Category: Intellectual Property

Asi Solutions Plc v Nu Phalt Limited (Patent): IPO 27 Jun 2006

IPO The decision addresses the issue of whether or not it is appropriate in this particular case to depart from the comptroller’s published scale in making an award of costs. ASI identified four reasons why it believed the behaviour of NuPhalt caused it to incur unreasonable additional cost. These were that they maintained a case that was bound to fail; that their behaviour was an abuse of process; that their general behaviour caused ASI unnecessary expense and that they failed to settle. It was held that there was no basis in any of these to justify a cost award off the published scale.

Judges:

Mr P Back

Citations:

[2006] UKIntelP o15406, GB 2344369

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454717

Maxwell Phillips (Patent): IPO 26 May 2006

IPO The application which relates to a computer aided method of composing or inventing music was refused as a method of performing a mental act. The application discloses an alleged new way of graphically depicting the relationship between melody and harmony in a piece of music. CFPH followed.

Judges:

Mr P Thorpe

Citations:

[2006] UKIntelP o13306, O/133/06

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454708

Acres Gaming Incorporated (Patent): IPO 3 May 2006

ICO The application related to a networked gaming system which changed the game content and behaviour based on recorded data about players, thus allowing a casino operator to tailor the experience to an individual. Using the approach in CFPH LLP’s Appn [2005] EWHC 1589, it was not disputed that any advance lay in the feedback to the gaming terminal. However, refusing the application, the hearing officer did not accept the applicants argument that this was an advance in an apparatus feature (the feedback mechanism): he considered that argument to concentrate on form rather than substance, and that the advance was essentially in the way a game was played and the instructions to be fed in to enable this. As to whether the invention related to a ‘scheme, rule or method’, the hearing officer considered the advance to lie in a method of playing a game as such, even though the manner of playing it was determined by someone other than the players or constrained by means over which they had no control. The hearing officer accepted that the internet lottery game in Shopalotto.Com Ltd’s Appn [2005] EWHC 2416 did not turn on the games exclusion, but did not think that had a bearing on his decision.
In view of the subsequent decision in Macrossan’s Appn [2006] EWHC 705, the hearing officer made no decision on whether the invention was also excluded as a business method. An objection that the invention related to a computer program had been withdrawn before the hearing and the hearing officer therefore made no decision whether the invention was also excluded for this reason.

Judges:

Mr R C Kennell

Citations:

[2006] UKIntelP o11206, GB 0308224.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454695

Overture Services Inc (Patent) (1): IPO 23 Mar 2006

IPO Excluded fields (refused) – The invention relates to a method for helping an advertiser or other information providers find the most relevant search terms for their website. This was held to be a method of doing business and a computer program. (CFPH LLC’s Application [2006] RPC 5 followed.)

Judges:

Mr P Thorpe

Citations:

[2006] UKIntelP o08106

Links:

Bailii

Citing:

Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 October 2022; Ref: scu.454664

Overture Services Inc (Patent) (2): IPO 23 Mar 2006

IPO Excluded fields (refused) – The invention relates to an account monitoring system which allows a network based search engine provider to provide account information to various advertisers in order to prevent overcharging and taking into account fraudulent charges. This was held to be a method of doing business and a computer program. (CFPH LLC’s Application [2006] RPC 5 followed.)

Judges:

Mr P Thorpe

Citations:

[2006] UKIntelP o08006, GB 0218131.1

Links:

Bailii

Citing:

Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 October 2022; Ref: scu.454663

Cambridge Consultants Limited, Sewell, Jones and Luffman (Patent): IPO 9 Mar 2006

IPO Robert Jones and Patrick Edward Luffman both filed applications under section 13(1). The applications were subsequently consolidated and proceeded as uncontested. The comptroller found that Robert Jones and Patrick Edward Luffman should both be mentioned as additional joint inventors in granted patent EP (UK) 1058879. The comptroller also directed that an addendum slip mentioning them as joint inventors be prepared for the granted patent for the invention.

