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These cases are from the lawindexpro database. They are now being transferred to the swarb.co.uk website in a better form. As a case is published there, an entry here will link to it. The swarb.co.uk site includes many later cases.  














Intellectual Property - From: 1990 To: 1990

This page lists 15 cases, and was prepared on 08 August 2015.


 
 IBM Corporation/Data processor network; EPO 1990 - [1990] EPOR 91; 06/83
 
Hosokawa Micron International Inc -v- Fortune (1990) 26 FCR 393; (1990) 97 ALR 615; (1990) 19 IPR 531; [1991] AIPC 37 226
1990

Lockhart, Northrop JJ
Intellectual Property, Commonwealth
(Federal Court of Australia) A design which is dictated solely by function is not a "design" within the meaning of section 4 of the Designs Act 1906. Lockhart J said that: "The essence of the registrability of a design is that it has an element of novelty having regard to the nature of the article and the state of the prior art. The cases mentioned earlier speak eloquently of this and Le May v Welch is a notable example." and "In my opinion Utilux and Interlego provide strong support for the view that features of a design are dictated solely by the function which the article has to perform, not when the article's function for successful performance requires that it be made in that shape and in no other, but when the relevant features of the shape are brought about solely by or are attributable only to the function which the article in that shape is to perform even if the same function could be performed by an article of different shape."
1 Citers


 
Attorney General -v- Barker [1990] 3 All ER 257
1990
CA
Lord Donaldson of Lymington MR
Intellectual Property, Employment
A claim was made for an injunction to enforce an express covenant in a contract of employment by a member of the Royal Household by which he undertook (amongst other things) not to publish any information concerning a member of the family which came to his knowledge during his employment. Held: Lord Donaldson MR said: "It is, in my judgment, very important to notice that this is not a case such as Spycatcher (see eg A-G v Guardian Newspapers Ltd (No 2) . . [1990] 1 AC 109), where the Attorney General is relying on a duty of confidentiality. His claim is based on a breach of contract, the consideration for the covenant by Mr Barker (that he would not publish matter true or false concerning his experiences in the royal household) being the agreement by those concerned to take him on the staff of the royal household and to pay him wages or a salary. It is not in principle in any way different from the case of someone who enters into a contract with a newspaper whereby the person concerned undertakes, in consideration of a money payment, not to give their story to anyone else for publication. The newspaper in those circumstances would be likely to publish, but they would not be obliged to publish. That is an exact analogy here: the royal household would be entitled to authorise publication if they wished but equally are fully entitled under the contract to refuse to allow it. . . Exactly the same considerations would apply if the employer had been an ordinary citizen. It is a simple case of someone who has entered into a negative covenant for a consideration where the covenant is not limited territorially and is not limited in time. As Nourse LJ pointed out in argument, in such circumstances the courts habitually enforce the covenant provided only that the covenant itself cannot be attacked for obscurity, illegality or on public policy grounds such as that it is in restraint of trade."
1 Cites

1 Citers


 
W -v- Edgell [1990] 1 Ch 359; [1990] 2 WLR 471
1990
CA
Bingham LJ
Intellectual Property, Health Professions
The plaintiff had been confined to a mental hospital after killing several people by shooting. He complained that when he was to be considered for release, his psychiatrist, the defendant had broken his duty of confidence by revealing his concerns about the plaintiff despite the plaintiff have withdrawn his application to a non-secure unit. Held: A doctor's duty of confidence to his patient and the need to preserve general reliance upon that confidence could be overriden where there was a real risk of violence to others. The maintenance of a duty of confidence between doctor and patient was not a matter of private, but of public interest, and that public interest was to balanced against a similar interest in protecting members of the public against acts of violence.
Bingham LJ said: "Only the most compelling circumstances could justify a doctor in acting in a way which would injure the immediate interests of his patient, as the patient perceived them, without obtaining his consent."
1 Citers


 
Wang Laboratories Inc's Application [1991] RPC 463
1990
ChD
Adous J
Intellectual Property
The applicant sought to patent an expert system embodied in a computer program for storing information in a way which allowed particular access. Held: "Before turning to the claims, I must deal with a submission of Mr Burkill, who appeared for the applicant. He submitted that the words "a scheme, rule or method for performing a mental act" in section 1(2)(c) only excluded schemes, rules or methods which were intended to be performed and were capable of being performed in the human mind. He submitted that the word "for" introduced a subjective element. Thus, as claim l had as its basis steps which were not intended to be carried out by a human, in that the human mind would not go through those steps, the basis of the claim was not excluded matter.
The word "for" does not, in my view, introduce a subjective element. It means "for the purposes of". The fact that the scheme, rule or method is part of a computer program and is therefore converted into steps which are suitable for use by a person operating the computer does not matter. What is excluded from being patented is a scheme, rule or method for performing a mental act, whatever mental steps or process is involved. As I pointed out in Gale's Application , it is a question of fact to be decided in each case whether the claimed invention is more than a claim to an invention for a disqualified matter. Just as a claim to a disc containing a program can be in fact a claim to an invention for a computer program, so can a claim to steps leading to an answer be a claim to an invention for a performing a mental act. The method remains a method for performing a mental act, whether a computer is used or not. Thus a method of solving a problem, such as advising a person whether he has acted tortiously, can be set out on paper, or incorporated into a computer program. The purpose is the same, to enable advice to be given, which appears to me to be a mental act. Further, the result will be the advice which comes from performance of a mental act. The method may well be different when a computer is used, but to my mind it still remains a method for performing a mental act, whether or not the computer program adopts steps that would not ordinarily be used by the human mind."
Patents Act 1977 1(2)(c)
1 Citers



