Knowledge, Networks and Nations

Mark Jolly, a Patent Attorney with Brookes Batchellor, based in Clerkenwell on London, will be attending the launch of the Royal Society’s much anticipated report, “Knowledge, Networks and Nations” on 29 March 2011.

We live in a time when the world faces some enormous challenges – climate change, food and water security, and resistance to antibiotics to name but a few. There are those who blame scientific progress for having created some of these problems in the first place, others who are expecting science to solve them in the way that science has, arguably, helped mankind overcome very many challenges over the last thousand years.

Those of us living in the western world, moreover, face the rise of the developing nations with excitement and trepidation. With Indian and Chinese universities turning out thousands of graduates every year and the Chinese government actively encouraging its academics to file patent applications, as well, or instead of publishing papers (http://ipkitten.blogspot.com/2011/02/why-do-chinese-academics-file-so-many.html), a question is raised about the extent to which nations share research and its benefits, or regard them as national assets.

So it will be very interesting to hear what the speakers have to say at the Royal Society’s launch of its report. There’s a great panel of speakers, including Rt. Hon. David Willetts MP, who is likely to come in for some stern questioning, following today’s announcement that virtually all universities will be worse off under the new funding plans (http://www.guardian.co.uk/education/2011/mar/17/newer-universities-cuts-teaching-budgets).

As a patent attorneys we will be particularly interested to hear what the speakers have to say about the role of intellectual property protection in encouraging, and helping to finance, scientific research. Mark and other attorneys at Brookes Batchellor work for universities in the UK and abroad who are patenting some of their innovations to increase their incomes, and thus their budgets for further research. This is of course a controversial area though, with many believing that universities are at their best when they offer their publically funded insights on an “open access” basis.

If you’re attending the event, do let us know and we can arrange to meet up.

Mark Jolly

Patent Attorney

Brookes Batchellor LLP, Clerkenwell, London

NEW - National Electronics Week

Brookes Batchellor, Patent and Trade Mark Attorneys, London and Tunbridge Wells

Brookes Batchellor are delighted to announce that they will be exhibiting at the “NEW” (National Electronics Week) Exhibition at the NEC, Birmingham on 12 an 13 April 2011. The NEW is the largest electronics exhibition in the UK and is attended by most of the top electronics companies in the UK and many from overseas too. The stand team will be led by Rosemary Eve, who now leads the electronics team in the firm’s two offices in London and Tunbridge Wells. If you’d like to arrange a meeting while you’re there, call her on 01892 510600.

Enhancing Intellectual Property for Small and Medium-sized Enterprises

The government has recently instigated the Hargreaves Review into the Intellectual Property (IP) system, looking particularly at how the IP system can be adjusted to enhance innovation and economic growth in the UK. Last night a discussion was held with Roger Burt who sits on the review panel and Mark Jolly, a Patent Attorney at Brookes Batchellor, attended.

The discussion centred around the challenges faced by Small and Medium-sized Enterprises (SMEs) and how the system could better serve them. Although the discussion was intended to take the view of SMEs, unfortunately they were under-represented: 30 SMEs, 30 Trade Mark Attorneys and 30 Patent Attorneys had been invited, but the floor was dominated by the professions and the only SMEs represented tended to be firms such as ours which provide IP services, rather than those engaged in innovation who were hoped for.

Nonetheless, a number of useful comments were made and Brookes Batchellor intends to file formal submissions to the review, setting out actions that would benefit our SME clients.

Among the discussed proposals which we would endorse was better education concerning IP. It is disappointing how many times we are contacted by new clients who are unaware even that an invention must be kept secret until a patent application is filed; only last week one such client contacted us and it was a shame to have to inform him that his own disclosure would invalidate a patent application. At the discussion, the question was asked whether a grace period allowing the inventor to file up to a year after disclosure would be commended. This system is in place in the USA and some other countries, but generally does not find favour because it leads to legal uncertainty.

The basics of IP are apparently taught in French schools and we would certainly endorse such a proposal in the UK, and also suggest that courses on IP could be encouraged in scientific/engineering degree courses. Other suggestions included making Companies House or the Inland Revenue point new companies towards the Intellectual Property Office or the IP Institutes (CIPA and ITMA) so that new companies at least consider whether IP protection is necessary at an early stage.

Financial assistance was also discussed and it was highlighted that the British Patent Office fees are already relatively low. It is well known that the major cost of filing a patent application is usually the attorneys’ fees. However, an interesting point was made that compared to the cost of government renewal fees in an international portfolio of patents, the attorneys fees in fact represent only a small fraction.

One point of controversy is whether the UK should introduce utility model protection as is available in many other countries and widely used in Germany and China. This form of intellectual property is generally not examined for patentability and therefore cheaper to obtain than a patent, but like a patent a utility model protects an invention, albeit usually for a shorter term. The argument in favour of utility models is lower cost compared to a patent and reduced complexity as there is no examination.

However, adding a new form of IP would add complexity to the system as a whole. Another argument against adding this form of IP is that it is inherently complex to decide whether a client might infringe a utility model, since without examination, it cannot even be assumed that the utility model is valid.

Submissions for review are due next week, and we would be very pleased indeed to hear from any SMEs about suggestions they may have. If you would like to contribute please contact Mark at mj@bb-ip.com.

