Food and Dragons - the Levi Roots Appeal

Last Christmastide I blogged HH Judge Pelling's decision in  Bailey and another v Graham and Others [2011] EWHC 3098 (Ch) (25 Nov 2011) in "Is there any IP in Recipes? Reflections on the Reggae Reggae Case" 5 Jan 2012. I shall return to the theme this Christmastide to blog the appeal (or rather application for permission to appeal) in Bailey and Another v Graham (aka "Levi Roots") and Others [2012] EWCA Civ 1469. This application came on before Sir Andrew Moritt, Chancellor and Lord Justices Longmore and Davis on the 16 Nov 2012.

The first defendant Keith Valentine Graham is best known to the public as Levi Roots,  He appeared on the TV programme "Dragons Den" to promote his jerk sauce where he attracted £50,000 of investment.  Upon the insistence of his backers he incorporated the third defendant, Roots Reggae Reggae Sauce Ltd, which in turn licensed  G Costa & Co Ltd to make and distribute his sauce in accordance with his recipe,  He has not looked back.   Jamaican food, which was rarely tasted outside Afro-Caribbean homes, has become enormously popular with the general public including Dalmatian dogs as in the clever video on their website.

 The case that I blogged earlier in the year was a claim by Anthony Bailey and Sylvester Williams, to a share in that success on the ground that Mr. Bailey had created the recipe for the sauce.  The trial, which went on from the 8, 10, 14 to 17 and 21 and 22 Nov 2011 and involved 18 witnesses of fact and one expert, was decided entirely on the facts. The judge found that he could not rely on either party's testimony and constructed his judgment on the evidence upon which he could rely that resulted in his throwing out the claim.

Because the case was decided on the facts the trial judge refused permission to appeal.   The claimants applied to Lord Justice Kitchin who dismissed the application on the ground that no issue of law or principle had been raised and that the appellants sought to re-argue the case on the facts.  Undaunted, the claimants obtained a report from a clinical and forensic psychologist on the intellectual functioning and personality characteristics of Mr. Bailey. After administering a number of tests and interviewing him for several hours, the psychologist observed at paragraph [37] that

"Mr Bailey was generally a poor historian, particularly in terms of his ability to recall the chronology of events and to provide detail".

She concluded that he was "a vulnerable individual" with "a significant intellectual impairment, poor verbal memory and a tendency to change his answers in response to repeated questioning." Were he to interviewed by the police, she continued, he would be considered to be vulnerable in terms of  s.77 of the Police and Criminal Evidence Act (1983) and provided with an appropriate adult. His level of cognitive functioning and personality characteristics would also be taken into consideration during a trial and that appropriate safeguards, such as having questions presented to him in simple language, put in place. She respectfully suggested that, 

"had the court been aware of Mr Bailey's vulnerabilities at the time of his unsuccessful claim in the Chancery Division of the High Court, he could have been afforded the same considerations and that this might have enabled him to cope better under cross-examination and to provide more reliable responses to the questions that were put to him."

The application was for permission to adduce this additional evidence which, it was argued, would have resulted in the judge's finding for Mr. Bailey and Mr. Williams.

The Court of Appeal rejected the application for three reasons.   The first was that the claimants could have obtained a report from a psychologist before the trial had they so wished.   As the Chancellor put it at paragraph [44]:

"there can be no doubt but that the evidence could have been available to Mr Bailey and Mr Williams before the trial because Mr Bailey could have submitted himself for examination by [the psychologist] at any time. Whether or not so to do was a matter for the claimants and their advisers, not the defendants. It is said that his solicitors did not appreciate the need to do so, but it was for them to assess Mr Bailey as a client and witness. They do not say what steps they took to do so. They could have obtained this evidence and applied for special measures, if so advised, but did not. The fact is that this evidence was always available to the claimants; the question of diligence does not arise."

Secondly, the evidence would have made no difference even if it had been heard at trial:

"The judge's conclusions on breach of confidence do not depend on the credibility of Mr Bailey. I have referred to the relevant findings in paragraphs 31 to 33 above. The judge's conclusion that the recipe was insufficiently certain is fatal to any claim for breach of confidence, whatever the outcome of the appeal in relation to its disclosure."

