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.

Wednesday, 19 October 2011

Wednesday whimsies

Mental acts at the UKIPO
This piece is not about what happens should you lose your mind and decide to perform a zany, dangerous practical joke at the Hearing Officer's expense. No, the "mental acts" the IPKat is concerned with are those mentioned in Article 52(2)(c) EPC among the exclusions from patentability, which were recently considered in the Halliburton decision from HHJ Birss QC (reported here). 

One method of performing a mental act, involving a cat
(courtesy of the incomparable XKCD)
The UKIPO has responded to the decision with a new Practice Notice on how examiners will deal with this exclusion in future. Currently, examiners are instructed to "object to the computerisation of what would be a pure mental act if done without the aid of a computer as both a mental act and a computer program as such."


Following the decision of HHJ Birss QC in Halliburton's Applications [2011] EWHC 2508 (Pat) examiners will now take a narrow view of the mental act exclusion. In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act.


Daylight saving academics stand aside in favour of ICANN
The IPKat reported last week that two US scientists who maintain a widely-used database crammed with time zone and daylight saving information are being sued for copyright infringement. Shortly afterwards, barrister Francis Davey and Nick Wenban-Smith, Senior Legal Counsel with Nominet, advised that ICANN has now taken over administration and maintenance of the time zone (or TZ) database. Although ICANN's press release makes no mention of the litigation, they are surely better placed to defend any legal claims than the two individual academics.


E-filing in Ireland
Aoife Nic Lochlainn of LK Shields Solicitors in Dublin writes to advise that the Irish Patents Office has introduced electronic filing using a secure encrypted dropbox facility for trade mark, patent and design applications. Her experience, having used the system, was very positive. Aoife notes that this is an interim system and understands that the Patents Office intends to eventually roll out full online filing functionality.


Glasgow conference on monetization and valuation of IP rights
Dr Andrea Tosato of Bournemouth University drew the IPKat's attention to a conference which will be held at the University of Glasgow on the 24th October, which you can either find among the events listed in the side bar or more directly, right here

Andrea (who is himself speaking at the event, on the topic of security interests over IP rights under UK and international law), says that the topics covered will include brand valuation (ISO 10668), security interests over IP rights, leveraging IP rights and trade secrets valuation, and the panel of speakers includes both academics and practitioners.

1 comment:

Anonymous said...

Looking at that Practice Note, it seems that the IPO is conflating the clarity requirement with the patentable subject matter requirement. Birss J was very clear, in paras 21 and 22 of the judgement, that claims could represent patentable subject matter even if they only implicitly, rather than clearly and explicitly, excluded de facto mental execution. Has the UKIPO just got it wrong, or is it sailing close to the wind until another appeal blows it back into the calm waters of reason?

Subscribe to the IPKat's posts by email here

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