From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Tuesday, 2 August 2016

The Limerick Competition - the Results!

Forget Brexit and Article 50, forget the Chilcot enquiry, forget whatever sports competition is concerning you at the moment, worry not about the UPC.  Cast care aside, for I have the results of the Limerick Competition!

The IPKat was delighted to receive a goodly number of entries, in addition to those posted as comments on the original blogpost, which don't count. Post-entry, more than one applicant subsequently withdrew their application, which, as EPO practitioners will know, prevents publication if filed before the technical preparations for publication are complete.  This Kat and James Nurton of Managing Intellectual Property enjoyed reading them all (yes, I know judges always say that, but we really did).  While it was specified that "submissions will be judged according to arbitrary and undisclosed criteria", the IPKat will observe obiter that many entries lacked one or both of "a reference to the case being referenced, and a very brief (50-100 words) precis of its subject matter".  This did not affect the ratio decidendi since the limerick adjudged the winner was accompanied by both. (The requirement in the competition for an explanation as well as a limerick was an attempt to preserve the education remit of this blog, in addition to its fun element, notes Merpel).

The winner was declared to be John Boumphrey for this:

Starbucks (HK) Ltd & Anor V British Sky Broadcasting Group Plc & Ors (2015)
In any passing off claim,
Goodwill is the name of the game,
To use foreign goodwill
Does not fit the bill
Nor is reputation the same. 
[A claimant in a passing off claim had to establish that it had actual goodwill in the jurisdiction and that such goodwill involved the presence of clients or customers in the jurisdiction for the products or services in question. Mere reputation was not sufficient to amount to goodwill.]

while we also liked his other two submissions:
Robert Alexander Johnstone and others (2003)
The HOL worked to construe,
The ambit of section Nine Two,
And undid conviction
By use of description,
And pissed off the BPI too.
[To make out an offence under s.92 Trade Marks Act 1994, the use of the trademark in question must be as an indication of trade origin. The reasonable belief defence under s.92(5) was available to an alleged offender whether or not they were aware of the existence of the relevant registered trademark.]
(1) Vestergaard Frandsen S/A (Now Called Mvf3 Aps) & Ors V Bestnet Europe Ltd & 5 Ors (2013)
It’s a truth we all have to acknowledge
Without actual or objective knowledge
You just cannot breach
Your old firm’s microfiche
And their lawyers should go back to college.
[A former employee was not liable for breach of confidence related to the misuse of confidential information as she had not had actual or objective knowledge of the confidential information in question either during her employment or afterwards. To hold her liable would be inconsistent with legal principle and with maintaining the balance between effectively protecting intellectual property rights and not unreasonably inhibiting competition in the market place.]


Honourable mention goes to the indefatigable Chris Torrero for this:
Microsoft Corp. v i4i Limited Partnership 
If you say that a patent’s not new
When you go to the court for review
Your case must appear
Convincing and clear
So preponderance just will not do.

while we also liked his other two submissions as well:
Alice Corp. v. CLS Bank International
In Alice the SCOTUS has said,
Two steps that have to be read,
Just an abstract idea?
It’s perfectly clear,
It means that your patent is dead! 
PMS International Limited v Magmatic Limited (Trunki)
When you consider the design of a case,
Neuberger says what you must chase,
The difference he feels,
Is the colour of wheels,
And that which is on the sur-face.

A further honourable mention goes to a contributor who wishes to remain anonymous:
Cantarella Bros Pty Ltd v Modena Trading Pty Limited [2014] HCA 48 
There once was an Office down under
Whose examination practice caused wonder
When attorneys complained
The Registrar 'splained,
"High Court judgements? No place here!" Big blunder…
And here are the rest of our very enjoyable entries:
PJS (Appellant) v News Group Newspapers Ltd  
Privacy woes? Want an injunction?
The Supreme Court’s the place – they’ve got gumption;
Said the smug PJS,
“The Court’s heart I do bless,
Though Scotland will print, no compunction.”
 - Matthew Dick 
The Supreme Court does love free speech, but it
To newspapers will always say, “shut it:
‘Public interest’’s what counts,
On fraud, say, we’ll pounce,
But ‘of interest to the public’ won’t cut it”.
 - Matthew Dick
Positec v Husqvarna [2016] EWHC 1061
A Patents Court judge named Birss
Said obviousness disclosure’s a curse:
Inventors’ thoughts on prior art
Just ain’t worth a fart,
So directions to disclose ‘em I’ll reverse.
[Standard disclosure had previously been ordered in directions by consent, but the patentee, Husqvarna, applied to amend the directions by an order that there be no disclosure on obviousness.  As the judge explained “Disclosure from the patentee in obviousness cases has been a notorious point for many years.”  The authority is the Court of Appeal in Nichia v Argos, which, by a majority, did not make a prima facie rule against obviousness disclosure. However, in this case, Birss J decided that the thoughts and comments of the inventor in relation to the prior art would be unlikely to be probative, and would not be worth the cost. Accordingly, Birss J, who has never been keen on disclosure unless it can be specifically justified, reversed the direction on disclosure, and refused disclosure on obviousness.]
 - Stuart Jackson
Alice Corp. v. CLS Bank International 
When SCOTUS decided on Alice
The Justices sat in a palace
While the inventors’ defeat
Left them out on the street –
Perhaps it was done out of malice?
[The patent claimed a method to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary. Following Bilski v Kappos, the District Court held the claims invalid as being directed to an abstract idea, the en banc Federal Circuit agreed and the Supreme Court affirmed. This is generally seen as a blow to all software patents.]
 - Philip Grubb
You’ve all heard of IP Translator:
The bane of many a trade mark administrator.
You see they’ve all be dreading,
having to review every class heading
rather than chatting by the coffee percolator.
 - Cliff Kennedy
If generics cause you headaches, don’t despair,
there is a man in London who will care,
a champion of pharma,
with injunctions as his armour,
take Arnold’s patent cures, bad guys beware!
 - Reuben Jacob
Thanks to the USPTO we have Alice,
Whose decision meant no malice.
but trying to be "not abstract",
and with so many cases to track,
Patent agents will soon need digitalis.
 - "Daniel" 

Thanks to the generosity of Managing Intellectual Property, the prize of a complimentary place at an MIP event over the next twelve months is on its way to John Boumphrey.  Thanks again to all participants.

3 comments:

Anonymous said...

Re: Arnold

When you request an injunction he'll quiver,
For tis something he declines in a dither.
Instead he shall ask of he brought to task,
Be a dear boy and agree not to deliver.

Anonymous said...

There was once an attorney from Kilkenny,
Whose patents they were revoked once too many.
Yet it was of no matter to him,
That they were only good for the bin,
Because he’d been well reimbursed and had long since retired.

Anonymous said...

There once was a judge who liked fudge,
whose opinion we believed we could budge,
so why is it I ask,
that he took us to task,
and criticised our claims as just sludge?

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