Finally, the Chancellor referred to the substance of the report at paragraph [46] and concluded that it actually confirmed the trial judge's assessment that Mr. Bailey was an unreliable witness::

"Though Mr Bailey's IQ, verbal comprehension and processing speed is very low he is not abnormally suggestible or acquiescent. In addition he has a very poor memory and a tendency to change his answers under cross-examination. But this evidence, far from suggesting that Mr Bailey's evidence should have been treated as reliable, confirms the judge's assessment that he could not safely rely on the evidence of Mr Bailey unless admitted, corroborated or against his interest. Even if it could be said that the judge's reference to Mr Bailey's "professed lack of understanding" could be regarded as carrying unjustifiable overtones there is no challenge to his conclusion that Mr Williams was a dishonest witness and claimant."

Although the dismissal of the application disposed of the appeal, the Chancellor considered the various grounds which criticized Judge Pelling's methodology and his consistency in applying it. The Chancellor and Lord Justices rejected the criticisms though they cautioned at paragraph [59] that "The methodology is only appropriate in cases, such as this, where there is no undoubted starting point. In other cases the conventional approach is best used to avoid error."

Shortly after I had published my case note on the trial my friends Lisa and Helen Tse, who run the excellent Sweet Mandarin restaurant in Manchester, asked me about intellectual property in recipes.   I sent them my post. I should mention that Helen is also a solicitor and author as well as a restaurateur and entrepreneur.  Her works include Sweet Mandarin an inspiring story of the family's Odyssey from China to Manchester which I thoroughly recommend.  Helen and Lisa were also on Dragons' Den recently to seek investment for the manufacture and promotion of their  Barbecue, Sweet & Sour and Sweet Chilli Dipping Sauces and I am glad to say that they were successful.   You can see a video of their appearance on Dragons' Den in an article on the Festival of Business (25 Oct 2012) on my other blog, IP Northwest.   As a Mancunian I am just so proud of those sisters.

As I have been getting a lot of instructions from the food and catering industries lately I am thinking of running a one day conference on IP and Food in the New Year.   Topics will cover recipes as trade secrets, branding of food products covering trade marks registration, domain names and geographical indications and of course contracts of all kinds.   I will also offer a platform for my clients to talk about their experiences as well as angels, VCs, representatives of local enterprise partnerships which promote local producers and others. Should anyone wish to attend, speak at or even sponsor such a conference they should call me on 0161 850 0080 or send me a message through my contact form. They can also follow me through Facebook, Linkedin, twitter or Xing.

Community Trade Marks: Starbucks v Sky

In Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others [2012] EWHC 3074 (Ch) (2 Nov 2012) a group of Hong Kong-based broadcasting, media and telecommunications companies headed by PCCW Ltd. ("PCCW") sued the well-known group of broadcasting and telecommunications companies that operate under the Sky sign for infringement of Starbruck (HK) Ltd's Community trade mark number 4504891 and passing off.

The CTM was as follows:

It was registered for a variety of goods and services in classes 9, 35, 38, 41 and 42, including 

"telecommunication services; … telecommunication of information (web pages), computer programs and data; … radio and television communication services; … television broadcasting services; broadcasting and transmission of radio and television programmes; cable television broadcasting; … transmission of music, films, interactive programmes, videos, electronic computer games".

The proceedings were precipitated by Sky's announcement on 21 March 2012 that it intended to launch a standalone internet protocol TV service under the name "NOW TV" and it actually started transmission on 17 July 2012.   PCCW objected to use of the following signs to designate the new service: 

• the sign "NOW TV". 
• the domain name  "NOWTV.com"; and
• the following logo:

Sky counterclaimed for a declaration of invalidity under art 7 (1) (b) and (c) of the Community Trade Mark Regulation (Council Regulation No 207/2009 of 26 February 2009 on the Community trade mark 24.3.2009 L78/1).

Mr. Justice Arnold considered the counterclaim first.   It was common ground that the figurative elements of the CTM added nothing to the distinctiveness of the mark and that it would be perceived by the average consumer as the word NOW.  After referring to the Court of Justice's decision in Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-0000, [2011] ETMR 34 his lordship concluded at paragraph [116] that the CTM was

"precluded from registration by Article 7(1)(c) in relation to the services in issue because NOW would be understood by the average consumer as a description of a characteristic of the service, namely the instant, immediate nature of the service. The figurative elements of the CTM do not affect this conclusion. In the alternative, if the inclusion of the figurative elements means that the CTM does not consist exclusively of the unregistrable word NOW, I consider that the CTM is devoid of distinctive character and thus unregistable by virtue of Article 7(1)(b)."

