Patent construction after Amgen: are patent claims construed more widely or narrowly than previously?

Legal context. This article considers the UK Courts' approachto patent construction since the House of Lords' decision inKirin-Amgen Inc v Hoechst Marion Roussel Limited, which washanded down in October 2004, and seeks to examine whether theUK Courts' construction of patents is wider or narrower thanpreviously. Key points. The available data appear to suggest that thereis little difference in outcome, whether the old Improver testis applied or the new Kirin-Amgen test; of more significanceremains the nature of the wording of the patent claims themselvesand the correct identification by the trial judge of the inventionunderlying the patent. Practical significance. By eschewing a literal approach andrefining the test used in order to ensure both compliance withthe EPC and consistency with courts in other European countries,the UK Courts continue to provide an attractive forum for resolutionof patent disputes.     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

Comparative advertising and celebrity photographs--fair dealing under the CDPA 1988

Legal context. Legal context. This article reviews the conceptof ‘fair dealing’ under Copyright Designs and PatentsAct 1988, section 30. It does so in the context of to recentcases concerning the fair dealing defence, IPC Media Ltd v NewsGroup Newspapers Ltd and Fraser Woodward Ltd v BBC are considered. Key points. The traditional approach of courts to ‘fairdealing’ is based upon a number of ‘factors’considered relevant in determining whether a use of a copyrightwork is fair. The article argues that there are a number ofproblems with this approach. In particular, it claims that theapproach is unsystematic and rests upon a number of questionableassumptions. It suggests that the decision of Hart J in IPCMedia Ltd demonstrates these problems to a very significantdegree. In contrast, that of Mann J in Fraser Woodward Ltd provideswelcome guidance on the application of the concept of fairnessin certain cases. Practical significance. The criticisms made in this articlehighlight a number of discrepancies in the existing case lawand suggest a need for closer consideration and greater disciplinein decision-making in this area.     

House of Lords simplifies the law on patent entitlement

The House of Lords has held that, to claim entitlement to another'spatent or patent application, a person need only prove thathe was the inventor of the subject-matter of the patent, anddoes not also need to invoke ‘some other rule of law’as required previously by the Court of Appeal in Markem v Zipher[2005] RPC 31.     

Claim construction and the extent of patent protection: A comparative analysis of the Phillips en banc Federal Circuit decision

Legal context. The United Kingdom's House of Loads in Kirin-Amgenand the United States Court of Appeals for the Federal Circuitin Phillips addressed similar issues with respect to the methodologyof claim interpretation and the fundamental rules and policiesfor determining the extent of patent protection. This articlewill review Phillips and Kirin-Amgen from the comparative lawperspective. It will compare the UK and US rules and patentpolicies with their German and Japanese counterparts, discussingthe bases for these differences and examining them from theperspective of patent policies, specifically with respect tofair protection and legal certainty. Key points. Despite the use of the same rule and methodology,legal commentators and patent professionals emphasize the differencesin the extent of patent protection in different jurisdictions.Such differences result from the availability of the doctrineof equivalents. For jurisdictions such as the UK, the US andJapan, where courts seldom apply the doctrine of equivalents,the differences result from the way in which the courts conductclaim construction. These courts use the perspective of a hypotheticalperson to support a broad or narrow claim construction, reflectingthe weight given to the competing patent policies. Practical significance. This article cites key cases for claimconstruction and the doctrine of equivalents in four major patentjurisdictions: the UK, the US, Germany and Japan. Knowledgeof the case law trends in these jurisdictions is essential fordrafting patents documents and enforcing patents.     

Profit Neutrality in Licensing: The Boundary Between Antitrust Law and Patent Law

We address the patent/antitrust conflict in licensing and developthree guiding principles for deciding acceptable terms of license.Profit neutrality holds that patent rewards should not dependon the rightholder’s ability to work the patent himself.Derived reward holds that the patentholder’s profits shouldbe earned, if at all, from the social value created by the invention.Minimalism holds that licenses should not be more restrictivethan necessary to achieve neutrality. We argue that these principlesare economically sound and rationalize some key decisions ofthe twentieth century such as General Electric and Line Material.     

Going to the dogs?

Corporate trustees administer assets worth billions and directorsof these trusts expect to carry on their work without fear ofpersonal liability to beneficiaries other than in exceptionalcases whose ambit is limited and well understood. The emergence in recent years of an action known as the ‘dog-leg’claim threatens this certainty. The claim is brought by beneficiariesfor breach of trust generally, directly against the trustees,where none of the usual grounds for personal liability is evenalleged. The claim relies on being able to prove that the corporate trustee'srights against directors for breach of director's duties areheld by the trustee not for its own benefit, but for the benefitof the trust. This article explains how the claims are put togetherand why, fortunately, in practice they will rarely (if ever)succeed. The recent case of Alhamrani v Alhamrani has stimulatedthis appraisal.     

