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Wednesday, 11 September 2013

New improved Dyson sucks up German infringements from London

Bagpuss
On the whole, felines are not fond of vacuum cleaners. Even the best of them have yet to be fitted with silencers, which is bad news for any animal that sleeps 18 hours a day, and they undo a lot of hard work by removing those little bits of fur that cats have gone to great lengths to deposit strategically on rugs and carpets in order to remind them where they've been.  However, this Kat is about to put his Hoover out to pasture since he has suddenly become quite excited about the new and improved Dyson.  The old Dyson made a terrible noise that went something like this:
Sir James Dyson (The Telegraph, 25 September 2012)
"The engineer, most famous for designing the bagless vacuum cleaner, said high costs and an effective bias towards infringers meant inventors and small companies felt unable to enforce their rights.

... [he said that] it can easily cost £3m to fight a case in the UK, and 'tens of millions of dollars' in the US. 'It gets to the point where [a small business] can’t afford to carry on.'

He added that only 18pc of UK legal disputes are won by rights holders. -The system does not support design and patent holders. You don’t bring a case because of the expense and the risk that if you lose, you pay the other side’s costs. The 82pc [that lose legal disputes] have gone to all the trouble and expense of developing the technology and then some company comes along and rides on their coat tails. It’s grossly unfair.'

Sir James suggested elements of the 'simpler' German and French patent systems could be adopted in the UK to reduce the length, cost and complexity of cases".
But the new, improved Dyson sounds like music to the ear, if you're a British patent litigator at any rate:
Bagless push
Sir James Dyson (CIPA press release, 10 September 2013) has chosen to take legal action against Samsung in the High Court in London, rather than in Germany, where the alleged infringement was first spotted.
“When a Korean company, active in Germany, is first sued in the UK it shows the international nature of business and IP law,” commented Jim Boff, a spokesman for the Chartered Institute of Patent Attorneys. “Dyson’s decision to bring action in the UK is doubtless influenced by the fact that the UK Intellectual Property Office has been efficient and has granted a patent in a relatively short time. Dyson’s corresponding patent applications in Korea and at the European Patent Office do not appear to be granted yet. Whether this litigation will be the start of court actions worldwide or will be the prelude to a settlement is yet to be seen.”

How has this dramatic change been engineered, wonders an admiring Merpel. Perhaps her readers know.

Late change: after posting, this Kat found a link sent in by Katfriend Lawrence Ryz to this news item from the BBC: it seems that Samsung is the target and that the patent is for a steering mechanism

19 comments:

Anonymous said...

Not really that surprising that he chooses to sue where he has a patent, rather than where he doesn't.

Anonymous said...

Dyson’s corresponding patent applications in Korea and at the European Patent Office do not appear to be granted yet.

So, Dyson chooses to litigate in Britain because it's the only country in which the allegedly infringed patent has been granted yet. Where's the news?

Not to mention that, by starting (and publicising) this litigation before his European patent is granted, Sir James is almost ensuring that, if and when the European patent is granted, it will still have to go through the gauntlet of opposition and appeal, pushing back by perhaps 5-10 years the prospect of a successful outcome to litigation in most European markets.

Unless Dyson knew that such an opposition was almost certain anyway, I don't think this was a better tactic than requesting accelerated examination at the EPO and waiting until 9 months after the European grant to pick a fight with Samsung and its well-seasoned IP team.





MaxDrei said...

When Dyson pleads for "elements" of the German patent litigation system to be incorporated into English way of patent litigation, and when he points out the unknown but possibly ruinous cost of losing in England, perhaps he has in mind the element of German law that, at the outset of the case, the judge sets a "value of the action" which in turn sets a cap on the amount of legal costs you might have to pay to the other side, if you lose.

For a businessman, the question "How much is this going to cost me?" is quite important. And the English patents judges are forever harping on about the need to deliver what industry needs. Well then......

Anonymous said...

Is it not possible to sue in Germany to protect a pending patent application? I believe that both Italy and Greece offer provisional injunctive protection. Do they have something Germany doesn't offer?

Anonymous said...

Two of the earler Anonymouses say it's obvious that Dyson must go to court in a country where he has a patent rather than where he doesn't. But if you look at Article 9 of the IP Enforcement Directive No. 2004/48 it doesnt seem to require that a patent be granted. It starts:

"Provisional and precautionary measures

1.Member States shall ensure that the judicial authorities may, at the request of the applicant:

(a) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder ..."

If the right is still pending, isn't this an imminent infringement that the Directive talks about?

MaxDrei said...

Does Sir James put any value on the Gebrauchsmuster Abzweigung provision of German law? American corporations like it a lot.

File a GBM at the German Patent office, divided out of your pending EP, with claims sculpted to read on to the infringing article. Get a Grant Certificate 3 months later and promptly assert that, pointing out that its validity is guaranteed by the EPO search report and the UK grant.

The ten year max term of a GBM seems here not to be a problem. Any other snags?

Anonymous said...

@MaxDrei - any snags? Yes, it is a toothless fairy. The alleged infringer brings a revocation action against the utility model citing new prior art and the whole infringement action is stayed as being an non-examined right.
Has dyson requested accelearated examination of the EP application?

Anonymous said...