Mr, Justice Arnold then considered whether the CTM would have been infringed had it been valid. If the only distinctive features were the figurative elements then the answer was clearly no. If the word "NOW" was inherently distinctive then the mark would have been infringed and Sky would have had no defence under art 12 (b) of the CTM Regulation.

As to passing off, there was evidence between paragraphs [19] and [27] that a PCCW company called Pacific Convergence Corporation (UK) Ltd ("PCCU") had operated an Internet protocol television service in the early years of this century as "Network of the World" or "NOW" television under the following mark

but that had closed down long ago.  Also, another PCCW company called United Kingdom Broadband had operated a wireless broadband service in Berkshire, Hampshire and Surrey as "NOW Wireless Broadband" which had connected 15,802 customers in 2006 but there were only 81 left by the date of Sky's announcement.  Finally, there was evidence that another PCCW company offered a TV service in Chinese in Hong Kong which could be accessed in Britain through its website, YouTube and in-flight entertainment channels on various airlines.   The judge  was not persuaded that any of those activities generated any protectable goodwill in the UK by 21 March 2012 and in any case there was no evidence of actual confusion.  It followed that the action for passing off also failed.

Almost as interesting as the decision itself is the judge's dicta.   He had sharp things to say about solicitors who filed witness statements that contained evidence that was not within the witness's personal knowledge and did not indicate its source.  Exonerating the witness from blame, he said at paragraph [10]:

"The fault lies with the solicitors who drafted the witness statements. They are not alone: in a number of other recent cases involving other firms, I have noted the same defect even in witness statements made by solicitors themselves, including statements by partners of those firms. This slipshod approach to the preparation of witness statements must cease."

The judge also endorsed at paragraph [16] Lord Justice Romer's remarks in Payton & Co Ltd v Snelling, Lampard & Co. Ltd (1900) 17 RPC 48 at 57 that the kind of witness who ought to be called in a passing off case is

"the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of these distinguishing characteristics."

"If he does not know that" added Lord Justice Romer "he is not a customer whose views can properly, or will be, regarded by this court."

Finally, Mr Justice Arnold warned at paragraph [117] that trade mark registries ought to be more careful about the type of combined word and figurative marks that they register:

"I would comment that it appears to me that PCCW only succeeded in obtaining registration of the CTM because it included figurative elements. Yet PCCW is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place."

As the judge had served as one of the Appointed Persons for many years he spoke from experience.   I should be surprised if this did not lead to a change in registration practice at least in Newport if not in Alicante.

There is a lot of law in this case as is typical with Mr Justice Arnold's judgments and I have discussed only the points that leap out at me.   Should anyone want to talk about specific aspects of the judgment, he or she should call me on 0161 850 0080 or send me a message through my contact form.  I can also be reached on Facebook, Linkedin, twitter or xing,

Registered Designs: Mainetti (UK) Ltd v Hangerlogic UK Limited

Two actions came before before Mr. Recorder Purvis in Mainetti (UK) Ltd v Hangerlogic UK Limited [2012] EWPCC 42:

• a claim by Mainetti (UK) Limited ("Mainetti") that Hangerlogic UK Limited ("Hangerlogic") had infringed its three registered designs for various clothes hangers and a counterclaim by Hangerlogic for the revocation of those design registrations: and
• a. claim by Hangerlogic for a declaration that a modified range of garment hangers did not infringe Mainetti's registered designs and a counterclaim by Mainetti for infringement.of those registered designs.

The recorder found for Mainetti in both sets of proceedings.

The Registered Designs

Mainetti's design registrations were as follows:

• Design number 2080944 for a garment hanger registered as of 5 Feb 1999: a 'clip hanger' used to suspend trousers, shorts and skirts from two clips ("the clip design");
• Design number 2060713 for a garment hanger registered as of 7 Nov 1996: a hanger used for jackets ("the jacket design"); and 
• Design Number 2053286 for a garment hanger registered as of 11 Jan 1996: a hanger used for shirts, T-shirts, blouses and dresses ("the tops design").

Hangerlogic's Products
Mainetti produced the following overlays of the registered designs and Hangerlogic's products::

 Clip design

Jacket design

Tops design

Validity
Hangerlogic attacked Maintetti's registrations on the ground that the designs were not new.

