Bilski

I'm going to have to record a new Lawcast shortly - and it will have to include something about Bilski. Fortunately not much, because it's not our Supreme Court - it's SCOTUS, not SCOTUK. And I don't have to post much here, given that Dennis Crouch has already said a lot about it and the IPKat has also had his or her say. I'm pleased to note that it seems to indicate that we reached the high-water mark of business methods patents in State Street, while not actually binning that earlier case. It seems to tell us more about what it doesn't do than what it does do.

The patent covered a technique for hedging for commodities traders in the energy market - a classic business method patent. The examiner rejected it because it was not implemented on specific apparatus (as processes generally need to be), it merely manipulated an abstract idea,, and it solved a purely mathematical problem. The Board of Patent Appeals and Interferences agreed and affirmed. The Court of Appeals for the Federal Circuit also affirmed, rejecting its own test for whether a claimed invention was a patentable process (whether it produced a "useful, concrete, and tangible result", as in State Street). Instead, it applied the "machine-or-transformation" test - a process can be patented if it is tield to a particular machine or apparatus, or it transforms the particular article into a differnt state or thing. On that basis the CAFC held the application was not patent-eligibible. In doing so it threw down a gauntlet to the Supreme Court: the machine-or-transformation test was crafted from precedents from that court.

The Supremes declined the challenge, and threw the gauntlet back. They affirmed the CAFC judgment but did not endorse an exclusive machine-or-transformation test. There was no need to look further than the bar on patenting abstract ideas. The fact that the Bilski patent involved abstract ideas was reason enough to refuse it, and automatically this meant that the machine-or-transformation test could not be the exclusive one for patentability of processes. Nor was there any need to define further what constitutes a patentable process. Justice Kennedy gave the opinion of the court, and concluded:

Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text. The judgment of the Court of Appeals is affirmed.

I sense that it's a bit of a disappointment - commentators were looking forward to much more robust statement about exotic patents, such as software and business methods ones. Instead, it sounds as if the court has said look at what the Patent Act says and work it out from there. The "machine-or-transformation" test is a tool to help, but not a rule to be applied in all cases. Nevertheless, Dennis Crouch detects something more in the judgment:

Although not rejected by the majority opinion, it is clear that the broad “useful, concrete, and tangible result” test is dead. That test is conclusively rejected by what I term the Anti-State-Street Majority — a majority created by the combining the two concurring opinions in Bilski and their five-justice majority.

Well, it would be a shame if software and business methods patents suddenly became cut and dried so there was nothing left to argue about!

Tip of the day: compensation for infringement of copyright

If someone infringes your copyright, your financial remedies will be either damages or an account of profits. The idea of damages is to put the parties back into the position they would have been, but for the infringement: if you'd have granted a licence had you been asked, a reasonable royalty will be the measure of damages employed, and if you wouldn't the judge will probably look at what the defendant has saved itself.

In an account of profits the court will find out what profit the defendant has made from the infringing act, and award that to the claimant: the profit, after all, is properly theirs.

Once upon a time (before 1988) a rather draconian remedy called conversion damages was available. The court would treat all the takings (not just the profits) from the infringement as the claimant's. The possibility of losing all the proceeds, not just the profits, made would-be infringers (including those whose activities might be marginal) think twice before going ahead.

Now the courts can award such additional damages as the justice of the case may demand. This sounds promising, but additional damages are very rarely awarded, for the simple reason that they push the boundary between compensation and penalty too far. Damages are not there to penalise the infringer, and once an award of damages has been made (so the claimant is restored to the position where they should be) there can be no room for anything to be added that can truly be called "damages".

Some countries - the USA being a prime example - give statutory damages. You can recover a certain amount without having to prove that you have lost anything. This is the blunt instrument that has been used to attack illegal filesharers in the last few years, resulting in substantial awards of damages against them - notwithstanding that very little actual damage has been caused. Statutory damages neatly sidestep the issue.

Tip of the Day: Avoiding copyright infringement

A very small and rather obvious point that came up recently - but it's sometimes the small and obvious ones that are most easily overlooked. Suppose you heve asked someone to create something for you that will be protected by copyright. Ideally, you'll have taken an assignment of the copyright, but there might be many reasons why that isn't possible - and one might be that the project is still in its infancy.

