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.

For he’s a jolly good fellow – Class Discrimination at the Chartered Institute of Patent Attorneys

The Chartered Institute of Patent Attorneys (CIPA) intends to shake up the class system in terms of its membership – do not worry, it will not be asking what your father did and where you were schooled before accepting you into its membership. Rather, it is proposing a new class, imaginatively entitled “member”, which will fit between associate and fellow of the institute.

The new class could be thought of as an upper middle class, above the part-qualified associates and the lowly students, but beneath the exalted fellows of the institute. Fellows may now have to do something more than pass the fiendish British examinations which result in entry on the register, most likely simply work as a patent attorney with another fellow for a predetermined time and find a couple of fellows as proposer and seconder.

The apparent reason for the new class is that some patent attorneys working in the UK, particularly in industry, are no longer interested in becoming Chartered. Unlike many countries the UK does not require that an agent has any qualification or appears on a register in order to act for a client. Accordingly the Chartered Institute can be seen as a burden both in terms of its cost and Continued Professional Development (CPD) which requires Fellows to document the additional training they carry out to stay up to date.

It is proposed that “members” would include those who do not pay the fee to remain on the register of Patent Attorneys, and those who practice in the UK but decide only to take the European Qualifying Examinations.

In addition, Council is asking the current membership (all fellows) for their opinions on what voting rights “members” should have, whether we believe European Patent Attorneys not practising in the UK should also be allowed on the list, and whether we think Trade Mark Attorneys (who have had a separate institute (ITMA) since 1934) should be allowed as members of CIPA.

There is a lack of legal protection placing restrictions on who may act before the UK Intellectual Property Office. Therefore, it is the writer’s view that membership of CIPA as a “member” or “fellow” should remain limited to patent attorneys who have qualified by passing the UK examinations. Accordingly European Patent Attorneys who are unlikely to have knowledge of British Patent Law (especially post-grant) and Trade Mark Attorneys should not be allowed as members.

However, this may seem quite unfair to Trade Mark Attorneys. The Office of Harmonisation in the Internal Market (OHIM) which administers Community Trade Marks allows those who have passed the British Patent exams (which have only two basic examinations on Trade Marks in the UK and abroad) to be entered on the list of European Trade Mark Attorneys. However, this writer thinks that OHIM’s position is wrong and only those who are registered as Trade Mark Attorneys in national offices and actually practise Trade Mark law should be admitted as European Trade Mark Attorneys.

The rules are different in other countries: many have no distinction between Patent and Trade Mark Attorneys; some have no distinction between Patent Attorneys and other Lawyers. Moreover the current position of CIPA could be seen as out of step with other UK institutions, in which only those who make a significant benefit to the institute can become fellows.

We would welcome any of our readers’ comments on what they expect from a Chartered Patent Attorney (i.e. a fellow of CIPA) and whom they believe should be allowed as a fellow, a member and an associate of the institute.

We would also take this opportunity to remind our colleagues elsewhere that CIPA has a category of “foreign members” (to become “overseas associates”) for Patent Attorneys who are not qualified in the UK, but are interested in British Patent Law. If you would like any more information about becoming a foreign member of CIPA please feel free to contact us.

By Mark Jolly CPA