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• Celebrating our Diamond Anniversary
• Cambridge Office launched with a Splash
• Patently better advice at Growing your own Business
• Now intelligent packaging is as simple as printing
• Richard Kennedy joins London team
• Patently a more secure way to handle money
• Malta accedes to the PCT and to the European Patent Convention
• Venner Shipley warns trade mark owners
• Supporting new Green ventures
• High Court Decision Provides Guidance
• European Vision for the Future of the Patent System
Celebrating our Diamond Anniversary
In May this year, Venner Shipley celebrates its diamond anniversary, following a year of unprecedented expansion.
Ten partners and associates have joined the team and a new office has been opened in Cambridge.
The business was started in 1947 by Harold Venner and, from the start, represented European clients. Steady expansion pulled in blue-chip clients including lens maker Carl Zeiss and Rael-Brook, the inventors of the drip-dry shirt!
With huge experience spanning electronics, life sciences, software and mechanics, Venner Shipley is one of the leaders in its field and, in 2006, Venner Shipley was rated by the Legal 500 to be in the top ten London firms of Patent and Trademark Attorneys.
‘My father had the vision to see the increasing need for patent and trademark protection in the post-war world,’ says Alan Venner, partner and Registered Trade Mark Attorney. ‘In a world that is becoming ever smaller, with instant communications and more and more opportunities for the theft of intellectual property, our service takes on even greater significance.’
The end of ‘Swiss’ claims
Changes to the European Patent Convention (EPC) that were agreed back in November 2000 will finally come into effect in December 2007. One important change affects how medical inventions may be claimed and it spells the end of the so-called ‘Swiss’ claim format.
At present, methods for the treatment of the human or animal body by therapy or surgery and diagnostic methods are excluded from patentability. However, it is currently possible to obtain protection for a medical use in the form of ‘purpose-related’ product claims. Such claims are referred to as ‘first medical use’ claims and they may be directed to a product for use in therapy in general or for use in treating or preventing a specific condition. Such claims are considered to recite novel subject matter provided that there is no prior disclosure of the product’s use in therapy. Even if the first medical use claims specify the treatment of a specific condition, the claim is currently anticipated by prior use of the product to treat any condition. Where a product has previously been used in therapy, protection may currently be available via so-called ‘second medical use’ claims, also known as ‘Swiss’ claims, which are directed to ‘use of compound X for the manufacture of a medicament to treat condition Y’.
EPC 2000 does not change the exclusion of methods of treatment from patentability. However, it does mean that applicants will no longer have to rely on the rather artificial ‘Swiss’ claim format. This is an important development because Swiss claims, whilst recognised by the European Patent Office, are interpreted differently in different jurisdictions and may not be recognised in some national courts. Under EPC 2000, a claim in the format ‘product X for use in treating condition Y’ will no longer be anticipated by any therapeutic use. Rather, for a disclosure to be novelty-destroying, it will have to disclose the use of the product for treating the claimed condition.
When EPC 2000 comes into force, the new law will apply to pending applications. Therefore, it may now be appropriate to start including claims that will be acceptable when the new law comes into force. Indeed, where an application includes important ‘Swiss’ claims, delaying grant until after the new law comes into force may be worth seriously considering.
Under EPC 2000, it will still be possible to include ‘Swiss’ claims in applications, but it is quite possible that their use will eventually die out as they should prove unnecessary under the new EPC.
Sian Gill
Cambridge Office launched with a Splash
Venner Shipley’s new Cambridge office was well and truly launched on Monday 13 November with an evening’s celebration at the prestigious Fitzwilliam Museum in Cambridge.
Guest of honour, Sir Hugh Laddie, gave the 240 guests the benefit of his many years as one of the UK’s most influential patent judges with his presentation on why it is important to protect intellectual property at the earliest possible time and how patents and copyrights give tangible value to ideas and inventions.
‘We have an increasing number of clients originating from Cambridge University and the high-tech companies in the area, so we took the decision to move closer to our customer base,’ says Partner Pawel Piotrowicz. ‘There is increasing concern over the importance of protecting intellectual property, particularly in the emerging new technologies and this is where we can help,’ he says. ‘Our new office is already recruiting new patent specialists and we are establishing very close working links with many embryonic and established companies in the Cambridge area.’
Patently better advice at Growing your own Business
On Saturday 24 March at the conference ‘Growing Your Own Business’ at Olympia, well-known inventor Trevor Baylis teamed up with Paul Derry from Venner Shipley to present a master-class following his seminar entitled ‘Encouraging Innovation’.