All the designs were registered before 9 Dec 2001 when The Registered Designs Regulations 2001 came into effect. Those regulations implemented the European Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035) ("the directive") by amending the Registered Designs Act 1949. Reg 12 (2) of the 2001 regulations provides:

"The Act of 1949 as it has effect immediately before the coming into force of these Regulations shall continue to apply in relation to registrations to which this Regulation applies (“post-1989 registrations”) so far as the Act relates to the cancellation or invalidation of such registrations (other than cancellation by virtue of section 11(3) of that Act and by reference to an expiry of copyright occurring on or after the coming into force of these Regulations)."

In other words the validity of a registration is determined in accordance with the Registered Designs Act 1949 as it stood before it was amended.

S.1 (4) of the formerly Act provided:

"A design shall not be regarded as new for the purposes of this Act if it is the same as a design –
(a)    registered in respect of the same or any other article in pursuance of a prior application, or
(b) published in the United Kingdom in respect of the same or any other article before the date of the application
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade."

At paragraph [16] Mr. Recorder Purvis directed himself that the question that he had to decide was whether the registered designs differed only in immaterial details or variants commonly used in the trade from the prior art and that those were distinct questions.   It seemed to him that the only sensible way of applying that test was

1. To identify the differences between the designs; 
2. To consider whether the differences are immaterial (as opposed to 'substantial' – see Whitford J in Valor Heating Co. Ltd. v. Main Gas Appliances Ltd [1973] RPC 871 at 878-9); and
3. If the differences wre not immaterial, to ask whether they simply consist of variants commonly used in the trade. 

He added that "in making the assessment of materiality of differences, the designs must be looked at as a whole, both on the basis of a side-by-side comparison and 'also on the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw.'(Valor at 878)."

Hangerlogic cited no less than 13 prior art designs: 5 each for the clip and tops designs and 3 for the jacket. That seems to have irritated the judge.  He said at paragraph [17]:

"It is unclear why so many were cited. It should have been clear to Hangerlogic which was their best case on validity on each design. There is no need to burden a case like this (particularly in the Patents County Court) with an unnecessary proliferation of citations."

In paragraphs [18] to [21] he considered the invalidity case in relation to each registered design and concluded that none of those designs was invalid.

Infringement

Art 9 of the directive provides:

"Scope of protection
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."

The judge directed himself at paragraph [22] that "the test is whether the designs alleged to infringe give the same overall impression, seen through the eyes of a notional 'informed observer'." He summarized the principles on the application of the test as follows:

"(a) The comparison to be made is a visual one between the alleged infringement and the design as it appears on the Register. It may be useful to compare the alleged infringement with an actual product made in accordance with the registered design (being careful to make sure that it is in all respects the same). See Pepsico v Grupo Promer (C-281/10P).
(b) The comparison is to be made through the eyes of the 'informed user'. Such a person is particularly observant, has a general knowledge of the features which are normal in the existing art, but does not have the extent of knowledge of a designer or technical expert. See Shenzen v OHIM (T-153/08).
(c) The scope of protection to be given will vary according to the degree of design freedom enjoyed by the designer in developing his/her design. See Article 9(2) of the Designs Directive. Design freedom may be restricted by technical considerations, functional considerations and (to some extent) economic considerations (General Court in Grupo Promer [2010] ECDR 7 and Arnold J in Dyson v Vax [2010] FSR 39). Thus the common presence of a feature which is required for a technical reason will not be significant in itself. However, commonality in the way that feature is executed may well be significant.
(d) The overall impression test depends also on the 'existing design corpus' (see Recital 14 to the Directive). As put by the General Court in Grupo Promer, this means that the informed user would'automatically disregard elements that are totally banal and common to all examples of the type of product in issue and will concentrate on features which are arbitrary or different from the norm.' HHJ Birss in Samsung v Apple [2012] EWHC 1882 pointed out that there is a spectrum of banality from features which are ubiquitous through features which are occasionally found in the art to features which are entirely unique. The significance of any feature which is common to the registered design and the alleged infringement will depend on its position in this spectrum.
(e) The comparison involves attention to detail but not 'minute scrutiny' (Apple v Samsung at para 58).
(f) Whether or not the design was copied by the alleged infringer is irrelevant.
(g) Although it is necessary to consider the significance of individual features of the design, one must beware approaching the design as if it were a patent claim consisting of a list of features. The problem with that approach is that it turns into a debate about the level of generality at which the features should be described. See Dyson v Vax [2012] FSR 4 at 30. Ultimately, an overall visual comparison has to be made."

