Posts Tagged ‘Patents’
Tuesday, April 23rd, 2013
Section 60(3) of the Patents Act says supplying staple commercial products is not contributory patent infringement.
In Nestec v Dualit, Arnold J considered what is a staple commercial product.
He cited Pavel v Sony, which said “in ordinary language, a staple commercial product is a commodity or raw material” and staple commercial products are “of a kind which is needed every day and can be generally obtained”.
He also referred to the Australian decision in Northern Territory of Australia v Collins, which said a staple commercial product “must ordinarily be one which is supplied commercially for a variety of uses”.
As the defendants’ coffee capsules had “no other use other than with a limited range of portionised coffee machines”, they were not staple commercial products.
What amounts to an easily obtained daily necessity varies hugely between organisations, and this element of the test is unenlightening. But the ‘variety of uses’ test is helpful, particularly in the context that most staples are commodities or raw materials.
Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Giles Parsons
0121 237 4557
giles.parsons@brownejacobson.com
Tags: case law, Giles Parsons, Nestec v Dualit, patent, Patents
Posted in Intellectual Property, Litigation, Technology | No Comments »
Tuesday, January 29th, 2013
The Court of Appeal has upheld the decision that a patent for an animal flea treatment was invalid on grounds of sufficiency due to its broad formulation.
It was found that the patent, required a skilled team to formulate a combination of active ingredients to achieve the claimed result, however, it contained no examples to guide the formulation process. The patent “provided no real practical assistance over and above the common general knowledge”.
As the trial judge stated, the very broad formulation was not “sufficient description to enable the skilled person to arrive at a formulation within the claims without undue effort.”
While there is no requirement for a patent to include specific examples, and this was not in itself fatal in this case, it was this lack of example combined with an inadequate specification which led to the insufficiency finding. This decision is a good reminder that patents which do not easily enable construction of an invention without reference to other sources may be at risk.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: Court of Appeal, Patents, Paula Dumbill
Posted in Intellectual Property, Technology | No Comments »
Monday, November 5th, 2012
The Intellectual Property Office (IPO) is consulting on patent infringement in pharmaceutical clinical and field trials. A broader exception to patent infringement for activities related to obtaining regulatory approval of pharmaceuticals is being considered. The consultation is likely to lead to an amendment of the Patents Act 1977.
The Act currently allows generic drugs to be used in clinical and field trials and exempts clinicians from facing infringement actions, however these provisions do not apply to innovative drugs. This leaves clinicians using innovative drugs in clinical and field trials exposed to uncertainty as to which experimental acts fall within the scope of the current exemption and the risk of patent infringement. This risk may well curtail trials and prevent new pharmaceuticals being developed.
The current provisions do not provide enough protection to clinicians and pharmaceutical stakeholders using new drugs. The Government has accepted there is a need to change the UK patent law and hopefully this will lead to an infringement exemption for innovative drugs.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: Patents, Paula Dumbill, pharmaceuticals
Posted in Intellectual Property, Litigation, Procurement | No Comments »
Monday, August 20th, 2012
HMRC recently published a guidance note on the new Patent Box scheme. The Patent Box enables companies to apply a lower rate of Corporation Tax to profits earned after 1 April 2013 from their patented inventions and certain other innovations.
A company can elect to benefit from the Patent Box if it is liable to Corporation Tax and it makes a profit from exploiting qualifying IP. The company must also own or exclusively license-in the qualifying IP, and have undertaken qualifying development (see the Guidance Note for full details).
The relief will be phased in from 1 April 2013 and the lower rate of Corporation Tax to be applied will be 10%.
The Patent Box presents a great opportunity for companies involved with innovation to make a significant tax saving. Companies wishing to benefit from the Patent Box must make their election within two years after the end of the accounting period in which the relevant profits arose.
Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Oliver Laing
0115 908 4854
olaing@brownejacobson.com
Tags: corporation tax, innovation, oliver laing, Patent box, Patents
Posted in Advertising & Marketing, Brands, Commercial contracts, Intellectual Property, Retail, Tax | No Comments »
Monday, March 5th, 2012
Yahoo!, in a recent meeting with Facebook, has demanded licensing fees for the use of 10-20 of their patents over technologies including advertising, newsfeed privacy controls, social networking and messaging and website personalisation.
Following the recent patent wars in the smartphone and tablet sectors, should their demands not be met by Facebook, veteran Yahoo! would be the first social media entity to pursue major legal action in this area.
Is Yahoo trying to assert itself to regain market standing? Or has the move been triggered by the greatly anticipated public offering of Facebook, estimated to be worth $100 billion?
Either way, other patent holders in the social networking sphere will surely be encouraged to walk through the door that Yahoo! has opened, and the awaited Facebook response is likely to influence future patent actions in social media – watch this space.