This highlight of the conference identified the key elements of an embryo company - differentiating between invention and innovation, transforming ideas into reality and a product into a business and then applying innovation to all areas of the business.
At the master-class, Paul Derry brought clear thinking on the practicalities of what a patent is, the importance of an early patent application and the fundamental value of a patent to an emerging business. He explained the mechanics and limitations of the process, the differences between patents, copyrights, registered designs, unregistered designs right and registered trademarks and the importance of filing a patent before any public disclosure of an invention is made anywhere in the world.
Now intelligent packaging is as simple as printing
New Cambridge company to launch process worldwide.
A new company has been formed to launch a revolutionary technique for printing electronic circuitry onto packaging using conventional printing techniques. Novalia, based in Cambridge, has filed patent applications for a completely new system to produce simple circuitry that has implications for the packaging, pharmaceutical, retail and leisure industries.
Imagine adding the functionality of electronics to packaging as easily as adding a barcode - and at next to no cost? Imagine turning a breakfast cereal box into an interactive game. Imagine adding safety checks and information to drugs packaging. The applications for this technology are almost endless; anti-counterfeiting, brand protection, pharmaceutical compliance, toys/games and differential marketing are just a few.
For a start-up company like Novalia, the opportunities are tremendous. Equally, the originator of this amazing technology, Dr. Nick Stone, is very aware of the potential dangers in the world market. “Ideas, on their own, have little commercial value and, of course, are vulnerable,” he says. “So, from the beginning, I have been working closely with patent attorneys Venner Shipley, ensuring that each development is fully protected by patents, which then add a clear marketable value to my concepts.”
The system of printed electronics being pioneered by Novalia has been brought about by advances in organic electronics. Organic semi-conductors are a material that can be coated and patterned on flexible substrates to create transistors and other electronic devices. They have properties that enable simple circuits to be printed over large areas on conventional low-cost thin and flexible substrates such as cardboard or plastics.
The beauty of the Novalia process is its ease of application, using the same printing techniques and equipment that are currently employed. Novalia will discuss a concept with a client - a promotion, brand-linking, an ongoing game, product verification, or whatever may be required - and, considering the types of materials and processes that are available, put forward a concept to add value and functionality to the packaging.
Richard Kennedy joins London team
Our newest recruit, Richard Kennedy, with a doctorate in femtosecond laser research, has a broad experience encompassing optical technologies, nanotechnology, semiconductors, medical devices and telecommunications. He also sits on the committee of the Physics and Law Group of the Institute of Physics. His expertise will be employed in the filing and prosecuting patent applications in the fields of electronics, software and telecoms.
Korea Move?
In April, a South Korean patent attorney, Ms Jee-eun Yi, is joining the electronics department in London for a four-month period. A physics and mathematics graduate with electronics patent experience, Ms Yi is spending some time in Britain to improve her English and to gain more direct experience of European and UK patent work. At the same time she is giving us an insight into South Korean patent practice and providing valuable assistance in relation to work received from our South Korean associates.
Patently a more secure way to handle money
Money Controls, the world leader in money-handling solutions, has launched a new, secure system for the one-way transportation of banknotes from the point of sale to the count centre, with full audit ability and no need for back-office counting.
Called ‘Tulip,’ this revolutionary approach to cash handling provides full visibility of cash at all points in the chain, with no need for cash counting, considerably reducing labour costs, and eliminating opportunities for theft throughout the process. Not surprisingly, this advanced product is well protected by multiple worldwide patents and Money Controls’ patent attorneys, Venner Shipley, have been involved in the protection of the development process right from the beginning.
Tulip has been developed to meet the need to increase the efficiency and security and decrease the cost of the present labour-intensive process of checking and re-checking bank-notes in their journey from the till to the final cash-counting process. The development process has resulted in at least seven patents covering each element of this unique system and Venner Shipley’s input has been crucial in providing the right level of protection.
“Venner Shipley has helped us in the direction of our product development,” says Money Controls’ Technical Director, Mike Bell, “avoiding pitfalls and dead ends along the way. Their quick grasp of the technology, their fast response and clear thinking has been of great value to us.”
Cash taken at the point-of-sale is fed directly into Tulip, where it is identified, validated and counted. The cash is stacked into a sandwich-box style disposable container, which is suitable for recycling. Inside each plastic cash box is a re-usable RFID card, on which is recorded each bill, complete with a transaction history.
