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Venner Shipley is proud to announce that it is opening a new office in Cambridge in October. This means that the firm will have two offices: a main office in London and a satellite office in Cambridge.
Cambridge is famous for its University, which boasts a long line of pioneering scientists and engineers including Newton, Darwin, Crick, Watson, Hawking and Whittle. Cambridge also lies at the heart of the region dubbed ‘Silicon Fen’, home to a high concentration of science and technology-based companies.
The new office is located in the north of the city, on the Cambridge Business Park. It is well placed to serve new and existing clients in and around Cambridge.
Venner Shipley has put together an experienced team for the new office.
Dr Pawel Piotrowicz, Dr Allie Elend and Dr Stephen Johnson are moving to Cambridge from our London office and will be joined by Dr Isla Furlong, who returns to the Wrm. The team has considerable expertise spanning the fields of chemistry, biotechnology, pharmaceuticals, advanced materials, electronics and computer software.
NEW MEMBER STATES OF THE EUROPEAN UNION
On 1 January 2007, Bulgaria and Romania will join the European Union.
At that point, existing Community Trade Marks (CTMs) will automatically extend to include Bulgaria and Romania. Similarly, Community designs protected or applied for prior to the date of accession will be extended to the territory of those Member States in order to have equal effects throughout the Community without any need to make a separate application or pay fees.
However, the Office for Harmonisation in the Internal Market (OHIM) has taken precautions to safeguard the rights of owners of existing national rights in the new Member States. Any CTM applications filed in the period between
1 July 2006 and 31 December 2006 can be opposed based on earlier rights in Bulgaria and Romania and such earlier rights can be used to prevent use of the extended CTM in these territories.
It is important to note that any CTM applications filed before 1 July 2006 will be exempt from opposition and any existing CTM registrations will be exempt from invalidity proceedings, on the basis of a conflict with an earlier conflicting registered Bulgarian or Romanian right. However the owner of such an earlier national right would still be able to take action to prevent use of such a CTM.
OHIM has also confirmed that CTMs filed before 1 January 2007, will not be examined on the basis of being descriptive, non-distinctive, generic, deceptive or contrary to public policy and morality in those countries.
Edmund Harrison
STUART GEARY
Many of our clients will be aware that our partner, Stuart Geary, unexpectedly suffered a stroke in July 2005 which left him paralysed on one side and unable to speak. However we are pleased to learn that he is fighting back and can now walk with the aid of a stick and has started to regain his speech. Stuart is with his family Sarah his wife and their children. All at Venner Shipley wish him a full and complete recovery.
UNREGISTERED COMMUNITY DESIGN RIGHT:MUST FIRST DISCLOSURE OCCUR WITHIN THE EU?
Unregistered Community Design Right (UCDR) provides a 3-year period of protection for designs within the EU from the date of first disclosure of the design.
Date of Commencement of UCDR
According to the Community Design Regulation (CDR), Unregistered Community Design protection commences from the ‘date on which the design was first made available to the public within the Community’ i.e. ‘if it has been disclosedÉ such that Éthese events could reasonably have become known to circles specialised in the sector concerned, within
the Community’.
The above wording has raised questions as to whether UCDR would be triggered by any disclosure that became known in the Community, whether or not the disclosure itself was made within the Community. The plain wording of the Regulation would suggest that the disclosure only needs to be known within the Community but not actually have occurred within it. Unfortunately, not all European language versions of the CDR are consistent on this matter, as the Danish version of the Regulation actually specifies that the disclosure must have taken place within the Community.
To try to resolve this issue a further article was introduced into the CDR in 2004 which states that ‘a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community Design.’
In spite of this, the question of whether a disclosure must physically occur within the Community for UCDR to commence is still open for debate. However, it would appear that the intention of the new Article is that UCDR will only come into existence as of the date of disclosure of the design within the boundaries of the Community.
The above conclusion has two consequences: firstly, a great deal of legal uncertainty will arise when trying to determine when first publication occurs within the Community, rather than when first global publication occurs (e.g. individuals may bring goods into the EU from, say, the US); secondly, it brings into question what effect a disclosure outside the Community will have on the novelty of a UCDR that commences based on a subsequent disclosure within the boundaries of the Community.
Novelty of UCDR
On the face of it, it may seem that disclosure of a design before UCDR commences would destroy the novelty of the design. However, the wording of the CDR which dictates how the novelty of a design is determined suggests otherwise because it states that a design is ‘new if no identical design has been made available to the publicÉ before the date on which the design for which protection is sought has first been made available to the public’.
In this context, a design is deemed to have been made available to the public if it has been disclosed before the date referred to in the quotes in the previous paragraph except where these events could not have become reasonably known within the Community.
However, as it is commonly accepted that virtually all disclosures will become known within the Community, the date at which novelty is assessed is the date the design is first disclosed anywhere, and so a design first disclosed by a designer outside the Community would not invalidate the novelty of an UCDR for the design commencing when the design is subsequently disclosed within the Community.
