100 not out for UK-IPO opinions - or is it 98?

The UK-IPO has proudly announced today of the 100th (according to their calculations - see below) Patent Office Opinion to be issued since section 74A came into force in 2005. By some sort of happy coincidence, the opinion in question (number 19/09, available here) has been issued in response to a request by the well-known vacuum cleaner company Dyson, and supports their view that a patent owned by their competitor Samsung is invalid. The UK-IPO say:

"The 100th opinion, which like all other opinions can be viewed on the IPO’s website, considers whether a patent owned by Samsung which relates to cyclonic vacuum cleaners is invalid as claimed by Dyson. Whilst Dyson has previously challenged a number of patents owned by Samsung in the Courts [see the IPKat's previous post here for details], this is the first time that the company has requested an Opinion.

At only £200 to use the service, and with a 12-week turnaround, the service has proved to be popular with both large and small businesses as well as individual inventors. Other household names who have used the service include Marks & Spencer [Opinion 02/08] and Unilever [Opinion 27/07].

Previous opinions have considered the validity and infringement of patents relating to for example pharmaceuticals, methods of genetic testing, devices for producing aircraft engines as well as less complex devices for dispensing cold beer and securing garden sheds. A recent opinion that attracted media attention concluded that an innovative cable tie that received investment from two dragons in an episode of the BBC’s Dragons Den infringed an earlier patent owned by another company. [as commented on by the IPKat here]

In light of success of the opinions service, the IPO is considering extending the service; a questionnaire is available for customers to give their views on this."

While the IPKat thinks that the Opinions service is in general a Good Thing, he is quite sceptical about the idea of extending the service to cover aspects such as patentability, sufficiency and entitlement, areas that tend to be a lot more muddy and therefore less suited to a quick review on the papers that the opinions service takes the form of. He strongly recommends that his readers take the questionnaire (which only takes a minute or two) and express their own views on the matter.

On a more pedantic note, the IPKat has just counted up the opinions that have actually been issued to date. According to his calculations, based on the UK-IPO's own records, opinion 19/09 is actually only the 98th opinion to be issued. Even taking into account the five cases where an opinion was refused, or the other five cases where an opinion request was withdrawn, the IPKat is unable to arrive at the conclusion that Dyson's opinion is the 100th. Can any of his readers help the IPKat with his counting?

Postscript (21 September): The count now adds up to Dyson's being the 100th to issue. How this happened is beyond the poor confused IPKat's abilities to comprehend, but he suspects that there are now two opinions on the page that were not there before. This one certainly wasn't there last week.

Rapstrap

The IPKat noticed with interest an opinion issued recently by the UK-IPO relating to an cable tie (pictured right) known by the name (and registered trade mark) 'Rapstrap'.  Regular viewers of the BBC programme Dragons' Den may already be familiar with this name, as it relates to one of the programme's major success stories (see relevant clips from the BBC here), resulting in entrepreneur Andrew Harsley securing a £150k investment from Dragons Duncan Bannatyne and James Caan.  Rapstrap Ltd then went on to secure an order in September 2008 for 1 billion units, amounting to £36M according to this report, in which Mr Harsley is quoted as saying, "When I first came up with the idea, I could not believe someone else hadn't thought of it". 

Unfortunately for Mr Harsley, it turns out that someone had already thought of the idea, and at least once before.  Bizarrely, it appears that this someone also goes by the name of Andrew Harsley, who is named as sole inventor on European patent EP0765281, issued in March 1999 to Millepede Cable Ties Limited.  Now known as Millepede Marketing Limited, the patent proprietor requested an opinion under section 74A of the Patents Act 1977 regarding whether the Rapstrap product infringed claims 1 and 5 of the patent.  Two relevant figures from the patent are shown below.

Claim 1 of the patent reads as follows:

"An integrally formed tie strip (10), made of a semi-rigid resiliently bendable material, comprising a series of unit cell portions (1) connected one to the next along the strip, each of the said unit cell portions (1) being formed to define at least one latch member (11) projecting laterally of the strip’s longitudinal axis, and to define an aperture (14) through the strip, characterised in that the aperture (14) of each unit cell portion (1) is bounded on at least one side by a spring portion (13) formed by parts (13) of the strip that extend transversely with respect to the said longitudinal axis, the spring portion (13) being resiliently deformable so as to enable the shape of the aperture (14) to be changed, wherein a first unit cell portion (1) of the strip can be passed through the aperture (14) of a second unit cell portion (1) of the strip so as to form a closed loop by way of the spring portion (13) of the first and/or second unit cell portion (1) being bendingly deformed such that the shape of the aperture (14) of the first and/or second unit cell portion (1) is respectively changed upon relative passage of the unit cell portions (1), and where the spring portion (13) of the first and /or the second unit cell portion (1) relaxes after said passage so that the at least one latch member (11) of the said first unit cell portion (1) inhibits withdrawal thereof from the aperture (14) of the said second cell portion."