At the end of the trading day, or when Tulip indicates that the cash box is full, the operator inserts a plastic lid that is thermally sealed onto the container before it can be removed, giving clear indication of any subsequent tampering.
The RFID card can be read by a suitable reader at any point in transit from the POS through to cash-counting where it is finally opened, the plastic box is sent for recycling and the RFID card is returned.
Patents cover all aspects of Tulip - the cash-box itself, the process of welding the lid, the use of the RFID tag as a recoverable memory device, several design aspects of the bill acceptor and bar-code reader, including its full bill scanning device, the transaction recording and the unloading process.
“We expect great things from Tulip,” concludes Mike Bell, “and have found that dealing with Venner Shipley has been a rewarding and creative process that has been very supportive throughout.”
Malta accedes to the PCT and to the European Patent Convention
Malta (MT) has deposited its instrument of accession to international patent system so that from
1 March 2007, any international (PCT) application will automatically include the designation of Malta.
Malta will also become bound by the European Patent Convention on the same date, becoming the 32nd EPC state. Therefore, European patent applications filed on or after 1 March 2007 will include the designation of the following 32 member states:
Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. For more information, see story on Venner Shipley website www.vennershipley.co.uk and follow links.
Matthew Read
Modelmakers beware!
‘Makers of toy cars should be aware that they could be infringing the recognised Trade Marks of major car manufacturers,’ says Ed Harrison, Trade Mark partner at Venner Shipley.
A recent legal decision from the European Court of Justice (ECJ) has highlighted some potentially important points concerning the production of model cars that use the recognised Trade Marks of the genuine car manufacturer.
Adam Opel AG had sued Autec AG, a model car manufacturer, for producing an unauthorised remote controlled scale model of an Opel car that featured a copy of the well-known Opel badge on the radiator grille. The proceedings were launched in Germany, and some of the points raised were referred to the ECJ for clarification.
Adam Opel AG claimed that this use of the Opel Badge was an infringement of their registered Trade Mark, which is registered in respect of “cars” as well as “toys”.
Autec AG offered the defence that their use of the Trade Mark was purely intended to convey descriptive information about the model, i.e. that it was an accurate model of an Opel car. In essence they claimed that they were not using the Opel badge as a Trade Mark, and that such use should be allowable.
The ECJ held that:
1. in theory, Adam Opel AG are entitled to enforce their Trade Mark registration against Autec AG, if the use of the Trade Mark by Autec AG is likely to be viewed by the relevant toy consumer as indicating a connection with Adam Opel AG,
2. Adam Opel AG are entitled to entitled to enforce their Trade Mark registration against Autec AG, if it can be proved that use of the Trade Mark by Autec AG is likely to take advantage of, or damage, the reputation of the Opel badge and,
3. use of the Opel Logo by Autec AG was not allowable use as a description of a characteristic of the products (model cars). The Court felt that the nature of use went beyond this role, and instead was being used to indicate that the models were a faithful reproduction of the original. In the Court’s view this was not a permitted use under the current interpretation of the law.
The initial impression given by this decision is that it appears to strengthen the hand of the Trade Mark owner, and could potentially place several difficult legal obstacles in the path of the model manufacturer.
However, at the moment, this is only true at the theoretical level, since Adam Opel AG still face a considerable hurdle before they might be able to obtain any form of legal injunction against Autec AG. In particular, they need to prove that the average consumer of model cars would believe that the use of the Opel badge by Autec AG indicates some form of trade connection (perhaps a licence or permission of some sort) with Adam Opel AG.
Despite these difficulties, the decision has weakened the legal defences of model producers, even if, ultimately, some defences may remain. Therefore, this decision may give rise to a series of legal disputes between car manufacturers and producers of unauthorised model vehicles.
The comments of the ECJ have now been returned to the German courts for a final decision to be made, and this is awaited with interest.
Ed Harrison
Patent Trolls
Definition: companies or individuals that buy patents with the sole purpose of enforcing them against big companies to get royalty income or other financial awards. Examples are NTP and Intellectual Ventures in the US and also Inpro in Europe.
Research in Motion (RIM), the manufacturer of the Blackberry hand held device, has had real problems in the USA with litigation bought by NTP, a patent troll run by Don Stout, a US patent attorney. The case has now been settled, with RIM paying a large sum to NTP. The validity of the patents concerned however, is still in dispute at the US Patent Office.
Another troll - Inpro, has recently lost a patent action against RIM in the UK Courts. Inpro is a company set up purely to make money out of patents they have bought in for this purpose.