If you need to bring a new programmer/photographer/composer/writer/whatever in later to finish the project, don't fall victim to the temptation to show them what the previous person had done. Keep that completely out of sight. Go right back to the basics, whatever it was that gave you the idea in the first place. Then there can be no suggestion - no serious suggestion - that the second person infringed the copyright of the first.

There might be arguments that you did actually have the right to use the first person's work, but you shouldn't rely on them. They are arguments you will have eventually to present before one of Her Majesty's judges, and they make for a very critical audience. moreover, they aren't an audience that pays you so they can enjoy the show: they require you to pay for the privilege of appearing before them, and you'll have to employ a very expensive supporting cast too.

Tip of the day: trade marks as designs

Not feeling very inspired today, having spent yesterday in the office dealing with a visit from our regulator. Why, I wonder, is it thought that professions need to be regulated? The answer, I fear, is that being a solicitor is no longer a profession, it is a mere business, and one cannot rely implicitly on the integrity of some of its members, so the majority have to submit to a level of control designed for the truly dishonest or incompetent.

Anyway, today - following on from my comments about passing-off law as a back-up where design protection fails (as design protection usually does) by highlighting one area where it will work the other way round. The design that makes up your trade mark could also be protected as a registered design. The requirements for a registered design are stiff: it must be novel and have individual character. Trade marks, by contrast, even get better as they get older. But a new business or product is likely to have a new logo, and if it functions as a trade mark it has distinctive character which is at least part of the way to individual character. A rebrand might produce some registrable designs, too, though here the stumbling block will be that the character of the new design will often owe something to the old one and 'individual character' might be hard to show. But it's easy (and cheap) to get a design on the register, and these days maximising your IP portfolio is often the name of the game.

For an example of how this might work, see here and here.

Tip of the day: imitating designs

When I present courses, I like to stress that the different IP rights are quite independent, each designed to do its own job. The intellectual property field displays a lack of joined-up thinking not because of any lack of intellectual rigour but simply because the rights are not intended to interoperate.

They do, however, overlap to some extend, and there are also some provisions which display a little negative joined-up thinking, if you like: for example, the provisions in the Copyright, Designs and Patents Act that restrict copyright’s incursions into the designs field. The Trade Marks Act also ensures that many designs will not be eligible for dual protection as trade marks too.

There are also plenty of areas of overlap. All five ways to protect a design will often co-exist quite happily: there can be UK and EC registered designs, Community unregistered design right, UK unregistered design right and even a touch of copyright. But even if none of them applies – problably because they have all expired – the design might still be protected.

This is what happened in the recent Numatic v Qualtex [2010] EWHC 1237 case in the High Court. Qualtex had done their homework before they tried to make their own replica of the Henry vacuum cleaner: they ensured there was no remaining design protection. What there was, though, was a passing-off action, relying on the fact that the public recognised a tub-shaped vacuum cleaner with a shiny black ‘bowler hat’ type lid even if it didn’t say Henry on it and even without the face decals that decorate the original.

The get-up (hat the Americans would call ‘trade dress’) of a product, or of a business, can be protected by a passing-off action. There’s nothing new about it. It will cost a lot, but if your key market is threatened by an imitator that’s probably not going to be your first concern. As for what you can get away with, the old copyright maxim, ‘what is worth copying is worth protecting’ doesn’t apply – but if what you’ve produced is clearly an imitation it might well go to far. The question in a passing-off case is whether you are deceiving customers, and imitation – notl to intellectual property lawyers, the sincerest form of flattery – will often, perhaps nearly always, lead to deception.

Tip of the day: choosing a trade mark (1)

The number of trade marks in the world is finite. It might be large, but it doesn't go on for ever. Chances are, your preferred new trade mark will be similar to someone else's, and if it's similar enough to create a likelihood of confusion and the other people have theirs registered for similar goods or services, you're in trouble.