Conflicting German Decision
A decision in a regional German court came to a different conclusion. A design was first disclosed in the US in May 2002, then subsequently disclosed in the EU in October 2002. The court held that UCDR did not commence until October 2002 (consistent with the conclusion above) but that the May 2002 disclosure in the US rendered the UCDR lacking in novelty.
The German court stated that ‘a design is deemed novel if no identical design has been made available to the public prior to the date on which the design is first protected, i.e. made available to the public for the first time.’
This statement is not in accordance with the CDR which, as discussed above, does not mention the commencement date of UCDR as being relevant for the assessment of novelty.
Uncertain implication of the decision
Consistent with the apparent intention of the additional CDR article, the court dismissed the suggestion that the UCDR could have commenced with the US May 2002 disclosure, even though it may be ‘known to the circles specialised in the sector concerned, operating within the Community’. However, the court’s decision on novelty appears in conflict with the exact wording of the CDR.
The court’s decision implies that unless a design is first disclosed within the Community, then no UCDR can exist, since the non-Community disclosure will automatically render any subsequent UCDR not novel. However, it seems unlikely that this is the intention of the Commission regarding the purpose and function of UCDR and seems an overly dictatorial standpoint for the EU to assume over companies and designers. Even EU-based companies may well wish to first disclose their designs outside the EU, but in doing so, would lose valuable protection.
This issue will not be concluded for certain until a case reaches the European Court of Justice, or the Commission make a further clarifying amendment to the CDR.
Alex Brown
REGISTERED DESIGNS: CHANGES TO UK LAW
On 1 October 2006, the amendments to the UK Registered Designs Act 1949 come into force. At present, applications for registration are examined to see if they meet the requirements of novelty and individual character. The new law will exclude any examination thereby making the registration system easier and less costly to use.
A second major development is that the new application system will allow for any number of designs to be applied for under one single application, with a revised fee structure that reduces the cost per design as the total number of designs increases.
The changes bring the UK registered design system into line with the registered Community design system that enables a single registration to be obtained covering all the countries of the European Community.
The registered Community design system has proved to be very popular with clients and we have actively been filing and obtaining registered Community designs since the system came into being in April 2003. We welcome these changes to UK law which will enable applicants who only wish to seek protection in the UK to register their designs quickly and at minimum cost.
Ian Grey
COUNTERFEIT PRODUCTS SEIZED
We recently co-ordinated a massive seizure of counterfeit products on behalf of our client, Rico Skin Care Limited, who produce a range of skin care products under the Trade Mark RICO.
During 2005, Rico Skin Care discovered a number of counterfeit products marked with the Trade Mark RICO, which were being imported into a number of African and Middle Eastern countries.
Following our investigations, we discovered that a company based in the UK was largely responsible for the distribution of the counterfeits.
We duly contacted the local Trading Standards Office, and in conjunction with them and the police, a raid was made at a warehouse near Heathrow Airport, Trading Standards officers discovered over 30 crates of counterfeit RICO products, which they seized under the Criminal Provisions of the Trade Marks Act 1994 for subsequent destruction by Rico Skin Care.
We are delighted to have been able to help in such a dramatic and effective enforcement of our client’s Trade Mark rights which demonstrates the value of registering and maintaining Trade Marks.
Edmund Harrison
CARBON NEUTRAL IP SERVICES
Although Venner Shipley has been actively minimising the environmental impact of its business operations for some time now, some environmental footprint is inevitable. Venner Shipley has now taken a significant additional step in reducing our environmental footprint by offsetting our carbon emissions for the 2005-2006 financial year by funding sustainable energy projects through Climate Care, a not-for-profit organisation.
Paul Derry
EPO FILINGS CONTINUE TO INCREASE
In 2005, over 193,000 applications were filed at the European Patent Office. This represents an increase of around 7% on 2004. Current predictions also indicate that 200,000 applications will be filed in 2006.
The technical fields representing the highest level of patent filings were in medical technology (11.4% of the total), followed by electronic communications (10%) and data processing (6.7%). The biggest area of growth in 2005 was in vehicle technology (3.2%).
Of the 193,000 applications filed, the European patent validation procedure was initiated for around 128,000 applications.
The European Patent Office currently has a total staff of around 6000 and 3,600 of those are patent examiners.
Ian Grey
UK TRADE MARK REGISTRY RELATIVE GROUNDS FOR REFUSALAND THE WAY FORWARD
The UK Trade Mark Registry recently issued a consultation paper with a view to deciding whether or not earlier Trade Marks should continue to be raised as formal objections (otherwise known as ‘relative grounds for refusal’) against new Trade Mark applications. The Registry has analysed the responses and the conclusion has now been published.
Upon careful consideration, the Registry has decided to adopt the most popular choice. Therefore once an application has been filed, the Registry will complete a search for earlier Trade Marks but formal objections will no longer be raised. Instead, a copy of the search will be sent to the applicant, as well as each of the owners of the earlier Trade Marks shown in the search. This new procedure is likely to be much the same as is currently followed by the Community Trade Mark Office.