The examiner found this claim to cover the Rapstrap in the form presented.  Rapstrap Ltd, through their patent attorneys Agile IP, attempted to argue that interpreting the claim to cover their product would inevitably mean that it would be invalid over another much earlier patent, US 3,438,095 (figures 2 and 3 of which are shown below). The examiner rejected this argument because consideration of the validity of the patent would be beyond the scope of the opinion [the IPKat notes that this would not prevent another opinion being requested relating to the issue of validity].

The examiner then concluded that the Rapstrap tie fell within the scope of claims 1 and 5 of EP0765281, implying that it would infringe the patent.  

The IPKat suspects that there is a lot more going on behind the scenes than is apparent on the surface of this opinion (which, as we all should know by now, is strictly non-binding and does not mean that Rapstrap will be now forced to pay damages or royalties to Millepede).  He is quite surprised though that the Dragons chose to invest in someone who apparently had no control of a patent covering the product he was pitching, which he presumably would have known at the time the pitch was made.  The IPKat further wonders what due diligence (if any) went on before the investment was made. 

Updates: Thanks to a commenter below, some background to the story can be found here. A press release has now been issued by Millepede, and the story has now been picked up by the Daily Mail here, and the Scotsman here. 

Vexatiousness in Patent Office Opinions

A recent opinion issued by the UK-IPO has come to the IPKat's attention.  The UK-IPO, on request, issues opinions under Article 74A regarding granted UK patents.  Such opinions, which are limited to considering infringement and validity (but not exclusions from patentability), are strictly non-binding, but they could be useful as aids in settling minor disputes, particularly as the (official) cost for making a request is only £200.  Sometimes, however, requesters might get a bit carried away with making request after request on the same patent, which could vex a patent proprietor, who may feel that he is obliged to respond to the request each time in order to defend himself.  There is a provision designed to prevent such vexatious requests from being allowed, and specifically if the matter in question has already been considered in proceedings before the UK courts, the IPO or the EPO (where the patent has been granted by the EPO). 

In Opinion 21/08, a request was made for an opinion as to whether certain claims of EP(UK)0605800 were valid, in particular whether these claims involved an inventive step over the prior art as defined by documents cited by the requester. The patent proprietor filed observations claiming that the request was vexatious according to rule 94(1)(a), because the issues had been already considered in relevant proceedings, including a cancellation action submitted to the German Federal Patent Court in which certain of the documents were presented that could have been used in an earlier request for an opinion (08/06) by the same requester.  

The examiner noted that the patent proprietor had not backed up their assertion with any evidence, and had not shown why the requester should have been aware of the relevant documents at the time of making their earlier request for an opinion, in June 2006. Although it was undeniable that there had been an earlier opinion request, as well as an EPO opposition (which had been withdrawn) and the action in the German Patent Court, all relating to the same patent, the examiner considered that there was nothing to link them in a way that suggested vexatiousness. A case had not therefore been made out which would allow a conclusion to be made that the request was vexatious and that an opinion should not be issued. Also, the meaning of 'relevant proceedings' according to rule 92 did not even cover actions in the German courts [rule 92 defines the term as "proceedings (whether pending or concluded) before the comptroller, the court or the European Patent Office"]. 

The IPKat thinks that this must be right, but would caution against inferring any general principles from the opinion which, after all, was only given by a patent examiner and is not binding on anyone at all.  It does, however, make sense that the opinions service should be available, within reason, to allow a requester to have another go if they did not succeed first time, provided the proprietor is not inconvenienced too much by it.  In this case, though, the requester failed again to get what they wanted, as the examiner found the patent to be valid. The IPKat wonders if the requester has the nerve to try yet again, and would be interested to see what result they get on their third attempt.

A Victory for Cats (and anonymity) at the UK-IPO

As a cat, I feel it is my right to be able to catch, kill and eat birds as I see fit. Bird tables are usually good places to do this, as humans often use them to attract birds with food. I was therefore startled and disturbed, not to say quite angry (see picture, left, of me looking less than pleased) to see that someone had filed a request for an opinion on a GB patent (GB2339667) titled "Cat Free Extended Feed Bird Table". The patent claimed the following:

"A bird feeding table having more than one feeding container or tray each being supported centrally on a pole, each container or tray being at a different level on the pole, there being at the lowest level, a plastics tray having an upstanding peripheral lip, the plastics tray having a horizontal area larger than the horizontal area(s) of the or each tray or container above."