Of course, you can do a lot to put clear blue water between their trade mark and your proposed one. But that concept of likelihood of confusion creates a fuzzy edge to trade mark protection, and you can never be entirely sure whether you are heading for trouble.

One possibility in this sort of situation is to talk to the other trade mark owner. Of course this will alert them to a problem they didn't know about otherwise, and they might take a more hard nosed approach than they would if they found out about you only after you were up and running, at which stage it will cost them money to oppose your application or to sue for infringement. But these days the chances are that trade mark owners will oppose or sue more readily than in the past: it's because people have become so aware of the value of their trade marks, and they don't want anyone damaging it. I don't think you should normally assume that you can get enough momentum by ploughing straight on, though more litigious colleagues might advise differently.

Tip of the day for 10 June: getting copyright

It might seem to be too good to be true, but you don't need to do anything to secure copyright. All you have to do is create something that copyright will protect. You don't even need to put © on it, though there are good reasons to do so when you publish copies.

This might also seem to be too easy to be true, or to be entirely good for you. That's often right. When you say you own copyright in somethng, or that it is your copyright work, all you are really doing is claiming that you have it. To support that claim, you might need evidence. What if someone accuses you of copying their work, or you find someone who seems to have copied yours? Which one was first in time will then be an important matter (though it won't be the only thing to argue about, because if there's no copying there's no infringement).

To prove that you had created a work by a particular date, you can post a copy to yourself or some trusted third party (your lawyer might be a good choice) and keep the unopened package, conveniently dated by the Royal Mail, in a safe place. You could deposit the copy with a bank or other agent, of course, but the posting-to-someone option is particularly easy.

The United States still operates a copyright register, so there is somewhere in the world where you can officially deposit a copy and get a filing date. However, you should beware of ne thing: your work will be published as part of the process. If it's not confidential, that doesn't really matter, but if it's something like an idea for a film or TV series this is exactly what you don't want. A useful alternative which does meet the needs of the authors of such things is provided by the Writers' Guild of America, and it is available to non-members. But This is not legal advice, and you should ensure it is right for you first - and equally you should get professional advice on other tips given here. All I'm trying to do is point you in the right direction, and help you avoid some pitfalls!

British Standard on IP advice

The IPKat reports here that the British Standards Institution is consulting on consulting on a new standard (BS8538) on the provision of services relating to intellectual property rights. I am speechless. Already the professions that work in this area are ridicuously over-regulated. I have been very unimpressed in my dealings with trade mark agents, it's true, some of whom don't even acknowledge correspondence (which I think would be regarded as unprofessional in a solicitor - though I have probably done it myself in the past), and being obliged to conduct themselves according to a set of rules, as solicitors have done for decades, is a Good Thing.

So at whom is the proposed BS aimed? Presumably fringe IP advisers, because there's nothing in that solicitors, patent attorneys and trade mark agents aren't already obliged to do. Far better, in my view, to restrict the work to people who have a professional qualification and a code of ethics: the presumption so often seems to be that consumers of these services (who will often be businesses, of course) need the protection afforded by competition against high prices. But when competition comes from unqualified, perhaps uninsured, people, the interests of consumers have been sacrificed on the alter of price competition. Unfortunately, the imperative seems to be to ensure legal services are available as cheaply as possible, in the IP field as well as on the High Street.

Apart from these objections in principle, I am not impressed by the intellectual rigour of the document. It makes sweeping statements about IP without distinguishing the beneficial effects that patent protection provides [in theory] for technology and the very different benefits of trade mark protection. And, come to think of it, what about those professional advisers who help their clients obtain extensive, deep and anti-competitive intellectual property protection, so they can go about bullying smaller businesses? I reckon that some things these absolutists do are not compatible with a solicitor's duty to the court - a constraint that does not apply to patent attorneys and trade mark agents, and (a fortiori) to the targets of BS8538. Now manybe that's an aspect that the BSI could usefully look at.

Tip of the day

Until I run out of ideas, I'll present a tip every day - OK, let's say every weekday - for the benefit of readers - and the world at large. Feel free to request anything you think should feature.

