For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 13 November 2007

Of maps and treasure -- and global warming; Latest MIP

The recent Chancery Division (England and Wales) case of The Controller of Her Majesty's Stationery Office and Ordnance Survey v Green Amps Ltd, decided by Nicholas Strauss QC sitting as a Deputy Judge on 5 November, is unlikely to make the law reports. For that reason, if no other, the IPKat is grateful to Michael Hicks, who appeared for the claimants, for letting him have sight of the judgment.

Right: The Times They Are a'Changin': once upon a time the map led to treasure, but now the map IS the treasure, with an annual licence of £16,000 for use on a single computer terminal.

The IPKat proposes to gloss over the facts of this dispute, which are of little credit to the defendant who, having manifestly infringed the copyright in the claimants' digital maps, retreated behind a wall of illusory defences only to watch it vanish brick by brick. The IP fraternity is however grateful to the Deputy Judge for dealing with one issue that had long furrowed the brows of Britain's mightiest intellectual property scholars: was it a defence to an action for infringement of an IP right for the defendant to establish that the infringing act contributed towards a reduction in global warming?

In the absence of any decisive authority on the subject, Nicholas Strauss QC opined that no such defence existed, at least in respect of copyright infringement. Having considered the relevant statutory provisions at length, the IPKat is inclined to think that the learned Deputy Judge is correct. Merpel advises the defendant not to risk an appeal, considering how much hot air the Court of Appeal has generated in IP appeals over the years ...

Left: even hot air has its uses, says the IPKat ...

Green Amps here
Ordnance Survey homepage and mapshop
Find out how satellite navigation works here
Something you can do with your hot air here


The cover story of the November 2007 issue of Euromoney's near-monthly Managing Intellectual Property is the battle between the US Patent and Trademark Office and the rest of the world. Sadly, this is a battle in which there are not likely to be any winners, the IPKat thinks. The USPTO is under-resourced and ill-equipped to deal with the increasingly complex demands of its users, yet moves to enable the ailing giant to come to terms with even the bureaucratic dimension to its patent examination and grant activities are greeted with vitriol and hostility. Until US users of the office in particular can agree on what they want and how it can be achieved, and then help the USPTO to get there, that organisation will just wear itself trying to satisfy too many conflicting demands.

Other features in this excellent issue include a report on the current position of another embattled IP institution, WIPO Director General Kamil Idris; a review of the battle to keep UNCITRAL from providing IP-unfriendly guidelines for secured transactions; an enjoyable romp through a selection of IP news, views and developments in Australia and an extremely handy summary of the problems of obviousness in patent law from Wragge solicitor Gordon Harris (a must-read for anyone who has been asleep for several years and suddenly needs to bluff their way through a patent cocktail party).

Full contents of this issue here

3 comments:

David said...

From what I have read on the subject, it appears to me that the USPTO is by no means under-resourced, but is run incompetently. The recent proposed and abandoned rules are a case in point, and one should not blame the applicants for having a go at them for it. GSK along with many other applicants would have been severely disadvantaged if the rules came in.

What the US needs is a proper set of fair rules and have those rules competently managed. A good starting point would be to have requirements for unity of invention that actually make sense in term of patent scope, and a reasonable fee structure based on the effort required to examine claimed inventions.

Jeremy said...

It depends what you mean by under-resourced, I suppose, and whether the provision of sufficiently attractive pay-scales to recruit and retain high quality staff is an issue.

I'm not blaming applicants for having a go at the USPTO, but different groups of applicants have different expectations. For example, software patents in the telecom sector are rarely relied on for the intellectual quality and technical nature of their disclosure since, if users of the system in that sector are to be believed, they are rarely read: what is wanted there from the USPTO is speed of grant so that patentees can proceed to the next stage, which is establishing industrial standards. Now that can't be said for pharma and biotech patents where the nature of the invention disclosed, and of the claims, is of a different order of interest.

I agree that "what the US needs is a proper set of fair rules and have those rules competently managed". It's in this context that I'd like to see users of the system more constructively involved, if the process of proposing rules and then abandoning them is to be replaced by something better.

David said...

I think the reason that users of the system (i.e. patent attorneys) don't get involved with suggesting and lobbying for sensible changes is because they have clients they don't want to lose, and would prefer to keep the system as it is (broken though it may be) in preference to a changed system. From a distance, it is fairly obvious that the US system is wrong in various fundamental aspects. However, what patent attorney would be dumb enough to actively argue for changes that would prevent him from being able to play some of the games that are currently now possible? I'm thinking of rules on added subject matter and unity of invention in particular, as well as continuations, all of which can be played by US attorneys (with enough money behind them) to get broader claim scope, games that are not possible anywhere near as much in Europe.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':