Archive for the ‘Intellectual Property’ Category
Thursday, July 29th, 2010
Wayne Rooney has won a case against his former management company, Proactive Sports Management Ltd. The case concerned an agreement which gave Proactive an eight-year monopoly over the exploitation of Wayne Rooney’s image rights.
The agreement, which imposed a restriction that was much longer than the industry standard, was a restraint of trade and therefore unenforceable. The judge also considered Rooney’s age at the time the agreement was executed (he was only 17) and concluded that the agreement was not the result of a negotiation between equals.
The case illustrates the dangers of imposing lengthy restraints, particularly where these exceed industry standards (FIFA regulations stipulate a cap of 2 years for on-field agreements). Rooney was “delighted to have won this case” and the £4.3m he saved no doubt came in handy during Wayne and Coleen’s recent holiday in Barbados.

Posted by Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: Image Rights, Intellectual Property, Sport, Wayne Rooney
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Thursday, July 22nd, 2010
The Department for Business, Innovation and Skills has announced the dissolution of the Strategic Advisory Board for Intellectual Property Policy (SABIP). Its functions will apparently now pass to the UK Intellectual Property Office.
SABIP’s vision was to ensure “the UK’s IP framework rewards innovation and creativity and provides incentives for these to flourish. It seeks to embrace the changing global context and balance the needs of industry, artists and consumers alike.”
Only set up in 2008, SABIP has hardly had an opportunity to make its mark. Its evidence-based approach to change appeared logical and sensible. Its lasting legacy will be its report into the relationship between copyright and contract law. This report was met with mixed reaction particularly from those wary that SABIP’s willingness to consider alternative rewards to copyright might lead to an erosion of that right.
Many are simply asking ‘What did it do anyway?’ which presumably formed part of Vince Cable’s thinking when dissolving the quango.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Friday, July 9th, 2010
Ireland’s Department of Enterprise, Trade and Innovation has published the conclusions from its enquiry into whether the Irish Patent Office should continue to examine trade mark applications to see whether there are relative grounds for refusing the registration. A trade mark may be refused on relative grounds if it is identical or similar to an earlier trade mark. All applications are also examined to see whether the mark should be rejected on absolute grounds – i.e. because there is something inherently wrong with the mark, for example if it is not distinctive.
Applications for a European Community Trade Mark, and (since October 2007) for a UK trade mark, are not subject to examination on relative grounds. Instead, existing trade mark owners are notified of applications that may conflict with their registered, and given the opportunity to object – meaning that UK and Community trade mark owners must police applications.
The UKIPO changed the system of registration to make it more similar to the CTM system – but it is clear that the system in Ireland is easier for smaller businesses that cannot afford to invest heavily in policing their portfolio, for consumers, who have a better guarantee of the origin of their goods.

Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
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Tags: Intellectual Property, Patents, Trade Mark
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Thursday, July 1st, 2010
Like England fans waiting for a World Cup tournament success, technology providers have been eagerly expecting Supreme Court guidance on the patentability of business methods and software inventions in the US. Unfortunately, they may be equally disappointed. Finally the decision of the appeal of Re Bilski has been delivered.
The Supreme Court has upheld the Federal Court’s view that an invention is patentable if it is “tied to a particular machine or apparatus” or if it “transforms a particular article into a different state or thing”, but has refused to confirm that this is the exclusive test.
It has however refused to endorse the earlier, far wider test requiring the invention merely to produce a “useful, concrete and tangible result”, which was set down in the State Street case, and which caused the patent applications to come flooding in. So at least the hi-tech world knows that there are some boundaries, but I suspect that is scant consolation.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, Patents, Software
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Friday, June 18th, 2010
Ambush marketing is a ubiquitous feature of any major sporting event, and it’s certainly got FIFA cross at the 2010 World Cup, after orange mini-dress-sporting football fans were ejected from a World Cup match.
The women are accused of contravening the Merchandise Marks Act by abusing a trade mark. However, the difficulty in this case is that no mark of the company is visible on the dresses and it is therefore hard to see exactly what trade mark has been used.
The case demonstrates that organisations such as FIFA take ambush marketing extremely seriously and will crack down hard where they see examples of it. However it also illustrates that, no matter how draconian the legislation or the enforcement of it, ambush marketers will always be one step ahead.
One thing is certain: during the 2012 London Olympics, ambush marketers will find new ways to advertise their brand without paying hefty sponsorship fees. So, let the games begin!