Posted by Declan Cushley, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Declan Cushley
0121 237 3993
dcushley@brownejacobson.com
Tags: advertising, Facebook, licensing, newsfeed, Patents, personalisation, privacy controls, smartphone, Social Media, tablet, technologies, Yahoo
Posted in Commercial Litigation, Intellectual Property | No Comments »
Wednesday, February 22nd, 2012
In the latest chapter in the long running telecoms patent dispute between Nokia and IPCom, the English High Court has ruled that IPCom’s European patent (UK), which related to the handover of mobile phones between different base stations (eg when the mobile user is on the move), was invalid as originally granted but allowed IPCom to amend its claims, so that the patent remains on the register.
Importantly for Nokia and other would-be licensees, the court found that the patent (even as amended) was not essential to the GSM, UMTS or LTE telecoms industry standards, so a licence of the patent is not required in order to comply with those standards.
Nokia will no doubt use this decision and others like it as leverage in future licence negotiations with IPCom. A victory for the licensee? Maybe, but the portfolio of patents owned and licensed by IPCom remains substantial, as highlighted on its website. Perhaps a convenience based licence still beckons….
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: copyright, High Court, Intellectual Property, IPCom, LTE telecoms industry standards, mobile phone technology, Nokia, patent protection, Patents
Posted in Commercial Litigation, Intellectual Property | No Comments »
Friday, November 11th, 2011
On 2 November 2011, the British Supreme Court unanimously ruled in favour of Human Genome Sciences Inc. (HGS) in its dispute with Eli Lilly & Co, over the validity of a patent for a protein and gene sequence, Neutrokine-α.
Overturning the unanimous decisions of the Court of First Instance and the Court of Appeal, the Supreme Court has set an important precedent.
Based on knowledge of similar gene sequences, HGS claimed that Neutrokine-α could be used to treat conditions involving the immune system. The Court of Appeal held the patent held invalid for lack of industrial applicability as its use was too speculative.
The Supreme Court, having clearly been influenced by the wider consideration of public policy, held that the use of the gene need not be demonstrated, but must only be plausible. The decision has lowered the hurdle for patentability and has relaxed the standard of industrial application – an ‘educated guess’ for the use of an invention can now suffice.
Eli Lilly & Co still consider the patent is invalid, and the case is now likely to return to Court to determine the issues of obviousness and insufficiency.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: eli lilly & co, human genome sciences Inc, neutrokine-a, Patents, Supreme Court
Posted in Intellectual Property | No Comments »
Thursday, October 20th, 2011
The Patents County Court was revamped this time last year with its principle objective being to promote access to justice at proportionate cost for SMEs and other parties involved in lower value IP disputes.
The damages cap which is to be applied to claims in the Patents County Court has now been formally extended to all claims brought in that court (previously it applied only to patents and designs). A sensible move, ensuring that claims relating to all intellectual property rights are brought into line with the court’s objective. With the PCC having dealt with over 100 new cases in the last year, it is apparent that parties have the confidence to resolve their disputes using the reformed process in the court.
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: copyright, Intellectual Property, lower value ip disputes, Patents, patents county court
Posted in Intellectual Property | No Comments »
Friday, October 7th, 2011
On Wednesday the High Court handed down its decision in the Halliburton Energy Inc’s Patent. The decision was a further development on the law of inherently patentable subject matter. Halliburton’s four patent applications had previously been rejected on the grounds that they were excluded from patentability as methods for performing a mental act and as computer programs, under Art 52 of the European Patent Convention (EPC).
The patents were for a method of designing a drill bit using computer simulation. The patents did not include the step of manufacturing the drill bit to the resulting design, as Halliburton did not want to include such a limitation.
The judge found that the patent applications did not fall within the exclusions for mental acts or computer programs contained in the EPC.
The decision is a welcome one, and should go some way to bridging the gap that exists between the UK Intellectual Property Office and the European Patent Office on the matter of patentability of software-related inventions.
Oliver Laing
0115 908 4854
olaing@brownejacobson.com
Tags: European Patent Convention, European Patent Office, Halliburton Energy Inc's Patent, High Court, Patents, Software, UK Intellectual Property Office
Posted in Intellectual Property | No Comments »
Monday, September 19th, 2011
With its recent acquisition of 1,023 patents from IBM, Google now owns approximately 20,000 patents.
Previously, Google has lagged behind its competitors in developing a substantial patent portfolio and, as a result, has been seen in some quarters as vulnerable to patent infringement litigation. However, following its acquisition of Motorola Mobility in August, and the recent acquisition of patents from IBM, Google has put itself in a position where it could respond to infringement threats with its own ‘cold war’-like threat of mutually assured destruction. Alternatively, Google may be plotting its own infringement claim offensive.
