Category: Intellectual Property

Secretary of State for Defence v Young and Chatwin (Patent): IPO 12 Feb 2001

PO Having been working on pattern recognition correlators at a university, Dr Y then took up employment with the claimant where he continued such work. However, he left the claimant after just over a year and went back to the university. The patent application in suit, which is concerned with such correlators, was filed by Dr Y and a university colleague two years later.
It was common ground that some aspects of the invention had been conceived by Dr Y before he took up employment with the claimant and that the whole invention had been made at latest by the time Dr Y left that employment. The issue was whether the use of two particular features was conceived before the period of employment – in which case the rights in them belonged to the patent applicants by virtue of section 7 – or during that period – in which case the rights belonged to the claimant by virtue of section 39. The hearing officer concluded from the evidence that the first had been conceived by Dr Y beforehand but the second had not. He then gave the parties an opportunity to agree a suitable order to reflect this finding, having first commented in general terms on the relief that each party had sought.
The hearing officer criticised the unnecessary verbosity of the evidence and extent to which argument and evidence had been muddled. Even though none of the evidence was tested by cross examination, the hearing officer was not prepared to accepted blindly the assertions made by the various deponents because some were not credible and in any case there were conflicts between them. Accordingly, he relied largely on the evidence afforded by the contemporary documents that had been exhibited. He rejected an argument from the claimant that the burden of proof shifted once the claimant had shown he knew about the whole of the invention before Dr Ys employment ceased.

Citations:

O/070/01, [2001] UKIntelP o07001

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454135

Munday v RPL Industries Pty Ltd (Patent): IPO 14 Feb 2001

Entitlement, Inventorship – After hearing evidence and argument on the matter, including cross-examination, the Hearing Officer found that Russell Long was the deviser of the concept of a padlock in which the body has at least at one end a formation which progressively reduces in cross-sectional dimension (the so-called ‘conical top’), and accordingly that entitlement in this concept belonged to the defendant, RPL. He also noted that it was not in dispute that the concept of using a circlip to retain an outer body part of a padlock rotatably on an inner body part was devised by the claimant, Richard Munday, and that he is entitled to it. Costs were awarded in favour of RPL.

Judges:

Mr S N Dennehey

Citations:

O/074/01, O/074/01, [2001] UKIntelP o07401

Links:

PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454133

Liberty Liquors (Trade Mark: Revocation): IPO 13 Feb 2001

The applicants, having been granted an extension of time of 3 months in which to file evidence in support under Rule 31(4), then sought a further 3 months extension which the proprietors had previously indicated would be vigorously contested. This further request having been refused by the Registry, the matter came to be considered at an interlocutory hearing where the Hearing Officer upheld that refusal and deemed the application withdrawn in accordance with Rule 31(5). In his statement of reasons for that decision the Hearing Officer relied on the usual case law to support his finding that the applicants had not shown adequate reasons to justify further indulgence and that their application should accordingly be deemed withdrawn.

Judges:

Mr J Parker

Citations:

[2001] UKIntelP o07201

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454125

Clive Vincent Mcnally (Patent): IPO 14 Feb 2001

IPO The applicant, who was unassisted, did not reply within the specified period to a combined search and examination report issued on 15 January 1996. He did not contact the Patent Office until 4 July 2000, after the period prescribed by rule 34 for putting the application in order had expired on 8 May 2000. (The Office had written on 23 February 2000 warning of the imminent expiry of that period.)
The applicant argued that he had been away in Cyprus and was unaware of the expiry of the deadline until it was brought to his attention, his mail not having been forwarded due to the deliberate actions of his ex-partner. In a decision on the papers, the hearing officer refused the application because adequate reasons had not been given to justify such a long extension of the period specified for reply to the report under section 18(3), the applicant having declined to amplify the brief and incomplete details in the papers on file. It was not therefore necessary to decide whether he had a continuing underlying intention to proceed such as would justify the extension of the rule 34 period which he had requested under rule 110(4): the hearing officer would however have been prepared to give the benefit of any doubt on this.

Judges:

Mr R Kennell

Citations:

O/073/01, [2001] UKIntelP o07301, GB9522833 4

Links:

PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454116

John Edward Rose (Patent): IPO 14 Feb 2001

IPO A method of stimulating performance in which an externally generated stimulus under the control of the user was used to recall performance visualised under hypnosis was held to fall within ‘among other things’ excluded from patentability by section 1(2). Following the reasoning of Pension Benefit Systems Partnership [2000] T 0931/95, even though the method related to an excluded invention, an apparatus for carrying out the method was an invention within the meaning of section 1(1). However, given that the technical features of the apparatus were functionally defined with reference to the non-patentable method and the method provided the only driving force for bringing together the individually known components of the claimed combination, the apparatus was held not to involve an inventive step.