Get a Grant Certificate 3 months later and promptly assert that, pointing out that its validity is guaranteed by the EPO search report and the UK grant.

The ten year max term of a GBM seems here not to be a problem. Any other snags?


Well, I don't think that any court will take an EPO search report (whose content, BTW, may have been utterly negative, for all we know) or a foreign grant as guarantee of anything...especially if the claims of the GBM have been "sculpted" to read on to the allegedly infringing article.

Apart from that, even German courts have been known to sniff at utility models, especially if they have been "derived" from a previous patent application...

As for the preliminary protection accorded by some countries to pending applications, good luck litigating on that basis. Not only is any reasonable judge going to think twice before issuing any sort of injunction on the basis of a pending application, but the reverse damages if the application is finally rejected or abandoned are going to be hefty...



ron said...

I seem to remember something in the "Brown book" entry for France that it is possible to initiate an action for infringement on the basis of a published EP application designating France. No personal experience, other than by way of a question in an old CIPA exam paper.

MaxDrei said...

Thanks for those thoughts, commentators, and I agree that a GBM is an "unexamined right" about which the courts in Germany are sceptical. But when Big Corp infringes, what does one do? Asserting a GBM is something one can do, relatively cheaply. And what if it works. Did not Samsung get enjoined by Apple in Germany, peremptorily and only very recently, and on an "unexamined" Registered Design?

Incidentally, by "sculpted" I had in mind claim narrower than that allowed by the UK IPO. And if the UK IPO has seen all the closest art already, there is a reasonable presumption of validity that the accused infringer has to address. Somebody once wrote something like "The Lord helps those who help themselves". In Germany, if you see infringement you had better assert quickly. Delay will have bad consequences.

Expedite at the EPO? PACE? Who has experience? Mine is that it is disappountingly slooooooooow.

Anonymous said...

OK, we can discuss the tactics as much as we like, but for me the big picture is that "names" like Dyson are known to politicians and the public (i.e. those who instinctively complete Marks & ~ with Spencer, not Clerk). When Dyson stops complaining about the UK IP system and uses it as intended, so much the better. Maybe it isn't broken after all, and we don't need to fix it with patents granted "while you wait"?

Anonymous said...

Has dyson requested accelearated examination of the EP application?

According to the BBC report linked to in the latest update to this post, the British patent is GB 2469049 B. The corresponding EP patent application is EP 2413760 A1, a Euro-PCT. Looking at its file, Dyson has not yet requested accelerated examination. Moreover, neither the international search report, nor the IPER or the (just issued) first Communication of the Examining Division of the EPO are unreservedly positive and I wouldn't say that Dyson's replies are calculated to obtain a speedy grant...

Anonymous said...

A PACE requested is excluded from the online register, so we cannot know if one has been requested or not.

Darren Smyth said...

I wonder how anonymous at 14:03 discerns that "Dyson has not yet requested accelerated examination" given that by decision of the President of EPO requests under PACE are excluded from file inspection (Dec. Pres. Spec. Ed 3 of OJ EPO 2007, page 125).

Roufousse T. Fairfly said...

I couldn't find any application with a title exactly like what was reported in the IPkat post or elsewhere (Bloomberg, Guardian).

My hunch is that the patent in question belongs to one of the of twenty different families with priorities filed on 31.03.2009, with fourteen of these also filed as EP and/or WO. Of the latter group, five mention a "steering mechanism" in the abstract.

There appears to be a thorough protection strategy at play here. The coverage is not uniform, but includes JP, RU, US, CN, KR. (Manufacturing and market countries).

One couldn't really say that one authority is faster than the other, considering that Dyson entered the GB system directly without claiming priority, whereas the EPC system was accessed via the PCT and its 31+ month deferment.

Two families matured into EP B1 patents, and 16 into GB B titles, with 1 and 7 of these mentioning a "steering mechanism" respectively. Dyson thus has quite a few cartridges in his pistol, and I couldn't really see which one is being fired, if it belongs at all to this group.

I can't say off hand which path will yield the broader titles. At a glance the issues seem to revolve a lot on clarity. I discover that Espacenet now offers one-click access to the GB register, and that the OAs can be read online, e.g. here. Sentences beginning with "I" or "you" are sure a far cry from the impersonal EPO style. The references to the WOISA are also interesting.

Roufousse T. Fairfly said...

According to the BBC report linked to in the latest update to this post, the British patent is GB 2469049 B.

Aaaaargh! That's what happens when I leave a comment window for hours before I press send. I only see this now.

But I'm glad to see that my hunch was correct!

Anonymous said...

RE: Anonymous of 10:35.

I don't think that provision comes into play pre-grant, as until the patent is granted, the applicant does not have an "inellectual property right", only an application for such, and so there is no imminent infringement.

I'm currently revising for my UK foundation exams, so more than happy to be corrected on this though!

Anonymous said...

Anonymous of Thursday, 12 September 2013 15:06:00 BST

I think you are sort of correct. In the UK, the applicant does have some rights pre grant, but cannot enforce these until post grant (see Section 69).

Anonymous said...

It would be good if Dyson rather than blowing hot and cold on the UK and global IP system took some advice from his patent staff as to what he sensibly should say. Then perhaps people may take his rants seriously.

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