I always tell people who come on a course where the subject comes up that they must remember that there is notihing in UK copyright law to make the commissioner (even for money or money's worth) of a copyright work the owner of copyright in it. That has to be done by assignment, and an assignment has to be in writing and signed by the copyright owner if it is to be legally effective.

Many businesses, and private individuals, hire others to create something for them: a photograph, a graphic, a painting, some prose, a piece of music, a film. It might be perfectly OK for copyright to remain with the creator - who can then sell the same thing, or one identical to it, to someone else, perhaps - but there will certainly be situations where this is not desired. Imagine if your business did not own copyright in its own website: it would be difficult to move it to another host. And trade marks - logos in particular - frequently comprise, or contain, copyright works. You can't leave them in the control of a graphic designer.

When you commission the making of the work, whatever it is, you should make a written record of the terms. This is what is commonly called a contract - and it's the ideal place in whcih to include an assignment. Pay your lawyer to draw it up for you. It's worth it. Because this site does not give legal advice (I am deliberately keeping these tips general) I'm not going to offer a form of words, I'm afraid.

May 2010 IP Lawcast available (now with added CPD)

You can download the audio file, as usual, here. Right click to download: left click starts it running, which might not be quite what you want. It's  now worth an hour's CPD for solicitors: barristers, patent attorneys and trade mark attorneys can also gain CPD and there is some guidance on this on the Lawcasts page of this site (click the tab above). The notes are here.

To obtain your CPD you have to register with me and pay the appropriate fee (details under teh Lawcasts tab, above). Once I have received payment I will send you the multi-choice questionnaire that will prove that you have listened to the programme.

Use of a trade mark

In a couple of weeks I have to give a talk on the subject of trade mark use - specifically, on the developing controversy about how extensive use of a trade mark must be within the European Union. But I have just come across this interesting posting on an Australian case, E.& J.Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 which tells us that the use that might keep a trade mark registration alive does not even have to be known to the trade mark owner - as where a parallel importer brings goods into the country and they are sold to consumers. On the one hand, I can see that it's consistent with the origin-indicating function of the trade mark: on the other, it's hard to conceive of it as use by the trade mark owner, and it does seem to be use by the trade mark owner (or with the trade mark owner's consent) that is required in Australian law.

Hat tip to Barry Eager and his Bazpat blawg, which I'll add to the blawgroll.

As for my subject for the talk, it seems to me of the essence of a Community trade mark that it should function at the Community level, and if a trade mark functions only at the national or regional level it is not right that commercial speech should be restricted in countries where the trade mark is unknown. I think it's a big difference between the US and the EU - indeed, between a federal system and the confederation that is the European Union. And if Community trade marks were intended to work even if they only meant anything to consumers in one country, why have parallel national trade mark registration systems at all?  The justification for a trade mark has always been the way that it reduces consumer search costs, but if the trade mark is completely unknown that justification is completely lacking.

Other people don't share this view!

Crocs and disclosure of a design

I will have to keep a closer eye on things like decisions of the boards of appeal in Alicante, if I am to keep my podcasts up to date - because they come up with some interesting stuff, even if it doesn't have the authority of the General Court's views. The latest edition of Alicante News just popped into my inbox, closely followed by Dave Musker's post on the Class 99 blog on an appeal decision reported in the latter - R 9/2008-3 of 26 March 2010. So as you see it's taken a while to come to my attention, though if Dave has only just seen it too I don't feel too bad.
It reads like the sort of scenario an examiner might invent: products exhibited in the US, sold to the public and featured on a website, all this more than a year before the priority date (and therefore unable to benefit from the absurdly long 12-month grace period in EC design law). Did these activities amount to anticipation? The Board said:

The test is whether the sales could have reasonably become known to the relevant circles in the Community. And the answer is, in the Board's estimation, in the affirmative. The launch of a new product on the marketplace always attracts attention from the public at large, the press and the business circles. This sort of news circulates instantly and easily in the Internet era.

So (as Dave Musker observes) our design law tends towards being an absolute novelty regime. To be fair, it was always clear that only very obscure disclosures would be taken to have escaped the attention of the relevant circles, but even since the time when the wording of the directive and regulation were being debated  things have changed dramatically - the Internet, as the board observes, makes this information much more available, and much more speedily, than would have been the case a decade or so ago.