It is hoped that notifying the owners of the earlier rights will ensure that potential disputes are settled at the earliest possible stage thereby avoiding wasted investment in new marks.
One of the outcomes of this change is that it will become even more important to make searches prior to adopting and registering a new Trade Mark, and to be vigilant in monitoring potentially conflicting applications by using our Trade Mark watching service.
It is also possible that the change to the examination procedure will mean that the defence to infringement currently given under Section 11 (1) of the Trade Marks Act will no longer be available. Section 11 (1) currently states ‘a registered Trade Mark is not infringed by the use of another registered Trade Mark in relation to the goods or services for which the latter is registered.’ If this defence is not removed entirely, then obviously its effectiveness will be greatly reduced, as the automatic presumption of validity currently given to registered Trade Marks will likewise be reduced.
The Registry will now work on the relevant administrative and legislative changes that are required for this new procedure. This will also involve a number of internal Registry changes and it is expected that the new examination process will be active from October 2007.
We will provide a further update once we know the precise amendments that will be made to the UK Trade Marks Act, but if you have any questions on the proposed changes in the meantime then please contact us.
Edward Carstairs
UK RIGHTS OF CO-OWNERS IN A PATENT
Under uk practice, patents can be granted to co-owners, who need not necessarily be the inventors. Conventional wisdom was that the rights of co-owners in a UK patent were determined primarily by Section 36 of the UK Patents Act, which provides that each co-proprietor may exploit the patent themselves, but that no co-proprietor can grant a licence under the patent without the consent of the other co-proprietor.
However, in the case of Derek Hughes v Neil Paxman,(1) the Court of Appeal upheld a decision by the High Court to allow a patent co-owner to force another co-owner to grant a licence under the patent.
In his judgment, Lord Justice Jacob discussed the provisions of Section 36 and said that ‘this default position can produce very different commercial situations for different co-proprietors. For instance, one may be an individual with no manufacturing capacity or capital whereas the other may be a formidable industrial empire. In such a case the latter co-proprietor could happily exploit whereas the former could not. In another scenario neither co-proprietor may have the wherewithal to exploit the patent. Unless they can agree though it will be deadlock with the practical consequence that the patent cannot be exploited at all.’
Lord Justice Jacob turned to Section 37 of the Patents Act. This allows the Comptroller of the UK Patent Office to decide whether any rights under a patent should be transferred or granted to another person. This is primarily intended to deal with patent ownership disputes and provides that the Comptroller may grant a licence or other right under the patent. The co-owner of the patent in question, a Mr Paxman argued through his representatives that he was entitled to use Section 37 to seek a licence for exploitation of the patent by a third party. Lord Jacob agreed and said ‘I cannot imagine for a moment that Parliament could have intended it to be possible that exploitation of an invention could be frustrated by a deadlock situation. The whole point of the patent system was and is to encourage innovation and the exploitation of inventions.’
Thus, it was held that Mr Paxman was entitled to request grant of a licence to a third party before the Comptroller. The judge noted that ‘the Comptroller is compelled to act rationally, fairly and proportionately and have regard to all the circumstances of the case.’
Sometimes, co-inventors file a patent which is granted in their joint names, as co-owners. It is important that they understand fully their rights and obligations as co-owners because the patent can last for up to twenty years and their originally common objectives may diverge over time. Co-owners of patents should now note that not only can each co-owner exploit the patent without the consent of the other, but they can also ask the Comptroller to grant a licence to a third party without the consent of the other co-owner in certain circumstances to achieve a fair exploitation of the invention.
Matthew Read
1. [2006] EWCA Civ 818, 23 June 2006
VENNER SHIPLEY MAKES A SPLASH...
On Saturday 17 June 2006, the Chartered Institute of Patent Attorneys held its annual Dragon Boat Regatta at the prestigious Bisham Abbey Sports Centre in Marlow, one of the training grounds for Sven’s England World Cup team.
It was a gloriously sunny day with a large turnout of teams from the patent profession as well as other legal establishments. Venner Shipley battled it out through the heats all the way to the final. It was a close run race with adrenalin pumping, paddles frantically turning and water splashing (perhaps a little too much into the boat!), but sadly rowing victory was just out of reach and first and second place were snatched from our grasp.
Not to be disheartened by third place in the racing, the Venner Shipley team, dressed in full Baywatch® style outfits, united in strutting its stuff on the banks of the river Thames in a ‘beach run’ to the sound of the Baywatch® theme music I'll be readyÉ never you fearÉ, and came home with the best fancy dress award. A great result for the company’s first year in the competition!
Anna Reddish
THE DIVISIONALS SAGA
Under European patent practice, divisional applications are intended for situations where the claims of an application cover two or more inventive concepts and a lack of unity objection is raised. Protection for a first invention can be sought via the original case. Claims directed to the other invention(s) are deleted from the original case, but can be pursued via one or more divisional applications.