Citations:

[2006] UKIntelP o06106, O/061/06

Links:

Bailii

Intellectual Property

Updated: 14 October 2022; Ref: scu.454646

Nigel Melling v William Butler David Birkett (Patent): IPO 28 Mar 2006

The Claimant withdrew his reference under Sections 13 and 37 and the Defendant asked for an award of costs on an ‘exemplary basis’. A decision on this issues was made on the papers and the Hearing Officer awarded the Defendants the sum of andpound;500 to be paid by the Claimant.

Judges:

Mr P Back

Citations:

[2006] UKIntelP o08806, GB 2383533 and WO/0215981

Links:

Bailii

Statutes:

Patents Act 1977 13(1)(3) 37

Jurisdiction:

England and Wales

Intellectual Property, Costs

Updated: 14 October 2022; Ref: scu.454659

Overture Services Inc (Patent) (3): IPO 23 Mar 2006

IPO Excluded fields (refused) – The invention relates to a method whereby the owner of a search listing is automatically informed if certain conditions pertaining to his listing, for example where the listing appears in a search list, change and if so what action might be taken to reverse any change. This was held to be a method of doing business and a computer program. (CFPH LLC’s Application [2006] RPC 5 followed.)

Judges:

Mr P Thorpe

Citations:

[2006] UKIntelP o07906, GB 0222326.1

Links:

Bailii

Citing:

Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 October 2022; Ref: scu.454662

Overture Services Inc (Patent) (4): IPO 23 Mar 2006

IPO The invention relates to a method for enabling information providers using a computer network such as the internet to influence the position of a search listing within a search result list generated by an internet search engine. This was held to be a method of doing business, a computer program and a mathematical method. (CFPH LLC’s Application [2006] RPC 5 followed.)

Judges:

Mr P Thorpe

Citations:

[2006] UKIntelP o07806, GB 0218130.3

Links:

Bailii

Citing:

Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 14 October 2022; Ref: scu.454661

Archibald Kenrick Sons Limited v Laird Security Hardware Limited: IPO 15 Mar 2006

IPO In section 27 opposition proceedings, the opponent (Laird Security Hardware Limited) argued that the application to amend should be refused on the grounds that it contravenes section 76 in that it introduces additional matter; that it contravenes section 14 in that the claims as amended are not clear; and that it does not rectify the stated defect in that the invention is not novel and inventive over GB 2217770 and EP 0411271.
The hearing officer found that the amendments did not contravene sections 14 and 76, but refused the amendment on the grounds that claims 1 and 2 (at least) lack novelty over EP 0411273.

Judges:

Mr D J Barford

Citations:

[2006] UKIntelP o06706, O/067/06

Links:

Bailii

Statutes:

Patents Act 1977

Intellectual Property

Updated: 14 October 2022; Ref: scu.454638

Samuel Abekah-Mensah (Patent): IPO 1 Feb 2006

The applicant failed to respond to an examination report under section 18(3) of the Act, by the final date specified in the report for reply. He did not communicate with the Office at all until a letter was sent to him some 18 months after the final date for reply warning that the end of the Rule 34 period was approaching and that it was intended to treat the application as refused. He then contacted the Office requesting that the application be reactivated. He gave as reasons for failing to reply that he had been disappointed with the examination report (which indicated that the invention was substantially anticipated), that he had latterly received advice that it might nevertheless be possible to formulate patentable claims, that he had been concentrating on the prosecution of a parallel US patent application so had not pursued the UK one, and that he had become unemployed (six months after the final date to reply). The hearing officer found that these reasons were not sufficient to justify exercise of discretion to allow the application to proceed, and he refused the application.

Judges:

Mr P Marchant

Citations:

[2006] UKIntelP o03606, GB0114888.1

Links:

Bailii

Statutes:

Patents Act 1977 18(3)

Intellectual Property

Updated: 14 October 2022; Ref: scu.454627