IT'S LIFFE, BUT NOT AS WE KNOW IT; ON YER BIKE

It's Liffe, but not as we know it

The IPKat has retrieved this gem from BAILII: it's Liffe Administration and Management v Pinkava and another [2006] EWHC 595 (Pat), a rare decision of the Patents Court (Mr Justice Kitchin) last Friday on employees' inventions.

Pinkava, an employee of Liffe, the company that operated the London futures exchange, devised a system that permitted trading to take place through an electronic exchange of various types of financial instruments (credit default swaps, credit index swaps, interest rate swaps and overnight index swaps). Maintaining that he owned the inventions, Pinkava filed patent applications in the United States, where business methods are patentable, and later assigned them to his own company, De Novo.

Liffe sued Pinkava for misuse of confidential information and breach of contract, also seeking a declaration that it owned the US patent applications. Pinkava then commenced proceedings in the UK Patent Office for a declaration that he owned the inventions: these proceedings were then transferred to the High Court. Liffe denied that the inventions belonged to Pinkava, arguing that the inventions were made in the course of the Pinkava's duties and thus belonged to it under s.39(1) of the Patents Act 1977 (which provides that inventions made by employees in the course of employment duties, from which patents can reasonable be expected to result, belong to the employers).

Kitchin J allowed Liffe's claim. When applying the section 39 test, it was necessary to have regard to the normal duties of the employee and any duties specially assigned to him outside his normal duties. It was then necessary to ask whether the inventions in issue were made in the course of those duties and, if so, whether the an invention might reasonably be expected to have resulted from the employee carrying out those duties.

On the facts of this case, Pinkava's inventions were not made in the course of his normal duties but were made in the performance of a duty that had been specially assigned to him: the duty to create an exchange tradable credit derivative. Also, under the circumstances an invention might reasonably have been expected to result from the carrying out of those duties.

The IPKat notes how broadly applicable are the provisions that protect employers' rights in inventions made by their employees. Merpel reminds readers that the UK law, which was amended in 2004 to make it easier for employee inventors to secure a share of the benefit derived from an invention by their employers, still provides difficult obstacles to be overcome before a successful claim can be met.

More on Liffe here, and on Liffey here

Parallel traders, on yer bike ...

Here's a cute little trade mark decision from Mr Justice Lewison, Honda Motor Co Ltd and others v Neesam & others, decided in the Chancery Division this Friday and not yet available on BAILII - but neatly potted by Butterworths LexisNexis' All England Direct subscription service.

Neesam were the parallel importers into the EEA of motorbikes made by, and bearing the trade mark of Honda. These proceedings concerned certain motorbikes imported from Australia, the US and Hong Kong, which authorised motorbike dealers from those countries were not allowed to sell outside their recognised territory.

Honda sued for trade mark infringement, seeking summary judgment. Neesam resisted, arguing that the consent of Honda's subsidiaries in supplying the bikes had been enough to bind Honda itself, or at least that consent to their importation and resale could be inferred.

Lewison J gave summary judgment in part, there being no reasonable prospect that Neesam's defence could succeed in relation to bikes imported from the US and Hong Kong. The IPKat is looking forward to getting hold of the transcript of this judgment so that he can see why Australia is different.