It has also become common practice to use divisional applications to hold open an applicant’s options. The two most common situations are, firstly, keeping an application pending so that it may be used to seek protection for whatever will prove to be valuable later on, and secondly, to seek protection for something slightly different from what was claimed in the parent case. Using divisional applications in this way has come from trying to follow US patenting strategies (where continuation and continuation-in-part applications are possible) within the framework of possibilities provided by the European Patent Convention (EPC). We sometimes call these types of divisional application ‘continuation’ divisionals.
We have recently been getting the impression that ‘continuation’ divisional applications are disliked by the European Patent Office (EPO), and that the EPO wants to tighten up the practice in this area. Our concerns have been borne out by several recent and worrying Board of Appeal decisions which, whilst perhaps aimed at tightening up the procedure, are causing uncertainty and potential disaster for applicants of both normal and ‘continuation’ divisional applications. This means that the job of choosing what to claim in a divisional application has been made much more complicated than it was in the past.
1. Whilst a divisional application may not contain subject matter extending beyond that found in the parent application, when trying to seek protection which is as broad as possible, it is not uncommon for ‘continuation’ divisional applications to contain something which is arguably added subject matter. For example, the claims filed with a divisional application might arguably cover combinations or embodiments which were not disclosed in the parent application. The previous practice of the EPO has been to allow an applicant to delete from a divisional application any subject matter found not to have been present in its parent.
Although this has been the practice of the EPO, the relevant article of the EPC in fact clearly states that a divisional application may only be filed in respect of subject matter which does not extend beyond the content of the earlier application
as filed.
In T39/03, questions were referred to the Enlarged Board of Appeal, under case number G1/05, questioning whether the previous EPO practice was correct and whether an application can ever be accorded a divisional status if, on filing, it contains any subject matter extending beyond the content of its parent as filed. If it is possible to amend an application to remove any added matter which was present on filing, a further question was asked about the timing of the amendment during the examination procedure.
2. Two further worrying decisions, T720/02 and T797/02, were decided by a Board of Appeal which appears to have taken a disliking to cascading divisional applications (i.e., grandparent, parent and child applications, with the child being filed when the grandparent is no longer pending). The Board decided that a child application in such a cascade may only contain claims directed to an aspect of the subject matter claimed (not just described) in the parent application. Whilst these decisions were a departure from previous EPO practice, the Board deciding these cases saw no reason to refer any questions to the Enlarged Board of Appeal.
A different Board of Appeal, (responsible for case T1409/05), took a strong, and in our view quite reasonable exception to these decisions and expressed the view that the law did not require the claims in a child divisional to be restricted to subject matter encompassed by a claim in its parent. Having stated its opinion the Board responsible for T1409/05 referred the matter up to the Enlarged Board of Appeal for a definitive decision and this is pending as case G1/06.
3. Subsequently, T1040/04 relating to post grant opposition proceedings has been halted, and questions referred to the Enlarged Board of Appeal as G3/06. The referral extends the questions asked as G1/05 to post grant proceedings, asking whether the patent granted on a divisional application which contained subject matter extending beyond the content of its parent application when it was filed, can be amended during opposition proceedings.
Cases G1/05, G1/06 and G3/06 have been consolidated and will be decided together by the Enlarged Board of Appeal.
It will be no surprise that we are keeping watch for the outcome of these cases. But where does this leave you if you want or need to file a divisional application?
At Venner Shipley we have developed a variety of strategies to deal with the fact that the job of choosing what to claim in a divisional application is much more complicated than it was in the past. We know that the facts surrounding each particular case and the requirements of each client will differ from one new divisional application to the next. Therefore we ensure that the options recommended and the advice given is tailored to each particular situation. In this way, regardless of the way the Enlarged Board of Appeal chooses to decide the questions before it, your patents strategy is adapted to give you the best chance of securing the protection desired.
Isobel Raynes
CAN'T STOP THE MUSIC
The downloading of music from the Internet has been a much-debated topic in recent years, not least in the field of intellectual property. First there was Napster, a peer-to-peer music sharing service.
The service was shut down in 2001 as a result of an injunction, sought by a number of major US recording companies, ordering Napster to stop the trading of copyrighted music on its network. Napster has since reopened as a pay service with limited success.
One of the reasons the network could be shut down was that it was not a pure peer-to-peer network. It used central servers to store lists of connected systems in the network and the files they provided. When the central servers were shut down, the system could not function.
After Napster had been closed down, a number of new music sharing services opened and one of them was Kazaa, which is fully peer-to-peer. The owners of Kazaa have defended themselves by arguing that they are not responsible for the actions of the users of the service. The RIAA (Recording Industry Association of America) responded by suing several private individuals who had shared a large number of music files through Kazaa. Most of these suits were settled with monetary payment. Many other lawsuits followed in various countries both against Kazaa and its users. The claimants argued that even if Kazaa is not responsible for the actions of its users they are encouraging individuals to steal music and videos over the Internet and thereby infringe copyright laws. In July this year it was revealed that the owner of Kazaa, Sharman Networks, had settled a lawsuit with the recording industry and that it would commit to becoming a legal music download service.