Contributory Infringement Clarified

The Court of Appeal recently considered two European patents which were filed and prosecuted by attorneys in Brookes Batchellor. One patent was a divisional of the other and they related to medical devices, a field which has been a specialist one of the Firm over a number of years.

In an interesting aspect of the decision, the Court of Appeal considered and clarified the scope of the provisions of Section 60(2) of the UK patents act concerning contributory (or “indirect”) infringement. This section provides that “a person… infringes a patent… if he supplies…any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom”.

The inventions concerned a system and equipment for improving the rate of healing of wounds, particularly the kind of deep lesions suffered by immobile and bedridden patients. This kind of treatment stemmed from the discovery that application of suction to the wound stimulated healing. This resulted in a pretty disgusting mixture of dead cells and liquids, liberally dosed with bacteria and the problem faced by the inventors was how to handle safely this potentially dangerous cocktail.

A full account of the inventions is described in the High Court judgement of Mr. Justice Arnold in KCI Licensing et al v Smith & Nephew (judgement delivered on 23 June 2010). A number of claims were held valid and infringed but the Defendants appealed and KCI cross-appealed against the judge’s finding that in respect of one claim Smith & Nephew had not committed contributory infringement by selling a product where it was obvious that the ultimate user (but not the initial purchaser) would be likely to add the missing integer.

In many medical devices it is the case that the major value to the manufacturer or supplier is not the whole piece of equipment but the ability to protect follow up sales of consumables. This applied to the product covered by the patents in as much as there would be likely to be one sale to a customer of the special vacuum pump but many subsequent sales of disposable exudate containers, associated wound dressings and linking tubing.

Figure 5 of European Patent No. 0853950 was as follows:

It was important to be able to dispose of the container 20 and its associated tubing 38 without risk of escape of wound exudates. Whilst the container 20 was under vacuum there was no risk of leakage but as soon as the pump was switched off there was indeed a significant risk. The defendants supplied a cap for closure of the tube at 40 whereas the claims required a clamp which could be closed before the coupling 39, 40 was disconnected and the pump deactivated. The defendants did not recommend the use of a clamp, but there was evidence that while the customer (e.g. a hospital) may not have made any change in the equipment supplied to them, there was a reasonable likelihood that the ultimate users (i.e. the medical staff) would have considered the addition of a clamp as a safeguard against any chance escape of liquid from the container.

Reversing the Judge below, the Court of Appeal held on 18 November 2010 that it was sufficient for a finding of contributory infringement that it was probable the ultimate users of the device would decide to put the invention into effect by, in this case, adding a clamp.

This is an important clarification and practical extension of the rights of Patent Holders as it allows the intentions of the final user to be considered rather than simply the first purchaser.

A history at the forefront of technology

As readers may be aware, the European Patent Office (EPO) recently extended its online filing software to allow online filing in post-grant opposition and appeal procedures.

As part of our history of working with the latest technologies, Brookes Batchellor was one of the first firms to use the European online filing system, within 6 months of its introduction in December 2003. Now that the system has been broadened, we are pleased to report that we have again taken the technology on board and made use of the technique in an opposition we are handling.

Of course, knowing the value of our clients' patents and the importance of ensuring that the correct patent documents are filed, we have always taken a cautious approach and even in this case we also filed a confirmation copy by registered post.

It is in this spirit that we have been involved in ongoing discussions with the UK Patent Office about its choice of carrier to transmit documents to the European Patent Office after diligence by our Records staff revealed that two patent applications filed at the UK Patent Office for transmittal to the European Patent Office had not arrived at the EPO within the normal period.

In this case, our quick response, (well before any other Patent Attorneys noticed) was enough to prompt the UK and European offices into action and ensure that the documents were located by the delivery service and arrived at the European Patent Office just in time to avoid losing the filing date they had been accorded.

Brookes Batchellor Quiz Success

Brookes Batchellor fielded a team for last night’s CMS Christmas Quiz for patent and trademark attorneys near the world-famous Barbican Centre in Central London.

The team included Nigel Shindler, David Bailey, Tim Roberts, Mark Jolly, Iain Russell and Joanna Winwood who finished mid-table, but were top in the patents round and scored highly in the trade marks rounds, showing good knowledge of recent case law.

The quiz included music, movie and general knowledge questions, such as how many pints of Guinness are consumed worldwide per day; the answer being around 10 million. The patent and trade mark questions involved identifying brands based on their earlier logos and identifying obscure inventions (such as a pencil including a cigar cutter) from their drawings.

Iain Russell won a “spot prize” for being the first person at the quiz correctly to attribute the statement that “heavier than air flying machines are impossible” to Lord Kelvin.

So, if you want to talk about films, you should probably look elsewhere, but if you are looking for patent attorneys with a good knowledge of the law and the ability to spot inventions, Brookes Batchellor is the team for you.

More Exam Success

Following our success in the UK Examinations, we are pleased to announce that Iain Russell passed all the European qualifying examinations at his first sitting and Mark Guy passed his final remaining examination. Their names will shortly be entered on the European Register of Professional Representatives and they will be fully qualified as both European and Chartered Patent Attorneys.

In addition Joanna Winwood passed three of the four European examinations, so she is now just one step away from being fully qualified too.

Congratulations to all of them.