Posted by Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
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Tags: ambush marketing, Brands, Intellectual Property, world cup
Posted in Advertising & Marketing, Brands, Intellectual Property | 1 Comment »
Thursday, June 17th, 2010
In the High Court recently, the Telegraph Media Group Limited successfully defended a claim of defamation made by Dr Sarah Thornton, the author of Seven Days in the Art World. The Telegraph successfully argued that the words complained of in its review of the book were not capable of being defamatory.
The judge recognised that any definition of “defamatory” must incorporate some qualification or threshold of seriousness, so as to exclude trivial claims. He preferred the following definition:
“the publication of which he complains may be defamatory of him because it substantially affects in an adverse manner the attitude of other people towards him, or has a tendency so to do”.
This interpretation provides defendants with another weapon in their armoury. Plus in an increasingly pro-publisher environment, coupled with the prospect of claimants not being able to recover success fees and ATE insurance premiums from defendants, it may make potential claimants think twice before commencing an action.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Brands, Commercial Litigation, defamation claims, ip
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Thursday, June 10th, 2010
The High Court has upheld a decision that consent given under a co-existence agreement to the registration of a trade mark for certain goods was a bar to opposition on relative grounds, citing section 5(5) of the Trade Marks Act.
Omega Engineering argued that Omega SA had no right to oppose its application to register OMEGA in respect of certain goods since it had expressly agreed not to do so under a co-existence agreement between the two parties. Omega SA argued, amongst other things, that the co-existence agreement was irrelevant to an objection made on relative grounds. Mr Justice Arnold disagreed stating that it would be unjust if a party who had consented to the registration of a trade mark could successfully oppose the application to register it.
This has to be the right decision otherwise the usefulness of co-existence agreements would be severely threatened.

Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Tags: Intellectual Property, ip, Trade Mark, trade marks
Posted in Commercial Litigation, Commercial contracts, Intellectual Property | No Comments »
Tuesday, June 8th, 2010
Internet Service Providers (ISPs) could soon be compiling a blacklist of online copyright infringers. Ofcom is currently consulting on the code to be followed by ISPs and how, in practice this will be enforced. The consultation ends on 30 July.
For the first time copyright owners will be able to receive a list of infringers for the purpose of bringing legal proceedings and apply to find out the names of those who are alleged to have infringed. ISPs may also be required to limit or even block internet use.
The Act (and code) will inevitably make an ISP’s life more complicated, since, as well as blacklisting its own customers, there is a risk they become drawn into the inevitable claim, counterclaim and appeal between copyright owner and alleged infringer.

Posted by Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
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Tags: copyright, copyright infringement, isp, ofcom
Posted in Intellectual Property | 1 Comment »
Tuesday, June 1st, 2010
Craig Venter has created a bacterium called Synthia that has an artificial genome. But what protection should be afforded to the creators of this synthetic DNA? Criticism of Venter’s patent application has been forthcoming, particularly from Sir John Sulston.
European Directive 98/44 EC explicitly said that biotech patents can be granted, although certain things including plant or animal varieties or the discovery of human genes were not patentable. However, the specific drafting of a claim is a different matter, and Venter’s patent’s claims were originally very broad.
Venter’s patent application is being examined by the EPO. Objections to the initial application were made by the examiner in April 2009, which the examiner said were “such that there is no possibility of overcoming them by amendment”. A reply was filed in February 2010, reducing the claims from 28 to 20, and having spent a reported $40 million to create the synthetic DNA, there is no doubt that Synthetic Genomics, the company in whose name the patent was filed, will fight hard to get all the patent protection it can get. It will be interesting to see whether any patents they end up with in Europe do protect anything of monetary worth.

Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
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Tags: biotech, epo, patent, synthia
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Thursday, April 22nd, 2010
In March this year, Justice Secretary Jack Straw announced that there would be a 90% reduction in the recoverability of success fees in relation to defamation claims. The plans were also in line with the recommendations laid out by Lord Justice Jackson in his report published back in January.
Publishers welcomed the move but the oncoming election has led to the reforms being derailed. A number of MPs have also openly opposed the reforms because the proposals would not adequately protect the “little guy” who sues the publisher. Does this mean these same MPs disagree with the conclusions and recommendations of the Jackson report? It is only a matter of time before defendants are given greater protection against liability to pay success fees and after-the-event insurance premiums in defamation cases, and publishers will feel that not passing this legislation is an opportunity missed.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Brands, Commercial Litigation, defamation claims, ip, jackson review
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Monday, April 19th, 2010
The Information Commissioner has new powers to fine organisations up to £500,000 for breaches of the Data Protection Act that take place after 6 April.
Fines can only be imposed if a breach is serious and likely to cause substantial damage or distress. Also, only deliberate breaches or breaches where reasonable steps to prevent a foreseeable breach were not taken are covered.
The example of a ‘serious’ breach given in the Information Commissioner’s guidance is the loss of medical records during a move.
The Information Commissioner has said that he will “not hesitate to use these tough new sanctions for the most serious cases where organisations disregard the law”, and the next company or government department who hit the headlines for losing information should expect to be hit with a punitive fine as well as bad publicity.

Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
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Friday, April 9th, 2010
Do you own trade marks or brands comprising two letters or a single character? Frustrated that you’ve not been able to register your brand as a domain name in the UK? Well, read on.
Nominet, which runs the register for .uk domain names, which total around eight million, has announced plans to make available those domain names which comprise two letters or a single character (think AA, BA) as well as other reserved names within the second level domains it controls (including .co.uk and .org.uk). Previously these domains were not available due to technical reasons, unless they had been adopted prior to Nominet’s establishment in 1996.
Nominet estimates that around 2,000 such domains would become available and these would first be offered to relevant trade mark owners during an initial “sunrise” period. Prior to the release, Nominet has invited interested parties to offer their views on the release. A summary of responses received to date are published on Nominet’s website. The responses to date seem to be overwhelmingly in support of the release of two-letter domains, but there has been a more cautious response to the release of single character domains – largely because it is perceived that there is less scope for legitimate use of such domains.
The consultation is open until 8 June 2010, and so if you are a stakeholder – maybe your organisation is well known by a two-letter acronym – you can respond to Nominet here.
The release of these domains is certainly a positive step. However, there have to be the correct safeguards in place to protect the interests of legitimate rights owners, and to avoid abusive registrations. This means that Nominet’s dispute resolution service is likely to see an increase in use once these domains become available.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Brands, Intellectual Property, Nominet
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Friday, March 26th, 2010
ICANN (Internet Corporation for Assigned Names and Numbers) have decided to delay yet again the decision on whether or not to establish the controversial .XXX domain name suffix for adult sites. This issue has now been debated for nearly a decade and it is time that ICANN makes the right decision and establishes the right to sell XXX domain names.
ICANN had previously accepted a request from a domain name registry to be permitted to sell .XXX domain names but subsequently changed its mind after very considerable pressure from a number of conservative groups. Given the very nature of the internet and the fact that it is the most prolific “provider” of adult material surely it is some what bizarre that ICANN should continue to get embroiled in any moral argument or judgement.
In fact to establish the .XXX domain name may well help those so inclined easily navigate their way to these sites, and equally help parents easily identify adult sites so that they can keep their children away. However, others argue that it will be seen as legitimising porn sites. The debate will continue but we can expect a decision in June.

Posted by Declan Cushley
0121 237 3991
dcushley@brownejacobson.com
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Tags: Brands, Domain, ICANN, Intellectual Property
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Friday, March 5th, 2010
The Sugababes show us how ownership could go round round
Heated rows between pop artists are often as frequent and as transient as their hits. The ownership of the groups’ names and the right to perform under a particular trade mark often provide the backdrop to disharmony. Just ask Liberty X, The Nolan Sisters or The Rubettes among others.
And so the ever changing face of the pop group Sugababes has perhaps unsurprisingly led to potential disputes about the right to use the brand SUGABABES. The word on the street is that former band member Keisha Buchanan, who was a founder member of the group, appears to be on the verge of suing the current line up of the ‘babes to prevent their use of the brand going forwards. Meanwhile another founder (and former) member Mutya Buena has filed a Community Trade Mark application for the SUGABABES trade mark.
Does this mean we are about to see a reunion of the founder members of one of the UK’s most successful girl bands?
The potential disputes which may follow between the current line up and the original group members demonstrate the clear advantages of having a single consistent entity owning the registered and unregistered rights to a brand, particularly where, as in the case of a pop group, the nature and personnel of the external face of the entity changes frequently. Question is though, which girl will be first to push the button?