Applying those principles, Mr. Recorder Purvis found plenty of scope for design freedom within the basic parameters imposed by the function such as the need for a hook to fit a hanging rail positioned in the middle of the hanger, arms which are roughly the size and shape of the shoulders of a garment and so on.  He was provided with a book entitled 'Cintres Hangers' by Daniel Rozensztroch which contained photographs of hundreds of different hangers demonstrating the wide scope for the creativity of the designer that exists in the world of hangers, even extending to the world of 'disposable' plastic hangers.  

As for the design corpus the judge relied on the citations and Rozensztroch's book and concluded at paragraph [27]:

"My overall impression in terms of each design at its date of application is that it did not represent a startling and radical new departure from the norm. None of the general features found in the designs can be said to be strikingly unique in and of themselves. However, both the specific execution of those features and the way they are combined are in each case original in the sense of conveying a particular overall impression which is distinct and recognisable. An informed observer would have had no difficulty in recognising that originality."

As the real users of these products are retailers, the parties agreed that the informed user is someone in the position of a buyer responsible for purchasing hangers for a retail store (or group of stores). Such a buyer would be sensitive to design differences and very discerning when it comes to the appearance of a hanger.  One factor that influenced the recorder particularly was that the Hangerlogic designs are interchangeable with the equivalent Mainetti designs.  If the educated eye of a retail buyer considers that two hangers can be used interchangeably,the judge reasoned that this was relevant to the question of whether the designs create the same impression.  After carrying out the exercise mentioned above, he concluded that all three designs infringed.

The Modified Range

His Honour did not consider that  the changes made to the modified hangers had created a design which gave a different overall impression and concluded that those hangers also infringed.

Further Information

Should anyone wish to discuss this case with me he or she can all me on 0161 850 0080 or send a message through my contact form.   I can also be reached through Facebook, Linkedin, twitter or xing,

Samsung v Apple: "Be you never so high ....."

In Apple v Samsung: the Appeal  I discussed the notice that Apple was ordered to display on its British website and the words that it actually displayed.  Many people I spoke to (especially those who own Apple phones and tablets) thought that notice was very clever and marvelled at the spin that Apple had put on bad news.   It appears from "Apple ordered to re-write 'inaccurate' Samsung statement"  that the Court of Appeal took a different view and ordered Apple to take the notice down and replace it with one that does comply with their lordships' intentions.

Apparently Apple's counsel asked the Court for 14 days to compose its new notice.  That seems to have gone down like a lead balloon,    Lord Justice Longmore replied:: "We are just amazed that you cannot put the right notice up at the same time as you take the other one down."  Sir Robin Jacob, added: "I would like to see the head of Apple make an affidavit about why that is such a technical difficulty for the Apple company."

The BBC's website links to a number of other commentaries on the hearing of which the most amusing is The New Statesman's "Apple reprimanded over Samsung non-apology" 1 Nov 2012 with its lovely cartoon of one "Sad Mac",  Referring to the detail of Judge Birss QC's order earlier in the year which I discussed in Samsung v Apple - the Aftermath on 28 Aug 2912 it noted that "the judge failed to mention one important rule: don't take the piss."   A fuller report on the hearing is carried by Bloomberg "Apple Leaves U.K. Judge at ‘Loss’ Over Samsung Web Posts".

News of the case quickly crossed the Atlantic.  I actually learned of it from the Washington Post Tech News Daily "British court: Apple must reissue apology to Samsung" 1 Nov 2012.  The comments on the Washington Post and Bloomberg articles are interesting. "Well maybe the court should first rewrite its opinion, if it can" suggested one.  Another added "This is a childish judgement and Apple put a finger in the judge's eye by telling him he was wrong in his judge and they don't like it.  What else is new about Apple bashing but that it put some meaning into some people's sad lives." However, yet another wrote: "It's pretty simple what happened here. Apple tried to push their luck, and they got caught.  They've turned a minor setback into a much bigger, more embarrassing setback."

If and when a transcript is published I shall return to this subject with some analysis.