Gaining confidence in the law of confidence

Legal context. The recent case of EPI v Symphony has left theUK law of confidentiality in an uncertain state: the extentto which recipients of confidential information may be permittedto ‘use’ mixtures of such information with publiclyavailable material remains unclear. The Court of Appeal in EPIfelt that it was hard to reconcile the principle that any claimin confidence must fail if the material in question is in thepublic domain with the ‘springboard’ doctrine; butis the distinction illusory? Key points. Issues raised in this case include considerationof what precisely is ‘use’ of confidential information,when mixed with public information, and whether a confider shoulddo more than rely on confidentiality obligations to protectthe fruits of his/her disclosures. This article asks how confidentialityobligations may be aligned with the control of statutory intellectualproperty rights. It considers whether the Court of Appeal inMarkem v Zipher has confused the issue and speculates as tohow far the general law of contract can assist the confider. Practical significance. Finally, this article discusses whichlegal tools will best assist the confider seeking to protectits intellectual property.     

Patent auctions: business and investment strategy in IP commercialization

Legal context. This article concerns patent sale and licensing,asset deals connected with M&A and intangible asset transactions. Key points. Patent owners might find patent auctions a fastway to sell or license their patents. There is a high probabilitythat bidders will purchase or license low- or no- value patentsbecause patent auctions set a very tight time frame for bidders’due diligence. The nature of the patent right creates a bigimbalance in terms of knowledge between owner of the patentand the purchaser or licensee; the latter party can only minimizethe risk of purchasing or licensing a "zero" or low value patentby receiving sufficient time to investigate the patents. IPauctions may however be a better and safer means of purchasingor licensing domain names or trade marks, due to their legalnature. Practical significance. Many companies might believe that patentauction is a swift and effective way to find a purchaser ora licensee for their IP rights. Even so, it is imperative thatthe bidders themselves conduct a proper due diligence of thepatents offered, corresponding to their needs and to their assessmentof their true financial and business value.     

Walking the groundless threats minefield

Legal context. It is one of the peculiarities of UK law thatthreatening litigation of IP rights can, in some circumstances,give rise to an action for "groundless threats". This has thepotential to cause great disruption to the right-holder's case.There is even the potential for professional advisors to endup in the dock where they made the threat on their client'sbehalf, raising the possibility of a conflict of interest preventingthe advisers from continuing to act. Key points. To minimise the risk of these scenarios, intellectualproperty law advisors, be they patent or trade mark attorneysor solicitors, should be aware of the provisions that governgroundless threats actions for the various IP rights, particularlyin light of the recent changes brought in by the Patents Act2004 and the further changes expected to the groundless threatsprovisions relating to designs. These alterations increasinglycomplicate what has always been a nebulous area of the law.In addition, there is considerable tension between the "talkfirst, sue later" philosophy underlying the Civil ProcedureRules and the "sue first, talk later" approach traditionallyused to circumvent threats actions. Reckitt recently confirmedthat the groundless threats provisions, while running counterto the purpose of the CPR, cannot be ignored by the Courts.This article provides an overview of the current state of thegroundless threats provisions that apply to the various IP rights,and considers how IP owners and their advisors can best navigatethe groundless threats minefield. Practical significance. Groundless threats form a complex andchanging area of IP law in the UK, which advisers need to takeinto account in virtually every dispute. Amendments made toSection 70 of the Patents Act 1977 have not provided a threatspanacea to patent holders and it remains to be seen how thesection will be interpreted by the Courts. What is clear isthat the threats provisions contained in the IP legislationwill remain in force in one form or another for the foreseeablefuture and that they remain a trap for the unwary.     

Exclusion payments in patent settlements: a legal and economic perspective

Legal context. The application of antitrust law to assess settlementsof patent litigation raises difficult issues concerning theappropriate balance of patent law and competition policy. Recentprivate and public invocations of US antitrust law to challengesettlement agreements covering pharmaceutical patents have broughtthese issues to the forefront. The agreements share the commonfeature of an ‘exclusion payment’ from a brand-namedrug manufacturer (the patentee) to a generic drug manufacturer(the accused infringer) in exchange for a promise by the genericcompany to refrain from marketing its product for some time.US federal courts that have examined these agreements have variedin their approach and conclusions regarding the appropriateantitrust analysis to be applied to these settlements. Key points. This article argues that informed antitrust analysisof such agreements must take due note of the ‘probabilistic’nature of patent property rights. Practical significance. The article concludes that exclusionpayments fall outside the scope of a patent's exclusionary scopeand thus are subject to antitrust scrutiny. It demonstratesthat barring anticompetitive exclusion payments in settlementnegotiation prevents collusive bargains that harm consumer welfarewithout discouraging efficient settlements.     

