Wednesday whimsies

Thank you 1. The IPKat was delighted to learn from David Stone that the readers of this blog have rallied round to help him replace his precious stock of lookalike products (see "URGENT: call for lookalikes -- can you help?", here).  Apparently David has even procured a Reckitt Benckiser sprayer (don't point it at me! says Merpel).  It's good to see members of the intellectual property community rally round to assist one another, adds the IPKat.

Either Martin gets to Dallas,
or the fish get his paper
Thank you 2.  Donations to send young Slovak IP scholar and blogger Martin Husovec all the way from Central Europe to Dallas, Texas, for  this year's International Trademark Association Meeting continue to come in.  We can now tell readers that, if we can't get him all the way there, he can now afford to get across the rest of Europe and most of the way across the Atlantic too.  There are still opportunities to donate (click here for details) and this Kat hopes that some of the large law firms with which he has been in discussion will soon commit themselves, since all the contributions committed so far have come from small practices.

The IPKat posted this quick note on today's UK Supreme Court decision in Schutz v Werit, knowing full well that his readers would soon be rifling its contents for gems of value. Gary Moss (EIP) was one of the first to strike gold.  He writes:
Paragraph 38:- “The House of Lords and this court have emphasised on a number of occasions the desirability of national courts following the established approach to infringement of the Technical Board of Appeal of the European Patent Office.” 
Adds Gary: since when did the EPO opine on issues of infringement? He then points out a statement in the following paragraph: “The parties in this case have not referred to any relevant decision of the EPO ...  Wonder why that is? Oh dear!"  Merpel notes that MaxDrei also spotted the paragraph 38 curiosity, posting a comment to that effect below the original Katnote.  Thanks, Gary and Max.

A little while ago the IPKat's New Zealand friend Ken Moon (AJ Park)  wrote to draw his attention to the decision last December in Fisher & Paykel Financial Services v Karum Group LLC [2012] NZHC 334 on software copyright and misuse of confidential information. The judge essentially adopted the Navitaire, Nova and SAS approach in relation to the claims of copying software process logic and functionality and upheld FPF's defence to this counterclaim. However, despite some slight inspection of Karum's source code, he decided in all the circumstances that the third limb of the Coco v Clark test had not been made out.   Karum has appealed to our Court of Appeal. Connoisseurs of long drawn-out litigation will notice that this whopper of a case, totalling 268 paragraphs, followed 39 days of hearing between August 2011 and February 2012, with judgment being given some ten months later.  The Kat has a horrible feeling that Ken also sent him a note on this decision which he has managed to lose, so watch this space ...

The IPKat has learned from regular info-supplier Chris Torrero (katpat!) that the United Kingdom Parliament's Commons Science & Technology Committee has published a report with the dramatic-sounding title of “Bridging the valley of death” on the somewhat more prosaic but no less important problems of commercialising innovations developed in universities. The bit of the report that specifically addresses intellectual property issues beginning at paragraph 71 (page 25 of the 211-page report, page 27 of the pdf). Notes Chris, the report suggests making the mediation service of the Intellectual Property Office compulsory -- with penalties in the form of costs for those who refuse to mediate. It also recommends expanding the “Easy Access IP” cross-licensing system. “Refusal to mediate” is an interesting concept that is none too easy to define, since there is no clear dividing line between actually saying "no" and saying "yes, but I'm not going to budge from the position which I currently hold before mediation commences. Secondly, this can only work in respect of cases where both parties are substantially solely based in the UK.  The IPKat is currently in favour of all forms of mediation, whether merely as a prelude to litigation in which the issues become more clearly focused or as a means of ending a dispute outright, but he hopes that the IPO's mediation will be seen as just of a range of options for disputing parties rather than as the only show in town.

Guest blogger Sean Gilday's recent post on scams and, among other things, the use of "Intellectual Property Office" as the name of the UK's Patent Office, attracted the attention of veteran patent enthusiast Alan W. White, who writes:
" ...  The correct name of the UK IPO is, as you say "The Patent Office", but this does not arise from s.112 of the Patents Act 1977. It arises from the unrepealed section 62 of the Patents and Designs Act 1907 ... I draw attention to ... the word "shall". Thus, the "IPO" breaks the terms of the statute governing its very existence. 

The following (still existing) s. 63 of that 1907 Act also defines the term "comptroller-general" as a then -continuing definition, this stemming from a definition to be found in wording in the Patents, Designs and Trade Marks Act 1883 (repealed entirely by this 1907 Act). 