Book reviews: Practical Approach to Trade Mark Law (4th ed), The Requirement for an Invention in Patent Paw, Working within the Boundaries of Intellectual Property

I was once book reviews editor for the Business Law Review. Even after I stopped doing that, I found books from Oxford University Press appearing regularly, on arcane subjects like capital markets law, takeovers, arbitration and the World Trade Organisation. Some, I am embarrassed to admit, are doing duty as doorstops.

Eventually I managed to stem the flow of not-really-wanted books (there being no such thing as an unwanted book), but recently it has started again. This time, though, the books are on intellectual property subjects. Having checked that they weren't coming to me at the behest of a publication that would expect a review, I decided (with a little help from a friend) that I should review them here. Who knows? The flow might even increase as a result. And with a book of my own nearing completion, it might not be a bad idea to say some nice things about other people's books.


A Practical Approach to Trade Mark Law, by Amanda Michaels (now with Andrew Norris, for the fourth edition) really needs no introduction - does it? Fourth editions don't often get reviews - second editions don't, for that matter - but I am happy to write that I am pleased to have this book to hand. It's clearly laid out and clearly written: the commentary on trade mark law fills 234 pages, which means it is not a deep treatment of the subject (but if it were, it would have a rather different title, wouldn't it?). I would have created more than 9 chapters out of the material, so that the numbering of the paragraphs which is usually fairly helpful would not have 9.157 and so on - a bit more subdividing would, I think, have aided clarity and accessibility.

It's good to have remedies and procedure covered, as befits a practical book, and likewise the chapter on practice and procedure in the UK Registry and OHIM (although it's only 24 pages): 20 pages on passing off might however be too little to be of much help, though of course a book on trade marks can't ignore the subject. I don't need the 1994 Act (or the Directive and Regulation) in such a book, really, and I do sometimes wonder whether publishers are just bulking up tomes that would otherwise look too slim for their comfort. But, as Lord Justice Jacob says in his Foreword, "A non-specialist lawyer faced with a trade mark problem could hardly do better than start from here" (the context makes clear that he meant the book, not the Foreword, though that in itself is an excellent read). And at £44.95 it's very reasonably priced, for a law book.

Only £15 more would get you The Requirement for an Invention in Patent Law by Justine Pila (an Oxford lecturer, among other distinctions). Of course, it would be no good if you wanted a book on trade marks - I'll give up trying to create any sort of connection between them. This is a hardback, 351 pages in total, not copies of statutes to pad it out but no Foreword by Sir Robin either (it seems that one a year might be his limit, going by what he wrote in Amanda's book). It explores an interesting area that shouldn't really even exist, because the patent system is so self-evidently, inherently, about inventions that surely the requirement for an invention in patent law is, in modern parlance, a no-brainer? But of course the Patents Act 1977 fails to define an invention - it merely tells us about inventions that aren't patentable - so there is something to discuss, and discuss it the author does. This isn't a book to dip into for practical guidance, but it doesn't pretend to be: it is a densely argued examination of one small part of patent law, and a completely different reading experience from the Michaels book. I will, I am sure, learn something new every time I dip into it. I won't dip into it in search of an answer to a client's problem, as I might the trade marks book, but it certainly won't be gathering dust on my shelf either.

Working Within the Boundaries of Intellectual Property is sub-titled Innovation Policy For The Knowledge Society, which tells you quite a lot about it. Edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, who can fairly be described as American academic lawyers, it features a cast of dozens - the chapters being based on papers submitted to a conference presumably a year or two ago - the date doesn't seem to be mentioned. 

This is a companion volume to the "highly acclaimed" (as the publishers describe it) book, Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001. That work argued for "strong private rights whilst at the same time calling for caution in the expansionary trend. In the period since the first volume," the blurb goes on, "intellectual property protection has grown ever stronger, and this new book focuses on finding ways to cope with the fragmentation of rights and the complex framework this expansion of rights has created." I can certainly relate to that stuff about expansionary trends.