Patents are increasingly the weapon of choice for technology companies looking to maintain a competitive edge. A potentially beneficial result of this is that the need to avoid a competitor’s patents may sometimes promote innovation and create new patentable technologies.
In the meantime, no comfort is given to smaller companies, which may struggle to afford the costs of ensuring that their innovative ideas do not infringe the patent portfolios of the technology “super-powers”.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
Tags: competitive edge, Google, IBM, infirngement claim, infringement threat, innovation, Motorola Mobility, patent infringement, patent portfolio, patentable technologies, Patents
Posted in Competition, Intellectual Property, IT Contracts, Licensing | No Comments »
Friday, August 5th, 2011
On 3 August, the Government announced its full support for the recommendations made in the Hargreaves Report on intellectual property and growth.
The Government revealed its goal to “have measures in place by the end of this Parliament” and will prepare more detailed proposals for consultation. The report’s recommendations include:
- the creation of a digital copyright exchange which would assist the buying and selling of digital copyright licences and add up to £2.2 billion to the UK economy by 2020
- allowing copying of data for private purposes or where it does not damage the underlying aims of copyright, which would enable private users to copy media from one format to another (e.g. copying iTunes tracks onto a CD)
- adapting the patent and design frameworks to enable IP law to keep up to date with technology and business practices.
The Government’s response demonstrates a commitment to assist UK businesses in using intellectual property but it remains to be seen how, and whether, such assistance will be given.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
Tags: copyright, design frameworks, hargreaves report, Intellectual Property, Patents, Vince Cable
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
In its eleventh programme of reform, the Law Commission has announced it will consider reforming the laws relating to groundless threats.
Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.
Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.
But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.
So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.
Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
Tags: designs, groundless threats, Intellectual Property, Law Commission, Patents, trade marks
Posted in Intellectual Property | No Comments »
Monday, July 4th, 2011
The heat looks set to intensify in the telecoms industry as it was announced last week that a consortium of six telecoms companies including Apple, Microsoft, Sony, Research In Motion, Ericsson, and EMC successfully bid against Google and Intel to acquire a portfolio of more than 6,000 patents and patent applications relating to wireless and networking technology, including 4G, from bankrupt Canadian telecoms giant Nortel Networks. The final sale price was at least twice that anticipated.
Google began the bidding, expressing an interest in the portfolio as valuable protection for disputes, particularly relating to Smartphone technology and also Google’s android technology, already the subject of a $6.1bn damages claim from Oracle.
The deal still requires approval from the US and Canadian courts but with the consortium members having a reputation for an aggressive approach to patent litigation no doubt this portfolio will quickly find its way to court with hefty damages claims being asserted.
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: Apple, EMC, Ericsson, Google, Microsoft, networking technology, patent applications, Patents, Research in Motion, Sony
Posted in Intellectual Property | No Comments »
Friday, June 24th, 2011
The Government has issued its second consultation on its ‘Patent Box’ scheme which aims to cut the tax rate on profits generated from patents held by UK businesses to 10%.
Qualifying patents are patents granted by the UK Intellectual Property Office and the European Patent Office only. However the scheme will apply to worldwide income earned by UK businesses as well as income from the sale of qualifying patents.
The Government has acknowledged that its initial proposal that the Patent Box would only apply to all qualifying patents first commercialised after 29 November 2010 is not a workable option and has proposed as an alternative phased in transition which extends the benefits of the scheme to all qualifying patents.
These proposals are encouraging but there are still some issues around how the profits attributable to qualifying patents will be calculated. UK organisations must review the proposals carefully within the context of their own business and feedback any issues before the deadline of 2 September 2011.
Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.
Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
Tags: European Patent Office, Patent box, Patents, UK businesses, UK Intellectual Property Office
Posted in Intellectual Property | No Comments »
Monday, April 11th, 2011
Jane Austin’s famous phrase “a truth universally acknowledged” was adopted by Mr Justice Floyd recently to summarise an understanding of what amounts to common general knowledge and to distinguish that knowledge from something which is obvious. There was then an interesting discussion on the approach of the expert and the difference between common general knowledge and further information which the skilled person will seek before he embarks on the problem to which the patent provides a solution. He concluded that a step by step analysis, performed after the event, may not in fact prove to be unrealistic or driven by hindsight. The mere fact that further steps can be characterised as being performed in order to make an informed decision cannot prevent those steps from contributing to a finding of inventiveness.
Probably the best evidence of common general knowledge is found in standard text books rather than in the studies of highly learned and expensive experts.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: common general knowledge, Patents
Posted in Intellectual Property | No Comments »
Wednesday, March 16th, 2011
On 28 February electronics manufacturer LG successfully applied for an ex parte order that up to 300,000 Playstation 3 consoles be seized from Sony’s EU distribution centre, and that Dutch customs seize any further imports, effectively cutting off the entire EU supply chain.
