law, less ordinary - legal opinions from Browne Jacobson » Patents

Human Genome Sciences wins Supreme Court ruling

Hannah — Fri, 11 Nov 2011 15:25:44 +0000

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

The Patents County Court – living the dream!

Hannah — Thu, 20 Oct 2011 15:24:59 +0000

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

A bit of comfort for software innovators

Hannah — Fri, 07 Oct 2011 13:30:44 +0000

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

Google increases patent arsenal

mikef — Mon, 19 Sep 2011 09:14:12 +0000

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

Vince Cable announces support for intellectual property modernisation

Hannah — Fri, 05 Aug 2011 11:44:57 +0000

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

Threatening reform?

Hannah — Mon, 25 Jul 2011 15:21:51 +0000

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

Telecoms patent portfolio auctioned for £2.8bn

Hannah — Mon, 04 Jul 2011 10:57:48 +0000

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

Patent Box – a box of delights?

Hannah — Fri, 24 Jun 2011 10:07:29 +0000

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

Common general knowledge – a truth universally acknowledged

Hannah — Mon, 11 Apr 2011 13:25:51 +0000

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.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

The Blu-ray row: 1-0 to Sony, full time score to follow

Hannah — Wed, 16 Mar 2011 10:44:08 +0000

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

Cheaper EU patent protection, but at a cost?

Hannah — Fri, 17 Dec 2010 15:54:39 +0000

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

Will the ‘Patent Box’ keep companies in the UK?

Hannah — Wed, 01 Dec 2010 12:54:47 +0000

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

New era for the Patents County Court

Hannah — Fri, 17 Sep 2010 15:19:28 +0000

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.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Dyson fails to clean up

Hannah — Thu, 09 Sep 2010 11:20:57 +0000

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

A relative lack of movement in Ireland

Hannah — Fri, 09 Jul 2010 14:56:31 +0000

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 both for smaller businesses that cannot afford to invest heavily in policing their portfolio, and for consumers, who have a better guarantee of the origin of their goods.

Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

"Business as usual" on US patentability

Hannah — Thu, 01 Jul 2010 14:08:47 +0000

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

New ITC claim makes life rotten for Apple

Browne Jacobson — Fri, 15 Jan 2010 15:14:20 +0000

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

An Apple [lawsuit] a day keeps Nokia busy

Browne Jacobson — Tue, 05 Jan 2010 12:02:22 +0000

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

On the 9th day of Christmas my Darling gave to me…

Browne Jacobson — Thu, 10 Dec 2009 12:10:33 +0000

…tax savings for SME research and developers?

Yesterday, Alistair Darling announced that he intends to reduce corporation tax on income flowing from licensing of patents to 10%.

His noble aim is to encourage research and development in the pharmaceutical and biotech industries. Great news for the SME you might have thought.

There is a downside though – the reduced rate only applies to income from April 2013, and it only affects patents granted after the legislation is passed (which may be in 2011) – so don’t break open the bubbly just yet.

Of slightly more immediate benefit to those who develop technology is the Government’s announcement (to be included in the Finance Bill 2010) to make it easier for SMEs to take advantage of research and development tax relief.

If the legislation is passed, SMEs will no longer have to demonstrate that any intellectual property deriving from the relevant research and development is owned by the company making the claim for relief. The enhanced relief (of up to 175% of qualifying expenditure) may well be more widely available as a result, so it’s a good time to check whether you qualify.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Somebody tell me whether computer software is patentable!

Browne Jacobson — Tue, 17 Nov 2009 10:12:29 +0000

For those of you keeping up to speed with the debate on whether computer programs are patentable in Europe, I had a recent insight from Lord Hoffman who was speaking at the Midlands Intellectual Property Society. Discussing what can and cannot be patented, Lord Hoffman grouped non-patentable inventions into those which of themselves have no practical application (including programs for computers) and those which essentially cover human behaviour (including business methods). This categorisation although not used in the legislation, is a helpful way of keeping a reality check when looking at what is becoming an increasingly dense area of debate.

Does your invention have a practical application? If so, it may be patentable, even if it incorporates a computer program. We’re hoping the Enlarged Board of Appeal at the European Patent Office will shed some further light on the subject, but Lord Hoffman agrees that the EPO may not even have jurisdiction to answer the relevant questions which have been asked of it. Life’s never easy.

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

A declaration of war between Nokia and Apple

Browne Jacobson — Fri, 23 Oct 2009 15:57:20 +0000

This appears to be nothing short of a declaration of war between Nokia and Apple which potentially paves the way for extensive and prolonged litigation.

The action filed in Delaware, USA, seeks compensation for infringement of 10 “essential” patents that it argues are “fundamental to making devices which are compatible with one or more of the GSM, UMTS and wireless LAN standards”. This has parallels with previous legal disputes, in particular between Nokia and Qualcomm. That litigation focussed principally upon the extent to which certain patents were in fact essential. Here, the battle ground may be more upon whether Nokia’s patents are infringed and of course whether they are valid.

Nokia’s press release suggests that the litigation was preceded by a period of negotiation between the companies. Its decision to get heavy may therefore be an attempt to put commercial pressure on Apple in those negotiations.

The more interesting long-term issue is whether other holders of essential patents will follow suit and bring claims against Apple.

Posted by Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com