Among the topics covered are patent clearing models, standard setting organizations, licensing arrangements and informal work-arounds. The book also examines the measures that seek to protect the public domain, including strategic licensing, collective rights organizations, and non-profit ventures such as creative commons and open-source publishing. It's multi-national and cross-disciplinary, but obviously most of what it contains is going to be of interest to intellectual property lawyers. Not practitioners in search of answers to their clients' problems, of course, but this is an area of law where the practitioners are often as interested as the academics in this sort of approach. Again, I am going to be dipping into this work, enjoyably, for a long time to come - and learning something new every time I open it. 524 pages and £75 - it is a hardback, too, so that's not a bad price.

Now, one book that I'd really like to review is Jonathan Turner's new one, Intellectual Property and EU Competition Law, the launch party for which I attended not long ago. But given that it's twice the price of the most expensive of this trio, I don't expect I'll be finding a copy on my desk when I next go into the office.

No guidance on computer implemented inventions

News today that the Enlarged Board of Appeal of the European Patent Office has published an Opinion on the reference to it by the President of the EPO of questions about the patentbility of computer-implemented inventions. The full story is on Axel horns's IP::JUR blog here and the IPKat also has it. Suffice to say that we get no guidance on what is patentable: we do get guidance on what is admissible in a reference to the Enlarged Baord, and it's not this sort of political question. Different boards of appeal might come to different conclusions about issues like this, but it's for the legislator to sort out not the Enlarged Board. So there.

Cartel prosecution collapses

The first prosecution under the provisions in the Enterprise Act 2002 which created the offence of being involved in a cartel started a couple of days ago and didn't last long. I don't need to reiterate the facts: the FT has the story here. It doesn't reflect well on anyone, except the British Airways executives who have left court without a stain on their characters. Virgin, who blew the whistle on the alleged (as I'd better make sure I call it) price-fixing arrangement, faces accusations that it was not as frank with the Office of Fair Trading as it was obliged to be to win immunity, while it says that the OFT was responsible for failing to find the emails that fatally undermined the prosecution. Questions have also been raised about the OFT's conduct, and it's alleged that they effectively delegated evidence-gathering to Virgin's lawyers. At least, that's what the reports say, but you should never believe what you read in the papers (even, unfortunately, the FT, although you can believe more of it than others, I think). The US authorities aren't amused, either, as they seemed to be relying on their British counterparts to deal with a competition issue that hit consumers there too.
Leaving aside the consequences for this particular case, it seems to me that this raises important questions about the forensic skills of the OFT. The competition people were doing what must have been their first criminal investigation, and the rules are different from those that apply when they are doing a regular competition investigation, so I can imagine there's plenty of scope for error. When a client was raided by the OFT a few years ago I marvelled at the way the investigators searched for emails - asking executives to search through email files using key words chosen by the OFT. That seems to offer plenty of opportunity for concealment, if you can guess what words the investigator might think would yield the evidence they wanted. It also seemed just a little low-tech, though that's not to say that it might not be effective.
Here, a load of emails, in a supposedly corrupted file, seem to have slipped through the net - although they were eventually picked up, but so late that the trial still had to be aborted. It hardly looks like a piece of law with the teeth we were given to believe it had been endowed with, although it never reached the stage where the application of the law fell to be considered. How long before anyone tries to wheel it out again, I wonder? Or will we just quietly forget that it was ever placed on the statute book - tacitly acknowledging it to be the aberration people thought it was at the time?

Intellectual Property resources

I have moved my free IP book to a new location, linked from this blawg, and will be providing further materials as and when I can, including recorded lectures to accompany the book. I am now able to update it much more easily than previously, though as it stands there are several chapters that are rather out of date and others that are not yet ready to upload.
I hope it will nevertheless be informative for anyone looking for an introductory text on intellectual property. Please pass any comments to me here - observations, criticisms, corrections, anything. But remember - it's not legal advice ...