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, Trade Mark
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Friday, February 26th, 2010
Here’s an idea for a game: Move a marble-like ball around a computer screen by continually placing train tracks in front of it
Here’s another one: Having developed the above programme, move the rights in it from you to your company and then seek to move it back again using the courts and the law of copyright infringement.
The first idea might seem a decent one. The second idea is a truly terrible and expensive one and one that developers should avoid at all costs as this case shows.
A freelance developer developed his game concept (called either Tracktrix, or later Train Trax) before he joined Circle Studios as a games developer. Without telling others in the company that he had developed this concept himself he passed on this concept and encouraged Circle Studios to exploit it.
Sadly this did not lead to commercial success and Circle Studios went into administration. Afterwards the developer sought to take back the concept and to do this he claimed, amongst other things – copyright infringement, alleging that Circle Studios had copied the game from him as a freelance developer. After all he should know…he (as an employee of Circle) had copied it!
Unsurprisingly perhaps the games developer was unsuccessful. As the developer had not disclosed where the idea came from, there was no reason for the employer to believe that the concept was not created in the course of his employment. Any infringement was caused by the developer. The copyright claim failed, as did a related breach of confidence claim, with the judge lamenting that the action reached the court in the first place.
The lesson – be clear where ideas come from as an employee and if you developed something yourself that you later want to use in your employment, discuss assignment or a licence with your employer. If it’s too late to do this, avoid litigation if you can, as taking that track without advice is likely to mean losing your claim, as well as your marbles.

Posted by Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
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Tags: copyright, Intellectual Property, IT
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Friday, February 12th, 2010
In the recent case of The Codemasters Software Co. Limited v Automobile Club De L’Ouest (“ACO”), the High Court adopted a commercial approach to interpretation of an IP indemnity in favour of Codemasters.
ACO had warranted under a licence agreement with Codemasters that the use by Codemasters of car manufacturers’ names, trade marks and car designs would not infringe any IP rights anywhere in the world. However, when Codemasters incorporated certain materials into its computer game, car manufacturers claimed that ACO did not have the rights to grant such licences. Codemasters sought to rely on an indemnity in the licence agreement with ACO under which ACO agreed to indemnify Codemasters against claims by third parties. ACO argued that the claims made by the car manufacturers were not claims of ‘breaches of warranty’ and were not therefore covered by the indemnity.
The Court held that there are good reasons why parties agree to indemnities against third party infringement claims: generally the licensor of intellectual property rights is in a better position to ascertain whether the exploitation will infringe third party IP rights. Accordingly, the Court ruled in favour of Codemasters.
This has got to be the right interpretation and will be reassuring to licensees. However, licensees must ensure that licensor warranties and indemnities are clear and unambiguous and not open to interpretation.

Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
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Friday, January 15th, 2010
Apple is already embroiled in an International Trade Commission (ITC) dispute with its competitor and mobile phone giant Nokia over alleged infringement of both parties’ patents . Now Apple, along with RIM (of Blackberry fame) are the subject of a new complaint before the ITC brought by Kodak.
Kodak has already successfully enforced its “picture previewing” patent against Samsung and Sun Microsystems in the recent past. In this new complaint to the ITC, Kodak is seeking to enforce the same patent against Apple and RIM, presumably with a view to securing favourable licensing revenue from the handset manufacturers.
This new action reinforces the view that the big players in the technology market regard the ITC as a forum with considerable bite. The ITC’s ability to force a ban on the supply of infringing products together with the ability to award damages within a process which can be far quicker than the equivalent process through the US courts marks it out as a forum of choice.
However, in a world in which open source and standardised technology is prevalent, one might question whether a readily available ban on supply really encourages innovation, or whether it rather leaves technology providers at the mercy of patentees. An environment in which patentees are encouraged to declare their patents as essential to a particular standard and then make them available to be used under licence on fair, reasonable and non-discriminatory terms also exists, but whilst patentees have the threat of an ITC action at their disposal, they will of course continue to use that to maximum effect.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Apple, Intellectual Property, ITC, Kodak, Nokia, Patents, RIM
Posted in Brands, Intellectual Property | 1 Comment »
Thursday, January 14th, 2010
After several months preparation a report was published today which makes recommendations aimed at reducing costs of IP cases and speeding up the process of dispute resolution.
A constant criticism of litigation is that the costs involved in pursuing or defending a claim are disproportionate. The risk of having to pay the other side’s costs in the event of losing an action or even the unrecoverable costs of winning a claim are a barrier to using the courts for dispute resolution particularly for small and medium sized enterprises. It has been estimated that the average cost of taking a case to trial is in the region of £700k (although our experience is that we would not expect the average case to cost that much).
The new proposals contained in a report written by a serving Judge of the Court of Appeal and bearing his name (Jackson) include:
- reforming the Patent County Court and introducing a cap on recoverable costs (£50,000 in patent cases, £25000 for all other IP cases);
- introducing a fast track and small claims track for cases with low monetary value and clearer forms of pleadings
The proposals are welcome as if implemented they will enable us to give greater certainty regarding the exposure to costs of litigation. If such greater certainty is achieved will it mean greater confidence in the court system? What do you think?