Research in Motion UK Limited (RIM), the UK subsidiary of the provider of the BlackBerry, sought revocation of Inpro Licensing Sarl's (Inpro) patent for a computing system that enables small computer devices to use the Internet. Essentially, the system used a proxy server to carry out much of the ‘heavy’ computing providing the portable computer with manageable content. Inpro counterclaimed against RIM and its licensee T-Mobile (UK) Limited for patent infringement. The judge held the patent invalid for obviousness.
Venner Shipley warns trade mark owners about changes to UK trade mark system
Important changes to the UK Trade Mark system mean that Trade Mark owners need to be doubly vigilant in monitoring and protecting their Trade Mark rights, warns Ed Harrison, a Trade Mark Partner at Venner Shipley.
In October 2007, it is proposed that the UK Trade Mark office will no longer object to new Trade Mark applications, even if it is felt that there is a possible conflict with an earlier mark. Historically, the UK office has always raised objections to new applications if there was a possible conflict, with the aim of preventing confusion between Trade Marks and thereby protecting the end consumer. This is all set to change later in the year.
According to Ed, the new system reflects a general shift towards what already happens with European Trade Marks (which automatically extend to the UK). “Owners of European Trade Marks are already used to this more liberal system,” he says, “and they take steps to ensure that their rights are not damaged by actively monitoring other conflicting Trade Mark applications. However, this represents a radical change in the UK.”
The changes at the UK office will also mean that there is likely to be an increase in cases where one company opposes the registration of another company’s Trade Mark. More opposition proceedings will mean that the Trade Mark registration process for some cases in the UK will become slower and more complicated as a result.
Ed Harrison advises that the best way for companies to be prepared for this is to ensure that every important Trade Mark is already registered, and that steps are taken to ensure that a watching service is put in place.
“A Trade Mark watching service looks through the Trade Mark journals, and notifies you of potentially conflicting Trade Marks,” he says. “Your Trade Mark attorney can then advise you on your options and you can consider whether you wish to take any further action”.
He further comments that “Not monitoring conflicting Trade Marks is no longer an option for any one who values their Trade Marks. It is like buying an expensive car, and then not wanting to spend the money on insurance!”
What the papers say...
Intellectual Property - Is it relevant to my business?
By Ian Grey Partner
Venner Shipley LLP
published in February issue of Design Products and Applications
European Patent Law Developments in Stem Cell Research
By Siân Gill Partner
Venner Shipley LLP
published in the February issue of Pathology in Practice
Full articles can be seen in on the Venner Shipley website, www.vennershipley.co.uk in the news section.
Supporting new Green ventures
Venner Shipley is one of a select band of patent and trademark firms selected by WRAP (Waste & Resources Action Programme) to advise and support exciting new ventures in the field of recycling.
WRAP works in partnership to encourage and enable businesses and consumers to be more efficient in their use of materials and to recycle more things more often. This helps to minimise landfill, reduce carbon emissions and improve our environment.
WRAP can help businesses with their expansion plans through a range of business support services targeted at the recycling/ reprocessing sector. Intellectual Property Rights support offers funding for new or existing businesses to receive expert support to evaluate and understand the potential Intellectual Property (IP) they may have and the steps needed to protect it.
Venner Shipley is one of a small number of firms of patent and trademark attorneys authorised to provide a two phase service to WRAP’s clients - the first stage is an IP appraisal that assesses existing and potential IP associated risks and opportunities. If potential IP is identified, then subject to the advisors recommendations and WRAP approval, phase two funding will be provided towards the protection of that IP.
To date, Venner Shipley has been involved with two projects.
The Paper Trail Mill runs a scheme called ‘The Paper Magic Project’, which closes the recycling loop by collecting used paper from schools and recycling it into new paper products that are sold back to schools.
Recycle for Learning
Paul Stenning, Marketing Manager at The Paper Trail, said, “We recognised the need to establish a brand for our scheme and make sure that its name would not be used by other companies in any way that could detrimentally impact on our reputation.” They applied to WRAP’s IPR support scheme and Venner Shipley was brought in to assess the potential for IP protection and concluded that the most appropriate protection would be a trademark, helping the company to become more established in the market place. The initial trademark chosen was not available, but further searches resulted in the selection of ‘Recycle for Learning’, which is now a registered trademark.
Eight Inch
Eight Inch produces hard worktops and surfaces using a composite material incorporating recycled glass developed in conjunction with Sheffield Hallam University, which owns rights relating to the material, and Eight Inch was proposed to be granted a license under those rights.