April 2010 Lawcast

You can download the latest edition of the IPso Jure Lawcast, sponsored by Olcott & Co LLC, from here - the notes are here although not in a final form: I will be replacing that file with a better one later, but the link will still work.
I hope that CPD accreditation is only a short time away, and that the May edition will bring with it the possibility of satisfying your training requirements, or rather a small part of them. Please email me to register your interest in subscribing. I propose to make the audio file available for free download, as now, and the notes too, but to charge for the multichoice questions that are the key to a proper CPD distance learning course. I anticipate a charge of £25 for one programme, but will offer annual subscriptions (12 monthly episodes) for £240 and a special founder subscribers' rate for the first year, for early adopters. Payment will be strictly in advance, by PayPal or cheque. Cash will also be acceptable!
For more details or to to register your interest please email peter@petergroves.co.uk. If you have any comments on this product, please tell me by the same means, or by commenting on this blog.

Double patenting

Many years ago, I did a programme for Television Education Network in which I spoke about the House of Lords judgment in Asahi Kasei Kogyo KK’s Application. In fact the programme took the form of an interview, which was conducted by Jill Dando. Reading that complicated and lengthy judgment played an important part in making me more than just slightly interested in patent law.
The whole area of double patenting is more complicated than it first appears. There are several aspects to it: first, there's the fundamental question of whether an earlier application forms part of the state of the art, and second there's the specific issue of whether a second patent can be granted for the same invention. This can arise in divisional applications, but not exclusively so. It also raises the 'whole contents approach', explored in Asahi and rejected by Laddie J in Re Woolard's Patent. Double patenting also arises when a later European covers the same ground as an earlier national patent.
The reason I am turning my mind to such an arcane subject is a European Patent Office decision, T-1423/07, which confirms that there is no general prohibition on double patenting in the Convention. Previously, in an earlier decision T-307/03, it had invoked Article 60 to prevent double patenting, because it talks only about an inventor being entitled to the grant of a patent for the invention. That caused consternation at the time (see, for example, what the IPKat and EPLaw patent blog) but now the Board has decided that an application cannot be refused simply on grounds of double patenting. However, it distinguishes the 'parent and divisional' situation, where both have the same priority date, and the situation in the appeal, where the applicant had a legitimate interest in the second application which had its own filing date (later, of course, than the first).
All clear? No, I thought not. But interesting, certainly.

Copyright yes, database right no

The other day, I did my standard half-day course on copyright for CLT. Less than half as much time as I need to cover copyright, I'd say, but OK for a sprint along the main straight. Far better to have time for a relaxed Marathon, appreciating the scenery, the birdsong, and the byways of the subject. But modern life doesn't allow time for that.

I talked about the difficulty - even the  near-impossibility - of finding anything in a database that could be protected by copyright, in the post-Directive world - the problems of 'author's own intellectual creation'. I outlined the sui generis database right, and told the delegates that the BHB case smashed a big hole in that with its requirement that the 'substantial investment' referred to in the Directive had to be directed to the right sort of activity, creating a commercial database rather than governing a sport.

Then I read Football Dataco Ltd & Ors v Brittens Pools Ltd (In Action 3222) & Ors [2010] EWHC 841 (Ch) (23 April 2010) and felt the need to eat my own words. Do I have an excuse based on the fact that my talk was only six days after the judgment was given? I don't believe it helps. In this new case, Mr Justice Floyd held that there was copyright in the fixture lists, the preparation of which had involved 'very significant labour and skill in satisfying the multitude of often competing requirements of those involved.' The process was not 'entirely deterministic' and not everyone would come up with the same answer:

Some solutions will better accommodate the requirements of the clubs and rules than others. The more sophisticated the compilation process, the more permutations it will be able to consider and the more requirements it will be able to satisfy. Judgments have to be taken as to the relative importance of certain rules in comparison to others. On occasions rules will have to be broken.

This work is not mere “sweat of the brow”, by which I mean the application of rigid criteria to the processing of data. It is quite unlike the compiling of a telephone directory, in that at each stage there is scope for the application of judgment and skill. Unlike a “sweat of the brow” compilation, there are some solutions which will simply not work, and others which will be better.