The changes to Napster and Kazaa were a result of the music industry, including both the labels and the artists, though mostly the labels, taking the companies to court and the authorities being able to successfully enforce the rulings of the court. What happens when the authorities do not enforce court rulings or when the copyright laws of the countries where the companies are based do not make it illegal to distribute copyrighted material? This is a relevant topic not just with regard to copyright in the music industry but in the whole field of intellectual property.
This topic was again recently debated in the British media when the International Federation of the Phonographic Industries (IFPI) tried to shut down the Moscow based music Internet company AllofMp3. AllofMp3 was founded in 2000 by Mediaservices, Inc. and offers albums on their website for around £0.75 each, compared to around £10.00 at iTunes Music Stores. The price of an album is based on the size of the file downloaded rather than the number of songs or the artist responsible for the songs. AllofMp3 is licensed by the Russian Multimedia and Music Society (ROMS) and Rightholders Federation for Collective Copyright Management of Words Used Interactively (FAIR) and they claim that they pay license fees according to the copyright laws of the Russian Federation. The international community and the record companies do not agree. Moreover, they argue that ROMS does not have the right to give licences to AllofMp3 since the laws of Russia state that ROMS needs the permission of the rightholders to grant licences and the rightholders have not given their permission. Moreover, even if it did have the right under Russian law, AllofMp3 is selling albums outside Russia and is therefore infringing foreign copyright laws.
In 2005, the IFPI filed a formal complaint at the Moscow City Prosecutor’s office. This also coincided with the Moscow City Police recommending that AllofMp3 be prosecuted after a preliminary investigation of the website. However, later than year, the Moscow City Prosecutor's office decided that Russian copyright laws do not cover online distribution of creative works and refused to bring a criminal suit against AllofMp3. Russian copyright law covers distribution of creative works in physical form such as DVDs and CDs. However, the law does not make it illegal to perform phonograms publicly without the authorisation of the copyright owner for broadcasting and cable transmission. AllofMp3 argues that the Internet falls under this exemption. Incidentally, they will not be able to use this argument after 1 September 2006 at which point new legislation that specifically deals with the Internet will come into force in Russia. Since 2005 both criminal and civil proceedings have been brought against the owner of AllofMp3.
The battle is also being fought at home. The British Phonographic Industry (BPI) has recently been given leave to sue AllofMp3 in the High Court for infringing UK copyright laws. Allofmp3 argues that it is not operating or advertising its business on the territory of other countries. The BPI argues that they provide an English interface and allow users with credit card billing addresses in the UK to buy the music files. Even if the BPI wins they might face problems enforcing the ruling. Russia is experiencing major problems with piracy and the Internet is not be a priority at the moment. However, it has been argued that with Vladimir Putin’s effort to make Russia a member of the World Trade Organisation, the country may be pressured to take action.
The bpi has issued a statement that they do not intend to go after the individual users of the site. However, even if they did, it is not a clear cut case. The copyright law of the UK states that the copyright in a work is infringed by a person who, without the license of the copyright owner, imports into the United Kingdom, other than for his private and domestic use, an article which is, and which he knows or has reason to believe is, an infringing copy of the work. Most users of the website clearly imports the music file for private and domestic use.
Moreover, unfortunately for the record labels, statistics show that all the media attention given to AllofMp3 as a result of the legal measures taken by the industry has resulted in increased downloads from the website.
If the new legislation in Russia clarifies the copyright laws and the Russian authorities take serious steps to enforce the court orders, AllofMp3 may go the same way as Napster and Kazaa. Moreover, Russia may set a useful precedent for other countries with the same problems. However, even if AllofMp3 shuts down or becomes legal, the trends in recent years show that consumers are willing to buy cheap copyrighted material from companies breaking the law, rather than to pay the recording industry the costs set by them and, therefore, there are likely to be more Napsters, Kazaas and AllofMp3s.
Olivia Johansson
THE DA VINCI CODE CONTROVERSY CONTINUESÉ
Earlier this year, Michael Baigent and Richard Leigh sued publishers Random House, claiming that Dan Brown’s bestselling book, The Da Vinci Code, infringed copyright in the ‘architecture’ of their book, The Holy Blood and the Holy Grail.
The Holy Blood and the Holy Grail, also published by Random House, is described as historical conjecture. It presents a theory that Jesus and Mary Magdalene married and had a child. The book claims that the bloodline continues to this day, with a secret society protecting their heirs against conspiracies enacted by the Catholic Church.
This is similar to the theme of Dan Brown’s book, which has made him the highest paid author in history.