Medimmune v Novartis - Obviousness

In Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Another [2011] EWHC 1669 (Pat) (05 July 2011), Mr. Justice Arnold dismissed a claim for infringement of  European Patents (UK) numbers. 0,774,511 and 2,055,777 by selling a product called ranibizumab which is used for the treatment of wet age-related macular degeneration of the eye on the grounds that the patents were invalid for obviousness and that even if the claims relied upon were valid the process used by the defendants to make the product did not infringe.   In Novartis Pharmaceuticals UK Ltd v Medimmune Ltd and Another [2012] EWHC 181 (Pat) (10 Feb 2012) the same judge declared that a supplementary protection certificate granted in respect of European patent number 2,055,777 was invalid not only in the light of his earlier finding but because the certificate was was granted in respect of a product that had not been identified in the wording of the relevant claim as a product deriving from the process in question.

Medimmune appealed against both judgments and Novartis cross-appealed on the ground that the judge should also have found that European patent number 2,055,777 was invalid for insufficiency and that in any case  it would not have been infringed because ranibizumab was not "obtained directly" by means of the claimed process.   Both appeals came on before the Court of Appeal (Lords Justices Moore-Bick, Lewison and Kitchin) in  Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Others [2012] EWCA Civ 1234 (10 Oct 2012).   At the start of the appeal their lordships requested argument from counsel on obviousness and priority.   Having heard their submissions they indicated that they would uphold the judge's finding on obviousness and that they did not consider it to be in the interests of justice to consider anything else.   The parties agreed and the rest of this note is a discussion of their lordships' decision on whether or not the invention involved an inventive step.

As this is a long and complicated case it is convenient to begin by considering what is meant by "obviousness" and why it is important.   Article 52 (1) of the European Patent Convention ("EPC") provides that European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.  The meaning of "inventive step" is explained in art 56 EPC:

"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art......"

The "state of the art" is defined by art 54 (2) EPC as "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."   In considering whether an invention was "obvious to a person skilled in the art" Lord Justice Jacob suggested in Pozzoli Spa v BDMO SA and Another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 at paragraph [23] the following four point test:

"(1) (a) Identify the notional "person skilled in the art"
      (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

At trial, Medimmune contended that "the person skilled in the art" or "skilled addressee" would in fact be a team consisting of an immunologist and a molecular biologist, perhaps assisted by a chemist.  Novartis agreed that such the skilled addressee would be a team but argued that it would consist of scientists with differing backgrounds in areas such as immunology, in particular antibody structural biology, molecular biology and protein chemistry, but with a common interest in antibody engineering. Mr. Justice Arnold favoured Novartis's contention on the basis that teams carrying out research in antibody engineering actually consisted of such specialists.  Medimmune criticized the judge's preference on the ground that the invention had a broad application and was not confined to antibody engineering and complained that it had led him into error.   The Court of Appeal had no doubt that Mr. Justice Arnold had been right. Lord Justice Kitchin explained at paragraph [76] that

"As Jacob LJ explained in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, [2010] RPC 33 at [42], the court will have regard to the reality of the position at the time and the combined skills of real research teams in the art. A little later, at [53], he continued that where the invention involves the use of more than one skill, if it is obvious to a person skilled in the art of any one of those skills, then the invention is obvious. Finally, at [65], he explained that in the case of obviousness in view of the state of the art, a key question is generally "what problem was the patentee trying to solve?" That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art."

The next step was to identify the common general knowledge of the skilled addressee as at the priority date.   Lord Justice Kitchin explained at paragraph [78] that:

"[t]he common general knowledge of the notional skilled addressee is all that knowledge which is generally known and generally regarded as a good basis for further action by the bulk of those engaged in a particular art: Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489 at 494-495. It also includes all that material in the field in which the skilled addressee is working which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work Raychem Corporation's Patent [1998] RPC 31 at 40; [1999] RPC 497 at 503-504."

As the patent in suit had been granted for a technique of antibody phage display it was common ground that skilled adressees would be familiar with the latest advances in antibody engineering.  The only dispute was whether phage display which was known but had never been used as at the date of the invention was common general knowledge.   The judge had held that it was and the Court of Appeal upheld his finding on the ground that the fact that a technique had not been used did not prevent it from being known.

