SOME POINTS TO PONDER

Going to court? 'spec so ...

The IPKat thanks Jim Davies (consultant solicitor, Bell Dening) for sending him this wonderful link to the the Glassesdirect.co.uk website, carrying correspondence between lawyers for Specsavers and itself over Glassesdirect.co.uk's "Specspensive" advertising campaign which enlists cartoon sheep in its drive to persuade Specsavers' customers that they are being fleeced.

The Kat awaits the outcome of this springtime battle between rampant law firms Bond Pearce and Bristows. For the sake of common sense he hopes that the combatants will not lock horns and that the matter will be dealt with sensibly. Merpel says, the court is not a good place for the loser to be - the adverse publicity could be devastating.


Bursting to countersue

Thanks too to Ben Challis for this link to the report on Burst.com's counterclaim that Apple`s iTunes Music Store, iTunes software, iPods and Apple QuickTime applications infringe four of Burst's US patents.

Left: Apple + Burst = ?

The IPKat wonders whether the vast quantity of US hi-tech patent infringement litigation does not in fact serve the same function as organisations like ETSI in Europe, being a means of establishing industrial standards in the new technologies. Hmm, says Merpel, that seems a costly and painful way of establishing industry norms to be - even if litigation in the US can be swifter than consensus-seeking in Europe.


The Enforcement Directive in the UK. An expert writes ...

Ever the gentlekat, the IPKat would never dream of exposing the identity of his friend who has sent him the following comment on the UK's implementation regulations for the EU's IP Enforcement Directive (see earlier blog here, for skeletal details and links):

"The regulations introduce a mandatory disqualification from the ability to recover legal fees if a claim is based on an infringement occurring after a registrable transaction occurs but before it is registered, if there is more than 6 months delay (see eg changes to the Patents Act 1977 s.68 in Sch 2 Para 4 - did I miss that in the consultation? If it was there, the significance of it did not occur to me).

As an example consider a patent held under a chain of title that includes a late-registered transaction. If the patentee claims in the usual way for all infringements in the limitation period without specifically renouncing any claim to infringement during the late registration period, it appears that the court will have no discretion to award costs to the patentee at all, even in respect of later infringements or in respect of defending a validity attack. There is a big incentive here for the infringer to discover one infringing act during the late registration period that is covered by the claim.

It seems to me that the new form of s.68 is if anything even more penal than the version it replaced. Patentees with a late registered title now have to elect (pre-Islands Records disclosure) between dropping their claim to damages during the late-registration period and recovering costs, or pursuing their damages claim and trading an immediate award of costs for an unquantified amount of damages.

The directive requires that "Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this". It seems to me that, by adopting s.68 as a blanket rule prohibiting costs recovery following a failure to register, the UK has failed to implement this requirement.

Maybe the UK implementing regulations could be read as limiting the costs penalty to the costs attributable to claims falling in the relevant period, but that is not what they say and it would be a risky course to rely on.

One route for the patentee might be to issue two claims simultaneously, one for post-registration infringement and one for infringement pending registration, and ask the court to schedule the hearings through case management. To me, that doesn't appeal.

As there are no transitional provisions we may find out how this works at the first post-29 April trial to feature a patent with a s68 history".

The IPKat's friend adds (and this is why you can see he wants to remain anonymous):

"If you would like to blog it, please do, but it would be worth a sanity check first because either me or the regulations have lost the plot. If it's right it's another reason to cite as to why the UK is a patent-unfriendly jurisdiction".

The IPKat did his own check and must reluctantly agree that this analysis is right - or have we both missed something? Please, help!