For copyright infringement to take place, the Copyright, Designs and Patents Act 1988 stipulates that a substantial part of a protected work must be copied. However, the claim brought against Random House was not that a substantial part of the text of the claimant’s book was copied, but that there was nevertheless ‘non-textual’ copying of a substantial part of the work, in particular the ‘central theme.’
Sitting at the high court following a three week trial, Mr Justice Peter Smith dismissed the claim, stating that there was ‘no architecture or structure to be found in The Holy Blood and the Holy Grail as contended by Mr Baigent and Mr Leigh. Even if the central themes were copied, they were too general or of too low a level of abstraction to be capable of protection by copyright law.’
In Sawkins v. Hyperion Records [2005] 1 WLR 3281, Mummery LJ stated that ‘the important point is that copyright can be used to prevent copying of a substantial part of the relevant form of expression, but it does not prevent use of the information, thoughts or emotions expressed in the copyright work.’
Justice Smith acknowledged that Brown had copied some language from The Holy Blood and the Holy Grail, and had even created a character, Leigh Teabing, using an anagram of the authors’ surnames. However, such copying did not represent a substantial part of the claimant’s work and was not, in any case, included in the claim brought against Random House.
He went on to say that ‘it would be quite wrong if fictional writers were to have their writings pored over in the way The Da Vinci Code has been pored over in this case by authors of pretend historical books to make an allegation of infringement of copyright. I accept that if this were allowed to happen it would have a serious impact on writing.’
The claimants were ordered to pay 85% of Random House’s legal costs, which are estimated at nearly £1.3m. Whilst the judge refused Baigent and Leigh permission to appeal, they have announced that they intend to apply to a higher court.
Philip Harrison
DOMAIN NAME NEWS
.mobi
The internet is becoming more accessible for users of mobile devices. mTLD Top Level Domain Ltd (‘dotMobi’) is backed by companies such as Microsoft and Google and is changing the way in which mobile phone and other mobile device users access their favourite web pages.
It will soon be possible to access sites using simply the company name or trade mark followed by .mobi.
In fact, companies such as BMW and Google have already launched their .mobi sites and these can be viewed at: www.bmw.mobi and www.google.mobi.
.mobi is set to significantly reduce problems experienced by mobile users such as poor content, slow access and difficult navigation. The content will be concise and in plain text to enable fast and relevant delivery. The content will also be monitored and mandatory rules set in place to ensure that each site is as accessible as possible.
Trade mark owners have until 22 eptember 2006 to claim their .mobi domain before the ‘landrush’ begins and anyone can register any .mobi domain.
.tel
Another addition to the list of top level domains is soon to be ‘.tel’. Once accepted by ICANN, the .tel domain will not serve ‘normal’ websites but will simply allow easier communication.
It will work like this: a company or individual will be able to post all its contact details on its .tel ‘site’ and update those details from anywhere in the world at any time. Others wishing to contact the company or individual can go straight to the ‘site’ e.g. vennershipley.tel or johnsmith.tel and quickly retrieve all the contact details they will need.
As with .mobi, the .tel domain is reserved for trade mark owners in the first instance. This ‘sunrise’ period is expected to be launched in autumn 2007. However, you may register your interest and receive up to date information by visiting: www.telnic.org
Alternatively please contact us for further information.
Rachel Harrison
EPO CLARIFIES WHEN PRESENTATION OF INFORMATION CAN PROVIDE A TECHNICAL, PATENTABLE INVENTION
The European Patent Office (EPO) surprised many observers recently when it issued decision T 49/04 (Text Processor/WALKER). The invention concerned the computerised processing of natural language text to display text segments in a way which enabled a user to read the text more quickly. The processing involved applying some rules which broke text according to punctuation and speech attributes, and cascading the resulting text segments. On the basis that the claim features which relate to the manner how cognitive content (in this case, information such as to enable the user to perform their task more efficiently) is conveyed can contribute to a technical solution to a technical problem, the EPO overturned the decision of the Examining Division and ordered that a patent be granted.
This decision is important since it eases the way for the patenting in Europe of inventions which give a user access to displayed information more readily, even if absent of advantage in the purely technical arena (faster processing, more reliable etc.). It is not necessary for the specification to discuss such advantages since this type of information can be communicated to the EPO during examination. Thus, this decision can be used to advantage with applications which currently are pending before the EPO. The decision is consistent with T643/00 (Searching Image Data/CANON) but distinguishes from T125/04 (Assessment System/COMPARATIVE VISUAL ASSESSMENTS), in which it was decided that conveying information in a manner which a viewer might regard as particularly lucid and logical did not provide a technical solution to a technical problem and thus was not patentable.
For those interested in the facts of the most recent case, the text processing involved folding rules applied to enriched text to produce text segments displayed in new lines with a displacement dependent on speech attributes. The closest prior art disclosed a method for dividing the text of a paragraph into lines having approximately equal lengths in a word processor, for type setting. The Examining Division had decided that the invention was obvious in light of this and ‘the notorious practice of poetry’ (to quote the EPO). Since reading text from a computer screen is different to reading printed text, the technical problem was able to be formulated by the Appeal Board as providing a technical tool for enhancing natural language text presentation on a computer screen. Because the features giving rise to faster reading of natural language text can, according to T641/00 (Two Identities/COMVIK), be taken into account when considering inventive step, the invention was judged not to be obvious.