Posted by Peter Ellis
0115 976 6267
pellis@brownejacobson.com
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Tags: ip, jackson review, litigation, litigation costs
Posted in Intellectual Property | 1 Comment »
Thursday, January 14th, 2010
The Digital Economy Bill continues to be a political hot potato as the government backtracks on key provisions following a wave of criticism.
On this occasion, the issue making the headlines is the proposed “Clause 17”, a provision which would enable the Secretary of State, Lord Mandelson, to make amendments to the Copyright Designs and Patents Act without first consulting Parliament.
In December, top level executives from Google, Yahoo!, eBay and Facebook expressed strong concerns about this in an open letter to Lord Mandelson, the closing line of which reads “we urge you to remove Clause 17 from the bill.” The crux of their complaint is that the controversial provision could pave the way for arbitrary measures and a high degree of uncertainty if new laws can be fast-tracked through the system on a whim.
The government has made a number of concessions in order to allay some of these fears including proposals to water down the powers conferred upon the Secretary of State. In particular, a 60 day consultation period has been proposed, as has an evidential test whereby it must be shown that harm would result if the amendments were not made. In addition, the power cannot be used to create or modify a criminal offence. In spite of mounting opposition to the clause, the government remains in support ofit, stressing that the new powers are required in order to “future-proof” copyright law as new technologies develop.
Whilst most will appreciate that the law must evolve in line with technology, Clause 17 allows the Secretary of State effectively to rewrite primary legislation with a minimum level of Parliamentary scrutiny making this clause, perhaps, a step too far.

Posted by Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
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Tags: Clause 17, Copyright Designs and Patents Act, digital economy bill, Ebay, Facebook, Google, Yahoo
Posted in Intellectual Property | 1 Comment »
Tuesday, January 5th, 2010
Back in October last year we reported on litigation commenced by Nokia in Delaware against Apple alleging infringement of 10 Nokia patents, considered by Nokia to be “essential” to the relevant wireless telecommunications technical standards. In early December Apple filed its response, denying infringement, together with a counterclaim, alleging that Nokia itself infringed 13 of Apple’s own patents.
Enough of the lawsuits, I hear you cry! Not a bit of it.
On 29 December, Nokia cranked the dispute up another notch, by filing a complaint with the US International Trade Commission alleging that Apple infringes 7 Nokia patents. This is a significant step, particularly as it appears to take Nokia’s claim far wider than a dispute relating solely to the iPhone. Here’s what Paul Melin, general manager of Nokia’s patent licensing at Nokia, had to say about this latest step: “while our litigation in Delaware is about Apple’s attempt to free-ride on the back of Nokia investment in wireless standards, the ITC case filed today is about Apple’s practice of building its business on Nokia’s proprietary innovation”.
Perhaps so, but though the patents before the ITC relate to technology which differs from those patents being litigated in Delaware, one can’t help wondering whether the battles aren’t in fact inextricably linked – after all, the original claim by Nokia was brought following a breakdown of licence negotiations, the timing of Nokia’s ITC complaint strongly suggests that it is the next step within the current dispute, and we all know that lawsuits can be settled and an adjustment to licence fees negotiated accordingly. We await Apple’s next move – we can be confident that the dispute will widen before the two sides bury the hatchet. Of course, the English High Court has jurisdiction to hear claims built on the “essentiality” of patents to standards……..

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
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Tags: Intellectual Property, iPhone, Patents
Posted in Intellectual Property | 2 Comments »