 
 Gale's Application; ChD 1990 - [1991] RPC 305
 
Filhol Ltd -v- Fairfax (Dental Equipment) Ltd [1990] RPC 293
1990


Intellectual Property, Litigation Practice
The defendant had lost an action on the design of dental pins used to create foundations for false teeth. He wanted to get onto the market with a product which was designed so as to avoid the construction of the patent claims found by both the High Court and the Court of Appeal. The patentee refused to acknowledge that the new product was outside the patent claims. Held: An injunction was granted and proceedings had to be brought for a declaration of non-infringement. Those proceedings were successful.
1 Citers


 
De Garis -v- Nevill Jeffress Pidler Pty Ltd (1990) 18 IPR 292
1990

Beaumont J
Commonwealth, Intellectual Property
(High Court of Australia) The court considered the defence of criticism and review to a charge of coyright infringement. Held: The court should start with a dictionary definition.
1 Citers



 
 Tyburn Productions Ltd -v- Conan Doyle; ChD 1990 - [1991] Ch 75; [1990] 1 All ER 909; [1990] 3 WLR 167; (1990) 19 IPR 455

 
 Johnstone Safety Ltd -v- Peter Cook (Int ) plc; 1990 - [1990] FSR 161

 
 Billhofer Maschinenfabrik GmbH -v- TH Dixon & Co Ltd; 1990 - [1990] FSR 105
 
Express Newspapers -v- News (UK) plc [1990] 1 WLR 1320; Times, 01 January 1990; [1990] FSR 359; [1990] Ch D 1320
1990

Sir Nicolas Browne-Wilkinson V-C
Estoppel, Intellectual Property
If summary judgment is given to one party on his claim, it must also be given on a counterclaim made on the same basis by the defendant. The principle that a party to litigation cannot "approbate and reprobate" (or “blow hot and cold”) can curtail a party’s theoretical freedom to plead wholly inconsistent cases as alternatives. It is imported into English law from Scotland, and although it covers much the same ground as elective waiver and waiver by estoppel, it may be rather more flexible.
As to the Lion Laboratories case: "In my judgment, that decision has no application to the present case. Where that type of defence is put forward it permits the publication of secret information which it is in the public interest should be known. It does not apply to information of the kind which it may be of interest to the public to know. Moreover, the basis of the defence being that the public needs to know, the whole basis for the defence goes once such information has been disclosed to all, i.e. by one paper. There is no further requirement of public interest that another paper should be able to repeat the revelation of that information."
1 Cites

1 Citers



 
 Reckitt & Coleman Properties Ltd -v- Borden Inc; HL 1990 - [1990] 1 WLR 491; [1990] RPC 341; [1990] UKHL 12

 
 Bowden Controls Ltd -v- Acco Cable Controls Ltd; ChD 1990 - [1990] RPC 427
 
Marcel -v- Commissioner of Police for the Metropolis [1991] 1 All ER 845; [1991] 2 WLR 1118; (1990) 20 IPR 532
1990

Browne-Wilkinson V-C J
Police, Intellectual Property
Documents had been taken by the defendant's officers in the course of an investigation into an alleged fraud. The plaintiff now sought their release for the use in civil proceedings so as to prevent his opponent misleading the court. Held: The claim failed. Since the police were authorised to seize, retain and use the documents only for public purposes related to the investigation and prosecution of crime and the return of stolen property to the true owner, they were not entitled to disclose documents seized under the 1984 Act to a third party for use in civil proceedings to protect his legal rights.
The public interest in ensuring that the documents were used solely for the public purposes for which the power of seizure was conferred was inviolate and outweighed the public interest in ensuring that in the civil proceedings all relevant information should be available to the court.
Where the police or any other public authority used compulsory powers to obtain information and documents from a citizen, that information and those documents were received solely for those purposes and equity would impose on the public authority a duty not to disclose them to third parties except by order of the court.
Police and Criminal Evidence Act 1984

 
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