The bird tables described in the patent (see example, right) emphasised that the purpose of the plastics tray with the upstanding peripheral lip was for "making it impossible for cats to jump on to the table, or see birds that are feeding from within the base lid". Now, of course, if that were to be the case, I would be very unimpressed by such a bird table being placed in my garden.

The requester and patent owner, a Mr John Hadleigh, was alleging that his patent was infringed by products alleged to have been imported into the UK and sold by HHS Trading (UK) Ltd (see picture, below right).

To my eyes, it looked like a fairly easy job to get birds from these allegedly infringing tables. From my feline perspective, if I was standing next to this table I would definitely be able to see the bird standing on the rim and, if feeling energetic enough, would be able to at least make an attempt to get it. Whether I got the bird or not would be a factor of my agility and the bird's fleetness, but not to do with the bird table preventing me.

Obviously, I could not stand idly by while such a patent was being used in this way, largely because I would much prefer to see bird tables of the HHS sort than the ones made by Mr Hadleigh, even if Mr Hadleigh's tables didn't work as advertised (as, I suspect, would be the case).

So, within the 4 week time limit specified by Rule 77F of the Patents Rules 1995 (this was before the new rules came into force, but the new ones are just the same in substance), I filed some observations on the request. I first wondered whether I would be allowed, since Rule 77F specifies that "any person" may file observations. Thinking about it for a little while, I proposed to the examiner the following:

"According to rule 77F, “any person may, before the end of the relevant period, file observations on any issue raised by the request”. I submit that the term “any person” must also include cats, not least because the question of whether the articles submitted by the requester infringe the patent is clearly of vital relevance to animals of the species felis sylvestris.

Furthermore, since my paws are unable to operate keyboards effectively, I have delegated the responsibility of preparing and filing these observations to my servant and amanuensis, who wishes to remain anonymous. On a plain interpretation of rule 77F, the observations have been filed by a person, if this is construed to mean a human [Tufty comment: the observations were filed by email]. To construe otherwise would be to confer digital manipulation skills that I do not possess.

If the examiner maintains the latter interpretation (i.e. that observations must be filed by a human person), I further contend that there is no reason why anonymous (or pseudonymous) observations should not be taken into account, not least because there are no provisions within section 74A or the associated rules 77A to 77K to prevent this."

I then went on to point out to the examiner that, on a normal construction of the patent claim in line with Kirin Amgen, the claimed bird table would need to have at least an element of being “cat-free”, i.e. constructed such that cats could not easily access birds feeding on the table, even though the claim did not literally specify this. The alleged infringement would clearly not be cat free, particularly if I had anything to do with it. Although this should have been enough to dispose of the matter, I also made the point that the alleged infringement did not have the "upstanding peripheral lip" required by the patent, and even if it could be termed to be upstanding it would not serve the purpose of the lip of the patent claim, which was to prevent cats from jumping up and from seeing birds on the table.

After the usual two month wait, the UK-IPO examiner then issued his opinion (now published as Opinion 24/07), and kindly sent me a copy. The most significant comment came in first, with the examiner saying:

"Observations were filed by an unidentified third party, which asserted that neither of the products infringed the patent. No observations were received from HHS Trading (UK) Limited.

Observations in reply have also been received from the requester. Whilst the requester disagreed with the observer’s conclusions, he supported the right of the third party to file observations anonymously. There are no provisions in section 74A nor rule 96 (formerly rule 77F) that prohibit anonymous observations. Accordingly, I intend to fully consider the observer’s comments in this opinion."

Following the usual Kirin Amgen approach, the examiner then assessed what the skilled person would understand the patentee to mean by the claimed invention, the skilled person in this case being a "manufacturer or vendor of structural garden products used in the care of animal wildlife".

The examiner did not agree with me that the claimed invention should be construed specifically as a “cat-free bird feeding table”, since in his view it would be unrealistic to expect the protection to be absolute (although this was not what I had actually stated). The examiner further stated,

"Like all animals, cats can vary significantly in size and may even use garden or topographical features, such as a fence or elevated ground, to assist in their efforts to reach birds feeding at the table. I agree with the requester, therefore, that the claim should not be construed in the narrow fashion proposed by the observer."

The examiner did, however, agree with me that the "upstanding lip" of the lowest plastics tray should be substantially vertically disposed with respect to a planar base. This was sufficient in itself to rule out the HHS bird table from being an infringement, the examiner agreeing with me that the lower receptacle of the HHS bird table did not comprise an upstanding peripheral lip when the claim was properly construed. A second, slightly different, alleged infringing article was also ruled out of being an infringement on the same claim construction.