In some other recent decisions, an Appeal Board decided in favour of Microsoft and granted patents for methods of handling non-file data on a clipboard. The Board decided that the inventions had technical character ‘in that functional data structures were used independently of any cognitive content in order to enhance the internal operation of a computer system with a view to facilitating the exchange of data among various application programs.’ On this basis, the Board decided that the claimed steps which provided a computer with the functionality of assisting a user transferring non-file data into files could be taken into account when considering inventive step. Six related cases (T411/03, T424/03, T425/03, T467/03, T468/03 and T469/03) were decided together.
Paul Derry
NINE NEW PROFESSIONALS TO OUR TEAM
Charles Clark
Charles graduated from London University with a Bachelor’s degree in Physics. Before joining the patent profession, Charles worked as a research scientist with the Ministry of Defence for several years, working on high-energy solid-state laser and optical systems, and vehicle defence programmes. Charles is a Chartered and European Patent Attorney, and a Chartered Physicist. Before joining us, Charles worked in other leading London law firms and as in-house Patent Counsel for a large American multi-national company having global engineering design teams and manufacturing facilities in the Far East. He has extensive experience in filing and prosecuting patent applications relating to the general field of physics, including electronics, telecommunication devices and optical systems. Furthermore, Charles gained experience of enforcing rights against copyists entering the European market, particularly from Asia, whilst working in-house.
Edward Carstairs
Ed studied English Literature at university and, prior to joining Venner Shipley, he worked at another leading firm of trade mark attorneys in London. He specialises in the filing and prosecution of trade mark applications.
Rachel Harrison
Rachel obtained an honours degree in Business & Law from Southampton Institute of Higher Education in 1998 which covered a wide range of areas from criminal law to economics. Her first introduction to the Trade Marks profession was in 1999 before she joined the Conflicts & Clearance Department of a worldwide law firm. In 2002 Rachel resumed her trade marks career and specialises in trade mark searching and the filing and prosecution of UK, Community and International Trade Mark applications.
Isobel Raynes
Isobel graduated from the University of Bath with a Masters degree in Biochemistry. Before joining the patent profession she held research placements in university laboratories in the UK and at Baylor Medical College in the US.
Isobel holds a Certificate in Intellectual Property Law from Queen Mary College, University of London and is a European Patent Attorney. Prior to joining us in 2006, she worked with two other leading firms of patent attorneys in London. Isobel handles all aspects of patent practice and her technical competence extends across a wide range of life science technologies, especially in the fields of biotech
and pharmaceuticals.
John Chettle
John graduated from Nottingham University with an honours degree in Physics, specialising in solid-state physics. In his final year project, he conducted research into optical communication systems and carried out computer modelling of the evolution of magnetic domains in ferromagnetic materials. John specialises in the filing and prosecution of patent applications in the field of electronics, software and telecommunications.
Jonathan Hewett
Jonathan graduated from Cambridge University with a Masters degree in Electrical and Information Sciences. During his degree he also studied physical Natural Sciences including physics, chemistry and geology, before specialising in the areas of semiconductors, optoelectonics and liquid crystals. Jonathan has experience in the field of navigational electronics, in particular magnetoresistive sensors and marine radars. He has passed the Chartered Institute of Patent Agents (CIPA) Foundation examinations and specialises in the filing and prosecution of patent applications in the fields
of electronics, software and telecommunications.
Dawn Perkins
Dawn graduated from Cambridge University with an honours degree in Natural Sciences, specialising in Physics. Dawn holds a Certificate in Intellectual Property Law from Queen Mary, University of London and is a Chartered Patent Agent and a European Patent Attorney. Before joining us, she worked at two other leading firms of patent attorneys in London, and also spent two years working for a firm of patent attorneys in Sydney, Australia, where she also qualified as an Australian Patent Attorney. Dawn specialises in
the filing and prosecution of patent applications relating to electronics.
Isla Furlong
Isla graduated from Cambridge University with a Masters degree in Natural Sciences. She has also completed a PhD in cell and molecular biology at the University of London involving research into programmed cell death. Isla is a Chartered and European Patent Attorney and has worked in both private practice and within an in-house patent department of a leading multi-national company. She specialises in filing and prosecution of patent applications in the field of biotechnology and has experience working with a number of academic institutions and start-up biotechnology companies.
We are pleased to welcome Isla as part of the Cambridge based Venner Shipley team. She joins the firm on 2 October 2006.
Oliver Anderson
Oliver graduated from the University of Nottingham in 2005 with a Masters degree in Physics with Medical Physics. As part of his final year, he carried out research into a new diagnostic technique for respiratory diseases, named Multiple Breath Washout. This involved designing and building, from scratch, a system with which to analyse, in real time, the concentration of a test gas in
a series of exhaled breaths. Oliver specialises in the filing and prosecution of patent applications in the general field of electronics and physics.
