair advantage or that there would be any detriment to the reputation of the applicant’s mark. The applicant thus failed on this ground.
The applicant also failed on the grounds under Sections 5(4)(a) and 56(2) because the Hearing Officer was of the view that its case was no stronger in respect of these grounds as compared to the other grounds dealt with above.

Judges:

Mrs J Pike

Citations:

[2006] UKIntelP o22406

Links:

Bailii

Statutes:

Trade Marks Act 1994 5(2)(b)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454824

General Dynamics Decisions Systems Inc, Paul Sharrit, Edoardo Campini and Curtis L Cornils (Patent): IPO 1 Aug 2006

IPO As a result of an uncontested application filed under section 13(1) by General Dynamics Systems Inc, it was found that Curtis L Cornils should also be mentioned as a joint inventor in granted patent EP (UK) 1080541 and directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent for the invention.

Citations:

[2006] UKIntelP o21306

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454797

Schlumberger Holdings Limited (Patent): IPO 7 Jul 2006

The application was directed to a method of operating a perforating gun in a subterranean well, in which the shaped charges in the gun extended only partially around the longitudinal axis of the gun and the gun was oriented to direct the charges away from a water barrier between the gun and the well casing. The hearing officer upheld the examiners objection that the invention was obvious in relation to two documents showing similar arrangements, but with no clear indication that water was present. In the light of three further documents found by the examiner after hearing, the hearing officer further held that the objection would not be met by the applicants proposal to restrict the claims to the use of a gravity-operated swiveling mechanism to orient the gun. Each of the further documents, although again not clearly indicating that water was present, showed the use of such a swiveling mechanism to orient the shaped charges downward. The hearing officer gave the applicant a period of two months to amend.

Citations:

[2006] UKIntelP o18506

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 14 October 2022; Ref: scu.454786

IGT (Patent) O/211/06: IPO 27 Jul 2006

IPO Excluded fields (refused), Inventive step – The four applications all concerned gaming machines typically for use in arcades, in which there was a main game and a bonus game. The specific embodiments differed between the applications, but in all cases the inventions concerned the switching between the main game and bonus game and/or what happens in the bonus game. A central question was whether the ‘rules’ of the game are strictly limited to what the player has to do to play the game (e.g. push buttons) or whether rules can be embodied in the operation of the system itself. It was decided that where the programmed responses of the system are an integral part of the game play, this lies in the excluded field of schemes, rules or methods for playing games. In one case (GB0411822.0) an additional objection of lack of inventive step was not upheld.

Judges:

Mr A C Howard

Citations:

[2006] UKIntelP o21106, O/211/06

Links:

Bailii

Statutes:

Patents Act 1977 1(1) 1(2)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454774

Alexander F Ritchie v Envireneer Marine Cranes Limited (Formally Tsi (Crane) Limited) (Patent): IPO 8 Aug 2006

IPO Mr Ritchie devised the invention, a lifting device for use in the offshore industry, while he was employed by Offshore Crane Engineering (OCE). In recognition that this was outside his normal duties OCE agreed to reward Mr Ritchie by paying him a royalty on sales of the invention. OCE however went into liquidation and its assets were bought by TSI (Crane) Limited (TSI). Mr Ritchie claimed that a clause in his agreement with OCE was triggered by OCE entering liquidation and that resulted in the patent rights being transferred to him. It was found firstly that OCE as Mr Ritchie’ s employer was initially entitled to the invention; that Mr Ritchie’s agreement with OCE had not transferred the patent rights to him and that therefore TSI now known as Envireneer is entitled to the invention. It was also noted that even if the agreement had transferred the patent rights to Mr Ritchie then his failure to notify the comptroller of the transfer in ownership would have meant that TSI’s later assignment, which was notified to the comptroller, would have prevailed.

Citations:

O/220/06, [2006] UKIntelP o22006

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454791

Knowledge Support Systems Limited (Patent): IPO 21 Jul 2006

IPO The application relates to a computer for generating a model of the relationship between the products sold for example by a supermarket, the model then being used to create a pricing structure. However, because of the large number of products and relationships involved, it is difficult to generate an accurate model using widely available computing power. The invention seeks to overcome this problem by modelling only a limited set of the most significant products and their inter-relationships. This is achieved by nominating category flag products, which are regarded as the most significant by the retailer and which are likely to affect the demand and price of products in a particular category. A simplified model is then generated by modelling only the relationship between products in the same category and those nominated as category flag products.
In refusing the application, the hearing officer concluded that the invention was nothing more than a program for instructing a computer to process information regarding the relationship between retail products in a non-technical manner. Whilst the model could be generated more quickly and the processing speed enhanced this was achieved by modelling less data, not by any technical means which might otherwise have saved it from exclusion. The hearing officer went on to consider whether the invention related to a mathematical method and concluded that in the absence of any technical application or contribution, that the invention was excluded as such.