Although I am a little upset that the examiner did not choose to recognise my feline rights to file observations, and that he did not in my view get the construction right, the correct result appears to have been arrived at. Probably of more interest to the general patent practitioner is that there is apparently no reason why observations cannot be filed anonymously. For other cats out there, you now know what to do to assert your feline rights.

O2 pushes the envelope

The IPKat has learnt of an intriguing decision from Professor Ruth Annand, sitting as the Lord Chancellor’s Appointed Person. O2 applied to register a range of mobile phone icons, such as a picture of an envelope, a football and a phone with an arrow pointing at it (used, it seems, to denote downloads) for a variety of goods and services, including telecommunication apparatus and services.

The Hearing Officer refused the applications as being descriptive under s.3(1)(c). In a nutshell, Professor Annand said that this was the wrong approach. Instead of looking at whether the mark in question consisted exclusively of signs or indications that designated the characteristics of the goods or services, or if instead they contained other elements which would have rendered them not wholly descriptive, the Hearing Officer looked at the icons to see whether they had any additional elements (such as colour) which would confer distinctive character upon them.

However, Professor Annand held that the Hearing Officer was correct for most of the icons in terms of result. The marks were barred from registration – but under s.3(1)(b) NOT s.3(1)(c) since consumers would not seen them as distinguishing origin.

This type of case makes the IPKat rather uncomfortable. There clearly is a public interest in keeping signs which are sort of allusive to one of the functions of the goods or services free, but is not directly descriptive of those goods or services free, but the system isn’t quite equipped for tackling these kinds of concerns. It seems risky to leave the availability of such signs to other traders to consumer perception, but this is exactly what shifting the issue to s.3(1)(c) does.

Foley says relax

The IPKat brings news of a decision of the Trade Mark Registry.

Thatcher's children will be familiar with the band Frankie Goes to Hollywood. The band had a number of chart hits. The lead singer was Holly Johnson, although the band also had (at various times) four other members. Johnson left to pursue a solo career in 1987, upon which the band ceased performing. However, they reformed, minus Johnson and with a new lead vocalist, for the 'Bands Reunited' TV programme in 2003.

In April 2004, Johnson applied to register FRANKIE GOES TO HOLLYWOOD as a trade mark in various classes. The remaining band members opposed the application, citing an earlier right protected by passing off and bad faith.

Mr Hearing Officer Foley allowed the opposition on both grounds.

The key issue for s.5(4) (passing off) was whether the goodwill gravitated to Johnson alone, as the lead singer, or whether it could be attributed to the band as a whole. It was irrelevant that Johnson had thought of the name, and it was likewise irrelevant that it was somewhat creative. The legal arrangements in force meant that, at the time Johnson left the band, it existed as a partnership at will, meaning that any goodwill attached to the partnership, rather than its individual members.

The fact that the band was asked to reform for 'Bands Reunited' meant that any goodwill in the original band survived until 2003, and was bolstered by rereleases etc and the fact that legal action had been taken against others trying to use similar names during that period. However, this goodwill would not have accrued to the reformed band. This residual goodwill resided in the partnership, rather than the individual band members, and therefore Holly Johnson's attempt to register the mark on his own amounted to a misrepresentaiton that would lead to passing off.

Johnson had also acted in bad faith. He applied to register the application without the knowleged of the other band members and to monopolise the name in a way that would stop them from using it. It was irrelevant that he believed that he owned the name, and so thought he was acting acceptably.

The IPKat wonders whether the position would be the same in a situation where the band was known by the name of the lead singer, such as Cliff Richard & The Shadows. An argument could be made for saying that the lead singer wouldn't acquire any of the goodwill of the band name (as opposed to his own) since his name would be clearly separated from that of the band.

UK-IPO Opinion: Photomosaics "not novel"

The IPKat doesn't usually comment on individual UK-IPO Opinions under section 74A, but this one caught his eye and he thought some of his readers might be interested.

In Opinion 01/07, a request was made regarding the validity of EP(UK) patent 0852363, in particular whether certain claims in the patent were novel and inventive in the light of various submitted documents. The requester also sought an opinion as to whether the invention was patentable under section 1(2).

The request was made after Patent Office proceedings for revocation were initiated by the requester. In an interim decision (O/345/06), the Hearing Officer suggested that an opinion might assist in assessing the strength of the claimant's case, given that the claimant was unwilling to submit any security for costs. Revocation proceedings were stayed pending issuance of the opinion.

