Patents Court has reservations about Indian patent application; no whitewash in paint dispute

Fresh back from the INTA, the IPKat congratulates LexisNexis Butterworths for spotting two decisions that have not yet made it to BAILII or to Lawtel - one on patents, the other on trade marks and passing off.

The patent case is Re Oneida Indian Nation [2007] EWHC 0954 (Pat), a Patents Court decision on Wednesday 2 May from Deputy Judge Christopher Floyd QC. This was an appeal - the first, so far as the Kat is aware, to be made in the UK by a New York-based Indian Nation - against the refusal by the Patent Office to grant a patent for a "system, method and article of manufacture for gaming from an off-site location" [the note doesn't go into technical detail about the invention]. The patent claimed the invention of a gaming apparatus which was arranged to perform a two-stage gambling method, the prior art having involved a single sequence of operations. The hearing officer refused the application on two grounds: that the invention was no more than (i) a method of doing business and (ii) a computer program, each of which is barred from being an invention within section 1(2) of the Patents Act 1977 (the local equivalent of Article 52 of the European Patent Convention].

The Deputy Judge agreed that the application must fail. Whichever formulation of the contribution of the Oneida patent to the prior art was adopted, the invention remained an apparatus for performing business (in this case, gaming) transactions; its advantages were merely the advantages of a new method of doing business, being no more than the consequence of putting the new business method into effect. The hardware involved was standard and formed no part of the contribution.

The IPKat believes that this decision is just a straight application of the recently-restated law on the application of "as such" exclusions from patentability in Aerotel Ltd v Telco Holdings and Macrossan's Application (see IPKat here). He's fascinated, though, that an entire nation can be named as a patent applicant: his first reaction was that this surely wasn't allowed by the Patents Rules 1995, and Form 1/77 - the patent application form - appears to assume that the applicant is either an individual or a legal entity. What steps, if any, would the Patent Office take to ascertain whether the Oneida Indian Nation was such a legal person and not just an unincorporated parcel of humanity bound together by cultural, genetic and historical ties? Merpel has a riddle: what's the different between having a gamble in Europe and applying to patent a gamble in Europe? Answer: if you have a gamble you've got at least some chance of coming out a winner ...

Oneida Indian Nation official website here
Gamblers Anonymous here
Inventors Anonymous here (says the IPKat: this is actually the list of inductees to the Inventors' Hall of Fame 2007. How many of these names have you ever heard of? Compare the fate of inventors with composers, performers and writers, even the most obscure of whom seem better known than inventors)


The trade mark and passing off case is Fearns (trading as Autopaint International) v Anglo-Dutch Paint and Chemical Co Ltd and others [2007] EWHC 955 (Ch), also from last Wednesday and, by the sheerest of coincidences, another decision of Deputy Judge Christopher Floyd QC.

Fearns ran an unincorporated business which traded under the somewhat grandiose and decidedly descriptive name AUTOPAINT INTERNATIONAL. Unsurprisingly he sold paint and what the note describes as "associated products" for use on cars (ie autos). He also held UK registered trade marks for the words AUTOPAINT INTERNATIONAL and for a device mark which included them. Fearns had his own paint shops and licensed his own Autopaint franchisees, sourcing his paint from various defendants for which Anglo-Dutch was the UK distributor. At some point in 2004 Anglo-Dutch started to sell paint, under the Autopaint brand, direct to Fearns' Autopaint franchisees. Fearns, a trifle displeased, sued for trade mark infringement, passing off, malicious falsehood and infringement of copyright, not to mention breach of contract arising from what the note mysteriously calls a "paint tin agreement". He further alleged that the defendants had acted together or individually intentionally to inflict economic harm on him by unlawful means.

The big question for the Deputy Judge to decide in these proceedings was whether the parties had agreed that the defendants could sell their paint directly to franchisees in circumstances where the latter couldn't get it from Fearns himself. In respect of the infringement claim regarding Fearns' design and logo, which appeared on the Autopaint tins, an issue arose as to the extent of copyright protection left after the application of s.52 of the Copyright, Designs and Patents Act 1988 (which prevents enforcement of artistic copyright, in respect of a principally industrial work that was exploited commercially by the copyright owner or with his consent, after 25 years of its industrial exploitation since any design right in the same work would have expired by then).

Deputy Judge Christopher Floyd considered that, on the evidence, it had indeed been agreed that Anglo-Dutch could sell direct to franchisees if Fearns couldn't supply them himself - but that they could sell any products that the franchisees could get from them. There had accordingly been some infringement going on. In contrast, there was no infringement of copyright in Fearns' design and logo: these were not printed matter of a 'primarily literary or artistic character' and thus had only had a limited period of copyright protection under section 52 of the Act. On the facts there was also some passing off and a bit of breach of contract too.

The IPKat always gets annoyed by these disputes. Proper attention to detail and a little commonsense in drafting could have avoided the problem entirely - and once the problem arises, where each party is able to benefit the other commercially it is depressing that they cannot be persuaded to negotiate their own settlement. Merpel says, look at that long list of causes of action: either the claimant really had it in for the defendant or his lawyer was out of law school so recently that he still remembered the existence of the minor economic torts ...

Car painting here; paint your Volkswagen here; paint your wagon here