Judges:

Mr P Slater

Citations:

[2006] UKIntelP o20206, GB0114557.2

Links:

Bailii

Statutes:

Petents Act 1977 1(2)(c)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454776

British Telecommunications Plc (Patent): IPO 3 Jul 2006

IPO The claimed invention was a method of visually representing the state of a communications network on a display, using (in combination) an expandable/collapsible tree structure, and indication gauges to represent the state of selected components of the network.
The Hearing Officer used the test for patentability as set out RiM v Inpro, ie. ‘Taking the claims correctly construed, what does the claimed invention contribute to the art outside excluded subject matter?’ The contribution to the art was a way of visually representing data to the eye; one that enabled the human mind to assimilate the content of the data more quickly.. Although in the specific embodiments claimed, the data represented the state of a communications network, this did not impart any technical advantage to the invention. The only contribution to the art fell entirely within excluded subject matter i.e. presentation of information. Although a computer program was used, there was no contribution to the art in the field of computer programs.
The invention was also found to lack an inventive step.

Judges:

Mr S Probert

Citations:

[2006] UKIntelP o18406, O/184/06

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454760

Bruker Sa (Patent): IPO 21 Jul 2006

IPO In early January 2002, Bruker SA assigned the patent in suit to Hightechcare SA. The patent was to be paid for in instalments ending on 31st December 2003, so Bruker insisted on keeping the files until that date. The assignment contained no arrangements as to who should renew the patent in the period until the payments were completed. This led to confusion, as Bruker assumed Hightechcare would see to renewal and vice versa. Hightechcare was a small business effectively run at the time by Monsieur Phelip, a former employee of Bruker, who was aware of the fact that Bruker had a well established and well run Patent Department. For the 10th year renewal at issue, the official UK Patent Office reminder letter (PREN 5 EP) was sent by their French Patent Attorneys to Bruker. Normally these would be forwarded to the Patent Dept. for renewal, but on this occasion they were intercepted by M. Bazille, CEO at Bruker. He was aware of the assignment to Hightechcare and forwarded the PREN 5 EP to M. Phelip with no further explanation, believing Hightechcare would pay the renewal fees. M. Phelip could not read English, but believing Bruker was to pay the fees, assumed this was merely confirmation of the renewal. The Hearing Officer (HO) accepted that although it was Hightechcare’s responsibility to find out the true position regarding renewals, they were also entitled to rely of the PREN 5 EP reminders being only a small business. If Bruker had not circumvented their normal internal arrangements by intercepting the reminders, M. Phelip would have been notified of the need to renew by the Bruker Patent Dept. and would have paid the fees. He had been deprived of the opportunity to correct his mistaken assumption that Bruker would pay. The HO also found that the 8th year renewal on a co-assigned patent (EP0697600) had been paid by Bruker in the period they had retained the files after the assignment, perhaps adding to Hightechcare’s assumption that they would pay this renewal too. The restoration was allowed.

Judges:

Mr G J Rose’Meyer

Citations:

[2006] UKIntelP o20406

Links:

Bailii

Statutes:

Patents Act 1977 28(3)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454762

Dr Anthony Maddison (Patent): IPO 7 Jun 2006

IPO The proprietor was self-employed and had office space at his home containing his patent files. He had instructed the renewals agency CPA to send him renewal reminder letters. Their records showed that four reminders had been sent to the proprietors address, but the proprietor could find no record of the first three of these. Neither could he find a reminder letter which had been sent from his patent agent. He contended that postal problems might account for the failure of these reminders to arrive at his address.
The fourth CPA reminder had been found, but too late to pay the renewal fee. It had been mis-filed by the proprietors partner, who had been enlisted to help with clerical matters during a period of significant disruption caused by building work at the proprietors home. The proprietor had given no specific training to his partner, but they had had a general discussion about what she could do to help him.
On the issue of the missing reminders, the hearing officer concluded on the evidence that on the balance of probabilities postal problems could not explain the absence of all three missing CPA reminders and the agents reminder letter. Thus at least some of the reminders must have arrived at the proprietors home but been lost or otherwise not dealt with. This did not demonstrate that reasonable care had been taken. He also held that it did not demonstrate reasonable care to expect the proprietors partner to distinguish between various similarly-named files and inventions without some specific training or instruction. The application for restoration was therefore refused.

Citations:

[2006] UKIntelP o14506

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454733

Ecoblock (Trade Mark: Opposition): IPO 7 Jun 2006

IPO Trade Mark: Opposition – Appeal to the Appointed Person against the decision of the Registrar’s Hearing Officer in Opposition Proceedings.
Result – Appeal dismissed.
Points Of Interest
Registrar has the power to allow restriction of specification after refusal since an appeal suspends the Hearing Officer’s decision.
See also BL O/221/05.
Summary
At first instance, see BL O/221/05, the Hearing Officer had upheld the opposition. The applicant appealed to the Appointed Person, contending that the Hearing Officer had erred in his findings under goodwill, misrepresentation and damage.
Having reviewed the Hearing Officer’s decision in the light of the submissions made, however, the Appointed Person detected no error of principle and he upheld the decision.

Citations:

[2006] UKIntelP o17806

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454734