HELPING SMALL BUSINESSES
Venner Shipley llp are keen to assist start-up companies and small businesses and help them benefit from our intellectual property (IP) services. With this in mind, we recently exhibited at Venturefest 2006 in Oxford on 3-4 July. This was our second year exhibiting at Venturefest, and it was even better than the first.
In the stylish, contemporary setting of the Saïd Business School in Oxford city centre, Venturefest provided a series of lectures and seminars aimed at giving new and established small businesses the information they need to develop and grow. Most business people in attendance were aware of the need to have intellectual property protection in place before being able to obtain substantial funding for their enterprise.
Our representatives spent time giving advice to entrepreneurs on what protection to apply for and when, and how best to maximise the worth of their IP.
Paul Derry
EPO DECISION ON DIAGNOSTIC METHODS G1/04
The Enlarged Board of Appeal at the European Patent Office has now published its Opinion on the patentability of diagnostic methods (G1/04). In doing so, the Enlarged Board has laid down the criteria that allow a practitioner to assess whether a diagnostic method is excluded from patentability under the provisions of the European Patent Convention (EPC).
According to Article 52(4) EPC, diagnostic methods practised on the human or animal body are not patentable because they are not susceptible of industrial application. The theory behind this legal fiction is that medical and veterinary practitioners should be free to perform diagnoses without falling foul of granted European patents.
Before G1/04, the Technical Boards of Appeal at the European Patent Office had discussed at length how Article 52(4) EPC should be interpreted. In T 385/86, the exclusion was interpreted narrowly such that all essential steps of the method at hand had to be performed ‘on the body’ in order for the method to be excluded from patentability. However, in T 964/99, the Board held that the exclusion should be interpreted broadly such that a method is excluded from patentability if only one essential step for diagnosis is practised ‘on the body.’
In light of these conflicting decisions, it was sometimes quite difficult to assess whether a given diagnostic method would be patentable or not. The President of the European Patent Office therefore referred the matter to the Enlarged Board to clarify the situation.
The Enlarged Board submitted that a diagnostic method comprises a number of steps that are constitutive for making a diagnosis. In its view, these steps are followed by a deductive medical or veterinary decision phase in which the actual diagnosis is reached. Since the latter phase is a purely intellectual exercise, the Enlarged Board decided that at least some of the preceding steps must be of a technical nature in order for the method as a whole to have technical character (and so be potentially patentable).
Following on from this, the Enlarged Board decided that, in order for a diagnostic method to be excluded from patentability, all of the method steps of a technical nature that are constitutive for subsequently reaching the diagnosis must be performed on the human or animal body. Thus, diagnostic methods in which at least one of the essential technical steps is performed away from the human or animal body are patentable.
The Enlarged Board confirmed that the type and intensity of interaction with the human or animal body does not matter, nor does the exclusion depend on the participation of a medical or veterinary practitioner or on the person or device that performs the method. All that is required for a diagnostic method to be excluded from patentability is for each and every one of the technical steps necessary for making a diagnosis to be practised on the body.
In adopting this narrow interpretation of the exclusion in Article 52(4) EPC, the Enlarged Board has followed T 385/86. The restrictive manner in which the Enlarged Board has construed the exclusion clause should encourage inventors in the field of diagnostic technology to file patent applications in Europe, as the decision clarifies that new methods consisting exclusively of the collection of clinical data from a patient or consisting of data processing will not be considered by the European Patent Office to be ‘diagnostic methods’. Rather, they will be considered as methods of data acquisition or processing, which are not excluded by Article 52(4) EPC. Applications can also be filed for multi-step diagnostic methods in which a sample is taken from a patient and treated or analysed in vitro before a subsequent diagnosis is made.
However, applicants should take care when choosing the language of the claims for their patent applications, as any attempts to circumvent the patent exemption
of Article 52(4) EPC by not reciting an essential method step practised on the body will be met with an objection on the ground that the claim is unclear. We can, of course, provide advice to our clients in this field, to ensure that suitably worded applications are filed at the European Patent Office.
Thus, a change in European Patent Office practice is now expected. Examination will also be resumed for any application that was subjected to suspension of proceedings whilst the Enlarged Board reached its conclusion. Practice at the UK Patent Office could be affected now too, as a similar restriction on diagnostic methods is applied under UK law.
Please contact us if you require any further information or if you would like advice on a particular issue.
Tanya Heare
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• Registered designs: changes to UK law
• EPO filings continue to increase
• UK Trade Mark Registry Relative grounds for refusal and the way forward
• UK Rights of co-owners in a patent
• Venner Shipley makes a Splash...
• The Da Vinci Code Controversy ContinuesÉ
• Nine new professionals to our team
• EPO Decision on Diagnostic Methods G1/04