The order was granted as part of a dispute over Sony’s use of blu-ray technology in its Playstation 3 consoles, technology LG says is protected by various patents.
The customs detention and seizure orders have now been lifted with LG being ordered to pay significant legal costs and damages, however the main action continues with trial scheduled for 18 November 2011.
Given that in the main proceedings LG’s damages claim would almost certainly be based on royalties, it appears that in flexing its legal muscles to cut off supply the company has temporarily limited the value of any damages claim by interrupting the supply chain and reducing the number of consoles sold. The old adage ‘look before you leap’ springs to mind…
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
Tags: LG, Patents, Playstation 3, Sony
Posted in Intellectual Property | No Comments »
Friday, December 17th, 2010
National validation and translation costs currently make the cost of obtaining a patent in Europe around ten times as expensive as obtaining a patent in the USA. In the absence of agreement on proposals for a single EU patent, and in a bid to make the application process cheaper, the European Commission this week presented a proposal for ‘enhanced cooperation’ between some member states. Under the proposal, EU applicants not using English, French or German as their home language can file applications in any other official language of the EU, with the applicant then being reimbursed for the cost of translation into English, French or German. Applicant’s inventions would be protected in all countries participating in the scheme.
Whilst enhanced cooperation may go someway towards reducing costs of applying for patent protection in the EU, this halfway-house measure is likely to detract from the ultimate aim for a fully single European patent.
Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements
Emma Tuck
0121 237 3908
etuck@brownejacobson.com
Tags: European Commission, Intellectual Property, patent protection, Patents
Posted in Intellectual Property | No Comments »
Wednesday, December 1st, 2010
The Chancellor George Osborne has confirmed that, as part of plans to make Britain more business-friendly and tax-competitive, a new 10% rate of corporation tax will be introduced on profits from certain products developed in the UK.
From 1 April 2013 this reduced rate of corporation tax will apply to profits from patents, but not from other intellectual property. Consultations surrounding the so-called ‘Patent Box’ will now take place. This corporation tax rate change is just one measure unveiled as part of the government’s ‘Corporation Tax Reform’. Others include changing the rules on controlled foreign companies which, by the Chancellor’s own admission are ‘outdated and complex’.
An increasing number of companies are leaving or considering leaving the UK, citing high tax rates, uncertain/complex tax rules and tax red tape among their motivators for so doing. These changes alone may not stem the exodus, but at least it’s a start.
Posted by Beth Dowson, who specialises in taxation aspects of a wide range of property, corporate and commercial matters; provides taxation support to other internal departments.
Beth Dowson
0115 976 6186
bdowson@brownejacobson.com
Tags: corporation tax, Intellectual Property, Patents
Posted in Tax | No Comments »
Friday, September 17th, 2010
It’s all change for the Patents County Court. A new judge (Colin Birss QC) coupled by new rules, including cost capping and more robust case management powers, should see an even greater shift in emphasis in the newly named IP County Court towards a low cost and speedy dispute resolution process. These changes should be welcomed by critics as they go to the very heart of how best to improve intellectual property dispute resolution in the UK. The intended purpose of the court was always to provide greater access to justice to SMEs – and it is hoped that these changes will not only herald a new era for the court itself but also foster a greater confidence amongst innovators and brand owners that conducting IP disputes in the UK can be cost and time effective.
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: IP County Court, Patents, patents county court, trade marks
Posted in Intellectual Property | No Comments »
Thursday, September 9th, 2010
The High Court has dismissed a claim by Dyson Ltd against rival Vax Ltd for infringement of Dyson’s registered design for a cyclonic vacuum cleaner. The claim concerned Vax’s Mach Zen model which Dyson claimed infringed their registered design dating back to 1994.
Mr Justice Arnold dismissed the claim, deciding the two designs gave a different overall impression to the informed user of vacuum cleaners. He based this on the significant differences between the two machines; stating the Dyson machine gave a smooth, curving, elegant impression whereas Vax’s machine gave a rugged, angular, industrial and even rather brutal impression!
Despite the judge’s complementary take on its design Dyson are very unlikely to be satisfied with this decision. Dyson have historically gone to great lengths to protect their famous intellectual property. It therefore seems very likely that they will try to appeal it, in which case there is a likelihood of a referral to the ECJ.
Posted by Oliver Laing
0115 908 4806
olaing@brownejacobson.com.com
Tags: Dyson Ltd, Intellectual Property, Patents, Vax Ltd
Posted in Intellectual Property, Manufacturing | No Comments »