As regards, s.112 of the Patents Act 1977, the "Level 4" maximum fine still stands at £2,500 ..., this sum not having (yet) been increased from the figure decreed in 1991. However, the recent Legal Aid, Sentencing and Punishment of Offenders Act 2012 (c. 10), in sections 85-87 ..., provides power to amend any such maximum fine under secondary legislation, but my researches have not yet found any Statutory Instrument  making such a change. 

I am not aware that any prosecution for breach of s. 112 (or its predecessors) has ever occurred but ... warnings have been issued which have led to withdrawal of job-vacant advertisements without the need for prosecution. Anyway, there must be some doubt as to whether s. 112 would apply to misuse of the term "IPO"".
Wednesday whimsies Wednesday whimsies Reviewed by Jeremy on Wednesday, March 13, 2013 Rating: 5


  1. I do find it rather ironic that the UK IPO and the UK Courts feel that they are obliged to follow EPO precedents other than "G" decisions, when the EPO itself considers that it is only obliged to be bound by "G" decisions. Boards have observed that the EPO relies on a legal code (the EPC) and, unlike Anglo-Saxon legal practice, is not necessarily bound by precedents, as decisions are not "case law" as UK practitioners understand it.

    See for example extracts from the respective "Reasons for decision" of the following decisions:

    T 0154/04:

    2. According to Article 112(1)(a) EPC, a referral of questions to the Enlarged Board of Appeal is only admissible if a decision is required in order to ensure uniform application of the law or if an important point of law arises. The answer to the referred question should not be merely of theoretical or general interest, but has to be essential to reach a decision on the appeal in question (see, for example, G 3/98 - Sixth-month period/University Patents (OJ EPO 2001, 62), Reasons No. 1.2.3).
    Under Article 16 RPBA, a question will be referred to the Enlarged Board of Appeal if the referring board considers it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal.
    A decision deviating from an opinion given in another decision of a board of appeal, a diverging opinion expressed in decisions of different boards, or a deviation from some national jurisprudence -- for example, from the UK case law of the Court of Appeal to which the appellant referred in support of its case -- are not per se valid reasons for referral (see also Article 15 RBPA). Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not "case law" in the strict Anglo-Saxon meaning of the term) and leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions or to refer a point of law to the Enlarged Board. The President of the European Patent Office may intervene under Article 112(1)(b) EPC, in particular if the legal situation becomes unclear for first instance proceedings.

    G 0003/08 :

    7.3.1 Development of the law is an essential aspect of its application, whatever method of interpretation the judge applies, and is therefore inherent in all judicial activity. In that light an element of legal development can even be seen whenever a specific case is subsumed under an abstract regulation. That is especially true of Anglo-Saxon law, where a decision on an individual case has far greater implications as a precedent than judgments in continental civil law. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal territory does not always develop in linear fashion, and earlier approaches may be abandoned or modified.

    T0910/06 :

    2.8 To the extent that the absence in the decision under appeal of any reference to the "established case law" referred to by the opposition division or even to decision T 615/95, invoked by the appellant (see section V, in particular subsections (b).(iii), (vi) and (vii) thereof and section XII.(a) above) is seen in itself by the appellant as a "substantial procedural violation" it must be recalled that unlike some Anglo-Saxon legal systems which are precedent driven, the instances of the European Patent Organisation work within a codified system of law, i.e. the European Patent Convention and its implementing regulations, and are constrained by case law only in the case of decisions handed down by the Enlarged Board of Appeal. Further the ratio decidendi of a decision of a Board of appeal is only binding, in the case of remittal, on the department whose decision was appealed in so far as the facts are the same (Art. 111(2) EPC). ...

  2. Great comment from "Ron", about the difficulties that lawyers from English common law jurisdictions have with the way caselaw persuades, in civil law jurisdictions. Perhaps a reader from Canada can comment?

    It is a daily occurrence in oral proceedings at the EPO, that a representative from the UK will cite this or that T Decision as if it is determinative. Chair usually explains why that practice is ineffective with the observation that for every decision by one or other DG3 Board, pointing one way, one can find another one that points in the other direction.

    Actually, the DG1 "bible" is The Guidelines and the DG3 "bible" is its White Book of its digested caselaw. Robin Jacob "got" the way it works, at the EPO. His copy of the White Book took pride of place on his desk. I wonder whether Lord Neuberger has ever even seen the thing.


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