The company’s turnover has doubled annually but its growth was impeded by outstanding IP issues that were deterring potential investors.
Venner Shipley’s professionals provided an initial appraisal and identified issues that needed addressing. A name which Eight Inch had thought about using in connection with its products was found to have the potential to infringe common-law rights owned by a company trading in similar goods, and Eight Inch was advised to find an alternative name. Venner Shipley also advised on deficiencies in the proposed licence and identified an alternative arrangement more suited to Eight Inch’s business. Investment is now much more likely to be forthcoming with a formal licensing agreement and trademark in place.
High Court Decision Provides Guidance on Interpretation of Registered Community Design Regulation
A recent case before the High Court Chancery Division (Patents Court) saw Mr. Justice Lewison consider an alleged infringement of a Registered Community Design ('RCD') and, in arriving at his decision that the RCD was both valid and infringed, he gave some valuable insight into interpretation of the Regulation relating to the RCDs.
The Products
The case concerned Proctor & Gamble (claimant) who had a RCD for their 'Febreze' spray canister, and who alleged that Reckitt Benckiser (defendant) were infringing their RCD by manufacture and sale of their 'Air Wick Odour Stop' air spray canister.
This article can be seen in full on the Venner Shipley website: www.vennershipley.co.uk
in the news section.
Alexander Brown
European Vision for the Future of the Patent System
On 3 April 2007, the Internal Market and Services Commissioner of the European Commission published a Communication in which the European Commission sets out its vision regarding the future of the patent system in Europe.
The Commission has published this Communication with the aim of revitalising debate on how the patent system in Europe could be reformed so as to enable high quality patents to be obtained throughout Europe at lower cost than at present. The Commissioner states that:
“Patents are a driving force for promoting innovation, growth and competitiveness, but the single market for patents is still incomplete. Our 2006 stakeholder consultation showed that the EU simply must deliver, in particular on the Community patent and sound litigation arrangements, because in today’s increasingly competitive global economy Europe cannot afford to lose ground in an area as crucial as patent policy. That is why I propose to have a fresh look at the various options and to work with the Council and the Parliament towards political consensus on real improvement of the patent system”.
The Communication sets out a clear desire to move forward with the implementation of a single Community-wide patent, known as the ‘Community Patent’, but criticises the European Council’s Common Political Approach adopted in 2003 because of the requirement to translate the patent claims into all the different languages of the EU member states. The Community patent is seen as the key element in reducing the cost of obtaining patent protection throughout Europe which, under the current system, the Communication indicates, is many times more expensive than obtaining corresponding protection in the US or Japan.
The Communication also highlights the need to establish an efficient EU-wide patent jurisdiction in order to reduce the high cost of patent litigation under the current system. Presently, a granted European patent becomes a ‘bundle’ of separate national patents, leading to the possibility of costly litigation in multiple national jurisdictions. The Communication recognises that this can be prohibitively expensive for SMEs and individual inventors, and so a more unified approach is required.
Opinion between member states has so far been polarised between two separate options, and so the pursuit of either one does not currently seem to have a realistic chance of success. The first option is set out in the draft European Patent Litigation Agreement (EPLA) and proposes a uniform jurisdiction for litigation of European Patents by forming a European Patent Judiciary, essentially comprising regional courts of first instance, and a centralised court of appeal. However, some view the creation of a separate jurisdiction in parallel to the Community jurisdiction as complicated and risks creating inconsistencies and, in the case of the creation of the Community patent, it would lead to duplication of EU-wide patent courts.
The second option comprises establishing a unified court which would deal with litigation of both European patents and also future Community patents. However, some member states view this option as unworkable, as being inefficient and impractical.
The Commission believes an approach combining elements of both options could be built upon, by providing a specialised judiciary with competence for litigation in European patents and future Community patents, strongly inspired by the EPLA model, but which would allow for integration into the Community jurisdiction. In any case, the Commission is keen that this issue does not jeopardise the creation of the Community patent, nor should there be any duplication with competing jurisdictions.
In summary, by issuing this Communication, the Commission seeks to emphasise the need for an improved patent system in Europe and to revitalise debate on the issue. It aims to encourage agreement between member states to make progress on the Community patent and to improve the fragmented litigation system, so as to make the patent system more accessible and more cost effective.
A link to the full text of the Commissioner’s communication and the European Commission’s press release can be found on the Venner Shipley website (www.vennershipley.co.uk).
Alexander Brown