The rise and fall of cross-border jurisdiction and remedies in IP disputes

Legal context. Companies which have seen their IP rights infringedacross Europe have, in recent years, been keen to obtain cross-borderrelief from infringement through bringing a single action inthe court of just one EU Member State. This approach has time,cost and tactical advantages for claimants, but raises complexjurisdictional questions. Key points. This article provides an in-depth explanation ofthe framework for litigating IP rights in the European Union.It describes the various interpretations to which the BrusselsRegulation on Jurisdiction has been subjected and how they affectthe availability of cross-border relief. This explanation providesa foundation for analysing the recent ECJ decisions in Gat vLuk and Roche v Primus. Practical significance. Cross-border jurisdiction and reliefis, in practice, no longer available in respect of registeredrights.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

The Vessel Hull Design Protection Act of 1998: is it still afloat?

Legal context. The Vessel Hull Design Protection Act (‘VHDPA’or ‘Act’) is a unique form of industrial designprotection under US law, part of the Digital Millennium CopyrightAct 1998. Congress provided this sui generis form of protectionin response to the Supreme Court's decision in Bonito Boatsv Thunder Craft Boats, Inc. This statute has been underutilizeddue to the difficulty in proving infringement, as unintendedconsequences were caused by the way ‘hull’ was originallydefined under the Act. A bill is pending in Congress that addresseshow a ‘hull’ is defined, eliminating any inclusionof ‘deck’ features, when passed, registrants shouldbe able to pursue infringers with greater success. Key points. The recreational boat manufacturing industry hasbeen plagued by low-cost boat makers who think nothing of takinga competitor's boat hull design, and using it as a ‘plug’to make a casting for their own unauthorized manufacturing use,a counterfeiting technique known in the trade as ‘splashing’a hull. In the eight years since enactment, the boating industryhas generally overlooked this form of intellectual propertyprotection due to the difficulty in proving infringement—thatis likely to change soon. Practical significance. The Act includes the right to excludeothers from making, having made, importing, offering for sale,or using in any trade, any boat hull embodying the protectedhull design. The Act provides compensatory recovery for damagesas well as injunctive relief. The newly revised Act has thepotential to provide a low-cost and effective form of intellectualproperty protection for recreational boat manufacturers whobuild hulls from moulded fibreglass or similar materials.     

Is there still a hole in this bucket? Confusion and misrepresentation in passing off

Legal context. Passing off is an evolving tort. There may beopportunities to expand the scope of the tort to capture activitiesthat have not previously amounted to passing off. Key points. In Arsenal v Reed, Aldous LJ suggested that thetime has come to abandon the label "passing off" and recognisea tort of "unfair competition". The implication is that certainactivities that would not previously have been censured by thecourts might now constitute passing off. This raises the questionof what circumstances might justify giving claimants greaterrights of action. This article explores the possibility of justifyinga claim in passing off where the misrepresentation does notcause confusion, and dilution of the claimant's trade mark isthe only damage caused. Practical significance. There is no doubt that passing off willevolve still further. The English judiciary is perhaps now moreconscious of the flexibility of passing off than at any timein the recent past. Ambitious – even adventurous –claims may have a chance of success.     

Copyright, continuums and freedom of speech

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

Copyright and Free Speech Comparative and International Analyses ByJonathan Griffiths and Uma Suthersanen, Eds, 2005, Oxford: OxfordUniversity Press Price: £80.00, Hardback, ISBN: 0199276048.pp. 426   If one were to summarize this     

Database rights' subsistence: under starter's orders

Legal context. The criteria for database rights' subsistenceset out in the Directive on the Legal Protection of Databasesare largely undefined. Guidance on their interpretation hasbeen provided by the ECJ and its guidance on qualifying investmentactivities was applied by the Court of Appeal in the BHB case. Key points. The article comments upon the guidance on the subsistencecriteria for database rights provided by the Advocate Generaland the ECJ in the BHB and Fixtures Marketing cases and analysesthe Court of Appeal's application of the production-processingdichotomy in the BHB case. It offers thoughts on thorny issuessuch as the avoidance of a double benefit for database developersin copyright and database right, the role of investments intechnology, and the effect of the production-processing dichotomyon the risk of monopolies over facts. Practical significance. Database developers seeking databaserights' protection should keep the subsistence criteria in mindwhen devising their processing arrangements, designing theirdatabases, and recording their investment activities associatedwith database development.     

Design protection for technical products

Legal context. The shape and the function of a product are oftenclosely related (‘form follows function’) whichopens the way for double protection of novel features by a patentand a design. The simultaneous application for both rights canbe done in a fast and cost efficient way by using the figuresof the patent application for the design registration. Key points. With this in mind, the design registration may notcover the novel features in its broadest terms, since designlaw does not apply to ideas, concepts, or methods. However,the design provides protection for a concrete embodiment andthereby offers some relief for a patent applicant in need ofimmediate action against copying. Although, certain conditionshave to be observed where simultaneous protection is sought,there is no doubt that a patent covering an invention in itsgeneral form and a registered design protecting a specific embodimentof the invention may coexist with no mutual negative effectto their respective validity. Practical significance. Having an enforceable protection rightfor an embodiment of an invention at hand a long time beforethe corresponding patent is granted is a valuable asset in anIP portfolio. The additional costs incurred by a design registrationare insignificant in comparison with the costs for the patent.