There is clearly more to making up a fixture list than I had ever thought - enough, it seems, to make it an original literary work. Just as well, from the point of view of the compilers, because there's no database right in it - the FML cases in the Court of Justice make that clear enough, and given the subject matter of the present case there was little hope of distinguishing the cases. Fixture lists (like the BHB's information) are created by first creating or collecting the data: the creation of the database does not involve anything like a substantial investment. An interesting judgment, which is going to reward further reading.

Dispute resolution, by Shakespeare

A few years ago, I went to Shakespeare's birthday party. Not, I hasten to add, in his lifetime. The Poet Laureate read a couple of the sonnets, which seemed to me to be a very civilised way to spend an evening. I chatted with Michael Holroyd about his abbreviated legal career, and Tracey Chevalier presided.
Shakespeare's birthday this year was a couple of days ago. This year I found myself at a party to mark World Intellectual Property Day. It's hard to equate that to Shakespeare's birthday - but by a happy coincidence, or perhaps (who knows?) by design it was also Sir Robin Jacob's birthday: and the format of the reception was cheese and wine, and readings. I missed the cheese, drank some wine, and listened to the four readings - and then ate a slice of Sir Robin's birthday cake, which was rather good.
Anyway, the fourth reading was mostly from Shakespeare (As You Like It, Act V, scene IV), and having been chosen by the birthday Lord Justice it was delivered by him, and commended (I hope my interpretation is quite right) as an object lesson in dispute resolution:

TOUCHSTONE. Upon a lie seven times removed- bear your body more seeming, Audrey- as thus, sir. I did dislike the cut of a certain courtier's beard; he sent me word, if I said his beard was not cut well, he was in the mind it was. This is call'd the Retort Courteous. If I sent him word again it was not well cut, he would send me word he cut it to please himself. This is call'd the Quip Modest. If again it was not well cut, he disabled my judgment. This is call'd the Reply Churlish. If again it was not well cut, he would answer I spake not true. This is call'd the Reproof Valiant. If again it was not well cut, he would say I lie. This is call'd the Countercheck Quarrelsome. And so to the Lie Circumstantial and the Lie Direct. 

JAQUES. And how oft did you say his beard was not well cut? 

TOUCHSTONE. I durst go no further than the Lie Circumstantial, nor he durst not give me the Lie Direct; and so we measur'd swords and parted. 

JAQUES. Can you nominate in order now the degrees of the lie? 

TOUCHSTONE. O, sir, we quarrel in print by the book, as you have books for good manners. I will name you the degrees. The first, the Retort Courteous; the second, the Quip Modest; the third, the Reply Churlish; the fourth, the Reproof Valiant; the fifth, the Countercheck Quarrelsome; the sixth, the Lie with Circumstance; the seventh, the Lie Direct. All these you may avoid but the Lie Direct; and you may avoid that too with an If. I knew when seven justices could not take up a quarrel; but when the parties were met themselves, one of them thought but of an If, as: 'If you   said so, then I said so.' And they shook hands, and swore brothers. Your If is the only peace-maker; much virtue in If.

There is indeed. Later, I tried to interest a friend in subscribing to my podcasts. I asked him about his CPD needs, and at the second attempt realised (with his help) that the elevator pitch should go something like: "If I were to ...", thus neatly demonstrating some facility with the subjunctive into the bargain, and effortlessly demonstrating my superiority over the main contender for the office of Prime Minister.
Sir Robin went on to read from Sassoon's "They". Also worth repeating here, though with no obvious IP context (and I don't think Sir Robin tried to find one).

THE Bishop tells us: ‘When the boys come back
They will not be the same; for they’ll have fought
In a just cause: they lead the last attack
On Anti-Christ; their comrades’ blood has bought
New right to breed an honourable race,
They have challenged Death and dared him face to face.’

‘We’re none of us the same!’ the boys reply.
‘For George lost both his legs; and Bill’s stone blind;
Poor Jim’s shot through the lungs and like to die;
And Bert’s gone syphilitic: you’ll not find
A chap who’s served that hasn’t found some change.’
And the Bishop said: ‘The ways of God are strange!’

I wonder whether he's familiar with Morning Heroes, to which I have been listening a great deal recently?