Judges:

Mr D L Wood

Citations:

O/075/01, [2001] UKIntelP o07501, GB9900566.2

Links:

PO, PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454121

Jean-Francois Meunier (Patent): IPO 8 Jan 2001

IPO An international patent application under the PCT designated, among others, GB and European patent (GB). At the normal time for entry into the national and regional phases the applicant decided to file for a European patent only. The applicants intention was to obtain patent protection in the UK by designating GB in the European patent application. However, by mistake GB was not designated and this mistake not spotted until after the grant of the European patent. The applicant then requested an extension of the period prescribed for the international application to enter the UK national phase. The hearing officer accepted that there had always been an intention to obtain patent protection in the UK but rejected the request because when the applicant had had the opportunity, he had decided not to follow the UK national route. This original decision had not been influenced by any unforeseen circumstances and the request for late entry into the national phase merely represented a change of mind (Heatex Group Ltds Application [1995] RPC 546 followed). The hearing officer also found that refusal of the request for late entry did not conflict with the UKs obligations under the PCT.

Judges:

Mr R Walker

Citations:

WO 95/01045, O/013/01, [2001] UKIntelP o01301

Links:

PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454105

Baker Hughes Incorporated v Halliburton Energy Services Inc (Patent): IPO 2 Jan 2001

IPO The registered proprietor sought to have a late-filed statutory declaration admitted in evidence in support of its applications for amendment and correction. In proceedings which had been running some time, the HO decided that the proprietor had not discharged the onus on it to demonstrate that the nature of the fresh evidence and the reasons why it had not been submitted in proper time justified the further delays its admission would cause. The statutory declaration in question was therefore not admitted.

Judges:

Mr S N Dennehey

Citations:

[2001] UKIntelP o00101, GB2291909, GB2302110

Links:

Bailii

Statutes:

Patents Act 1977 27 117

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454099

D Pearson Decalite Ltd v H A Quinn (Patent): IPO 29 Jan 2001

cw Inter Partes Decisions – Patents – A requested extension of time for filing evidence in chief was contested. The referrer filed five witness statements within the time period allowed, but requested an extension of two months on the grounds, inter alia, that one witness was working abroad. An extension of roughly five weeks was granted
PO Patents – Inter Partes Decisions

Judges:

Mr G Bridges

Citations:

O/044/01, [2001] UKIntelP o04401

Links:

PO, PO, Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.454103

T Sabanathan v Bradford Hospitals NHS Trust (Patent): IPO 25 Jan 2001

PO Patents – Inter Partes Decisions – An acknowledged inventor died. His widow applied for ownership as his successor in title. The hospital concerned did not contest the action. Having regard to the terms and conditions of his employment, it was found that research and making inventions accordingly were not a primary part his job description. Neither had he unambiguously transferred any rights in the invention to the hospital. In the lack of any counter-arguments from the hospital, ownership of the rights in the invention described in the GB application were transferred to his widow. Similarly, a declaration was made as regards her rights in any still live international application and European application.

Judges:

Mr G Bridges

Citations:

O/037/01, [2001] UKIntelP o03701

Links:

PO, PO, Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.454108

Peter J Gerber Opticians Ltd (Trade Mark: Opposition): IPO 18 Oct 2000

If a company is set up using a personal name and that person leaves the company, the company is entitled to carry on using the name in trade unless there have been contractual arrangements made in advance.
The opponent Mr Peter J Gerber had been involved in the setting up of a business which traded under the name PETER J GERBER OPTICIANS LTD (the mark) and owned one third of the shares in the Company. He resigned his directorship and sold his shares in the company in 1999.
Insofar as Section 3(3)(b) was concerned the Hearing Officer concluded that there was nothing inherent in the mark which would lead to deception or confusion and he dismissed that ground.
Under Section 3(6) the opponent had filed no evidence to show that the filing of the application was made in bad faith. He had been a principal in the Limited Company but as he had sold his shares and resigned his Directorship he was no longer involved in the business which had continued for some years. The Company was perfectly entitled to carry on trading under its existing name absent evidence of any contractual arrangements between the parties. Opposition failed.

Citations:

[2000] UKIntelP o39200

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 13 October 2022; Ref: scu.453983

Contra Vision Ltd v Clear Focus Imaging Inc (Patent): IPO 7 Nov 2000

IPO The HOs decision of 3 March 2000 ([2000] UKIntelP o07900) refused the request to amend the patent but invited the parties to comment on the proposal that the claimant should be allowed an opportunity to submit revised proposals for amendment. The respondent opposed that proposal. In a decision on the papers, the HO was not persuaded by the defendants view and made an appropriate order.

Judges:

Mr S N Dennehey

Citations:

[2000] UKIntelP o41200, O/412/00, GB216529C

Links:

Bailii

Intellectual Property

Updated: 13 October 2022; Ref: scu.453990