Wednesday whimsies

The IPEC: you only need to wield
a small stick if you're conductring
the whole orchestra
Yesterday's meeting to discuss the role of the Intellectual Property Enforcement Coodinator (IPEC) in the United States and the potential for adopting a similar device in the UK (details here) was an exciting and thought-provoking one.  The IPKat will report on it when he has received and edited the contemporaneous notes.  In the meantime he just wants to say a big "thank you" to all who attended and participated, and to express his gratitude to Mike Weatherley MP of the All Party Parliamentary IP Group for filling a gap in the panel at such short notice. Early indications are that this meeting yesterday will lead to a political initiative to investigate further what the UK needs and whether the IPEC role is feasible and affordable.  The Kat will of course keep readers informed.

The Kats are quite adept at
dealing with cases, but they
have to be able to find them first
Around the blogs.  The seventh in PatLit's PCC Pages series on the revamped Patents County Court for England and Wales has now been posted here.   This week's feature deals with how you actually launch proceedings.  Please note: when the 10th piece has been posted, the IPKat will publish a list of all ten, for the benefit of new readers; the series will then take a Winterval break and resume on the second Tuesday of January.   The SPC Blog, which delves into the arcane area of supplementary protection certificates for the extension of patent protection, has recruited a new team member, James Kinnaird -- currently a patent attorney but a person with real-world experience and with a couple of patents bearing his name.  The Class 99 design law weblog has a problem with a mystery case before the Court of Justice of the European Union that it can't track down: can you help?   Here's a thoughtful piece on The Bright Spark, all about the use and abuse of the defence of "I'm using my own name" in trade mark law.

Personal opinion: patents and inventivity.  Aaradhana Sadasivam writes:
"'Necessity is the mother of invention' is a famous quote from Plato's Republic.  But how does one define “necessity”? A popular website offers, among other definitions, “an unavoidable need or compulsion to do something: not by choice but by necessity”. It has shades of inventive step requirement of patentability -- addressing a long-felt demand. So. at step one of the genesis of an invention, one invariably starts with an inventive step, big or small, in mind and gradually passes other milestones before arriving at an invention that is worthy of a patent protection. 
Keeping the noise out,
and the drama in ...
Could we then say that inventive step is the driving force of invention? For example, if you live in a place that is next to a super highway that eases the traffic to people’s favourite destination on Saturday and Sunday evenings, and during which you just hope to have curtains that are dusted with special nano-particles that absorb all that horrendous traffic noise but let the cool evening air come in unobstructed and into your home. You then resolve to fight the problem. Then isn’t it the inventive step that pushed you to arrive at a magical nanoparticles-dusted curtains? You actually started with an inventive step in mind and somehow managed to steer through the maze of “novelty” that might be of oceanic proportions!

If the above is true, then why on earth, it is always novelty that is looked into first and before inventive step which is the driving force that generates an invention that might be worthy of a couple of patents".
The IPKat suspects that one or two of his readers might want to say a few words by response.

For those who want to try
their hand at transplants ...
Stavroula Karapapa (Law Lecturer, Brunel University, West London, none too far from Heathrow Airport) tells the Kat that Brunel's Centre for International and Public Law is holding a seminar at Brunel University next Wednesday, 1 December at 11:00am in Terminal Five.  The guest speaker, respected IP scholar Michael Birnhack, is speaking on “Legal transplants and cultural colonialism: Hebrew authors and English copyright law in Mandate Palestine”. Further particulars are available here.

Publications news.  The eight-times-a-year Journal of Business Law (JBL), published by Sweet & Maxwell, is busily beefing up its intellectual property content.  Issue 8 for 2010 carries two IP pieces: Cheng Lim Saw's "Goodwill Hunting in Passing Off: time to jettison the strict 'hard line' approach in England?", in which a Singapore scholar asks why it is so hard for a foreign trader to protect its interest in England, and "Arbitration of Patent Disputes in Turkey" by Armagan Ebru Bozkurt Yüksel. This piece looks at public policy, jurisdictional and procedural issues and will be handy for anyone with the misfortune to have a contentious patent matter to settle in Turkey.
Wednesday whimsies Wednesday whimsies Reviewed by Jeremy on Wednesday, November 24, 2010 Rating: 5


  1. Why novelty first? The trouble is that claims do not state the inventive step, but rather define something which has the inventive step. Once a claim is drafted there can be errors in reflecting the inventive step (even a well drafted one may pop up surprises in parts of its range) and also there may be differences of understanding and even representation (ever seen an inventive step argument that is plainly nothing to do with the claim?). Novelty provides a check. First there is the process of trying to work out what the inventive step of the claim actually is, where the first step (in the problem and solution approach but it is also probably a ncessisty of a step) is to work out the difference between the claim and the prior art from which the the inventive step can be judged. However if there is no difference there can in strict logical be no inventive step. The examiner or third party can therefore say quite clearly that the claim is wrong, lacking novelty, and send the applicant back for a rethink. Assuming the examiner is right that is hard to argue with.

    Examiner's do of course sometimes say I can see you have an inventive step here but you have claimed it wrong since your claim clearly reads onto D1. While that is helpful in many cases because it points the way forward it does not always work out as the examiner expects since he must be imagining a claim that has that inventive step and the applicant may have another idea.

    So yes we could sometimes proceed a bit quicker if inventive step as well as just raw novelty were always considered but not doing novelty would simply mean that the ground being argued over is not defined.

  2. Didn't there used to be a story on here about the OHIM Admin Board election results?

    Press freedom?

  3. Dave -- I took the story down once it became apparent that there was a very high likelihood that it was a prank perpetrated against the person in whose name it was sent. I'm happy to run stories and publish opinions, but not to see people embarrassed and their careers possibly damaged by what, prima facie, looks like malicious third party activity. If the person who sent me the story cares to contact me and explain (i) who he or she is and (ii) why I was sent the story, I'll be grateful -- if it can be shown to be bona fide I'll reinstate it.

  4. Thank you, Anon @ Wednesday, November 24, 2010 12:43:00 PM. Your response is very helpful. I had the question in my mind for soemtime. Thank you, once again.

  5. Jeremy,

    That sounds fair. A very specialised form of sabotage on someone's behalf, then!

    Still, I couldn't help but agree with the alleged judgment given.


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