The patent, having a priority date from a US filing in January 1997, related to computerised methods of generating 'photomosaic' images, such images being made up of many smaller images selected for their match to portions of a target image. The invention lay in how to create a photomosaic by dividing up a target image into tile regions, each tile region being divided into sub-regions. Images were selected for each tile region based on a match in terms of visual similarity to the sub-regions. The end result was a closer visual match in the mosaic to the target image, because sub-regions of the individual tiles matched the corresponding areas of the target image more closely.

Observations were filed on behalf of the patentee, maintaining their view that the invention was new, inventive and not excluded from patentability. The patentee also submitted witness statements and supporting evidence relating to the public availability of a thesis written by the inventor Robert Silvers (photo above right) before the priority date of the patent.

The examiner first considered that, since the comptroller was empowered under section 74A(1)(b) to issue opinions only on the basis of sections 1(1)(a) and (b), she could therefore give no opinion on patentability under section 1(2).

The examiner considered the issue of novelty with respect to various prior art images apparently created by a mosaicing process. The requester alleged that a computerised process was known before the priority date in which a photomosaic image was made through selection of source images based on visual similarity. Supporting evidence was provided in the form of published photomosaic images. The examiner found no evidence in the images to suggest the actual process used to create them, and as such the images did not provide an enabling disclosure of the patented method.

A document describing the creation of a mosaic image from a set of dominos was considered. In this, a target image was divided into cells, and the cells compared with domino halves, which were then positioned in pairs in the target image. The examiner determined that this did not disclose all the features of the claimed invention, since it did not disclose a computerised method, no images were involved (only real dominos) and no measurements of visual similarity based on calculated differences were made.

Mr Silvers’ thesis was then considered. It was agreed that the thesis provided a full enabling disclosure of the patent, particularly given that significant sections of the patent appeared to be derived from the thesis.


Left: 'Christ' rendered with images of scrolls (from photomosaics.com).


The only question was therefore whether the thesis constituted prior art under section 2(2). The requester provided a witness statement from Dr Ken Knowlton, who stated that he had received a copy of Mr Silvers’ thesis in the course of his role as reader of the thesis prior to its submission in June 1996. Dr Knowlton also stated that he had not been under any confidentiality agreement during this period, which pre-dated the priority date of the patent.

A further statement was provided from Michael Hawley, Mr Silvers’ thesis supervisor, who also asserted that there was no confidentiality agreement in place, and that it would unusual for there to be one at MIT where the work was carried out.

The patentee disputed that the evidence showed the thesis as having been published in June 1996, and argued for the later date of December 1997 on the basis of a date stamp from the MIT archives. A statement from Mr Silvers was also provided, stating his belief that the communications with Dr Knowlton and Mr Hawley was on the basis of “a mutual expectation of trust and confidentiality”. The patentee also referred to Coco v. A.N. Clark (Engineers) Limited [1968] FSR 415, claiming that Dr Knowlton would have been aware that communications made and received in the role of thesis adviser were expected to be treated with confidentiality.

The examiner determined that, given the date stamp, the evidence did not show that the thesis was publicly available before the priority date. However, the evidence also did not show that the prior disclosures to Dr Knowlton and Mr Hawley were made with a reasonable expectation of confidence. The witness statements provided no more than assertions from each side, with no factual evidence provided in support. There was also no evidence provided that showed the thesis was put on a ‘patent hold’ before the submission date, which suggested that there was no intention to file a patent at that time.

The examiner consequently determined that the burden of proof lay on the patent proprietor to prove the existence of an obligation to maintain secrecy, which in her view had not been shown by the evidence provided. As such, the thesis was seen to constitute a public disclosure before the priority date and therefore rendered all the patent claims invalid through lack of novelty.

In case she was wrong, the examiner nevertheless proceeded to consider whether the claims, which had already been shown to be novel over each of the other cited documents, were inventive. Using the document disclosing domino mosaic pictures as a starting point, and following the established Windsurfing guidelines, the examiner found all the claims to be novel and inventive over the documents submitted by the requester.


The IPKat is very impressed by the lengths to which the examiner went (over 26 pages) to come to her opinion, given that the opinion cost the requester only £200. Unless the patentee can pull something out of the hat (and provided the claimant keeps his nerve and can stump up the required security) it looks like the patent stands to be revoked on the basis of a non-confidential prior disclosure by the patentee.

This case is, in the IPKat's view, a good example of why US inventors who might want to obtain patent protection outside their country need to take into account the fact that the US 1 year grace period is not applicable everywhere.