The inventive concept was set out in claim 1 which Lord Justice Kitchin expressed in integers at paragraph [71]:

"[1] A method for producing a molecule with binding specificity for a particular target, which method comprises:
[2] producing a population of filamentous bacteriophage particles displaying at their surface a population of binding molecules having a range of binding properties,
[3] wherein the binding molecules comprise antibody antigen binding domains for complementary specific binding pair members,
[4] wherein the binding molecules are displayed at the surface of the filamentous bacteriophage particles by fusion with a gene III protein of the filamentous bacteriophage particles,
[5] and wherein each filamentous bacteriophage particle contains nucleic acid encoding the binding molecule expressed from the nucleic acid and displayed by the particle at its surface;
[6] selecting for a filamentous bacteriophage particle displaying a binding molecule with a desired binding property by contacting the population of filamentous bacteriophage particles with a particular target
[7] so that individual binding molecules displayed on filamentous bacteriophage particles with the desired binding property bind to said target;
[8] separating bound filamentous bacteriophage particles from the target;
[9] recovering separated filamentous bacteriophage particles displaying a binding molecule with the desired binding property;
[10] isolating nucleic acid encoding the binding molecule from separated filamentous bacteriophage particles;
[11] inserting nucleic acid encoding the binding molecule, or a fragment or derivative thereof with binding specificity for the target, in a recombinant system; and
[12] producing in the recombinant system separate from filamentous bacteriophage particles a molecule with binding specificity for the target,
[13] wherein the molecule is said binding molecule or a fragment or derivative thereof with binding specificity for the target."

That boiled down to

"(i) producing a population of phage particles displaying at their surface binding molecules having a range of binding specificities wherein each particle contains nucleic acid encoding the binding molecule; (ii) selecting particles displaying a binding molecule with a desired specificity by contacting the population of particles with a target epitope or antigen to which the binding molecule of interest binds."

At trial, Mr. Justice Arnold had considered the contents of a talk entitled "Vectors for the Cloning Immune Response" given by Professor George Smith of the University of Missouri,  one of the leading scientists in the field, to a conference at the Banbury Center of the Cold Harbor Laboratory in New York on 26 April 1990 shortly before the filing date of the patent in suit.  In that talk Professor Smith had set the stage for an experiment that would have performed the invention.   His lordship concluded at paragraph [411] of his judgment that there could be no serious doubt that Professor Smith's talk made it obvious to try phage display of antibodies provided that there was a sufficient expectation of success.  The only question was whether it would have given a skilled addressee a reasonable expectation of success within a reasonable time and after considering the evidence before him the judge decided that it would.   Having formed that view, he had no choice but to find that the invention was obvious.

On appeal, Medimmune contended that the judge had fallen into error on four grounds.   The first was that Professor Smith's paper at the Banbury conference did not go beyond other work that Mr. Justice Arnold had already said did not render the patent invalid for obviousness.  The Court of Appeal rejected that contention on the ground that the science had moved on from the previous work and that in any case Professor Smith's paper did disclose significant differences.   Secondly, Medimmune referred to a grant application by Professor Smith that implied that the work that would have included the experiment he had proposed in his paper would take 5 years and that the prospects of success  of such work were too uncertain to justify giving it to a doctoral student.  The Lords Justices found that Medimmune had taken Professor Smith's words out of context in that he was referring to a much broader project and in any case he later revised his grant application.   Thirdly, Medimmune argued that the fact that Professor Smith thought that the experiment was worth trying did not mean that the skilled addressee would have been of the same opinion.   In focusing on Professor Smith rather than skilled addressees in particular it was said that the trial judge had applied the wrong standard.  The Court of Appeal rejected that submission on the ground that Professor Smith was just as much a skilled addressee as the other scientists working in the field at the time and his opinion on the feasibility of the experiment could not be ignored.   Fourthly, it was submitted that the immunologist in the team would have been deterred from conducting the experiment by concerns over whether antibody fragments would fold, non-specific binding and the fusion phage losing its infectivity.  The Court rejected that argument on the ground that the concerns of one member of the team would not have overridden the curiosity of the others in ascertaining whether Professor Smith's experiment would work.   For all these reasons, their lordships concluded that the trial judge had arrived at the right conclusion.

The difficulties in this case had arisen from the application of the fourth stage of the Pozzoli test, that is to say:

"(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

Lord Justice Kitchin addressed the problem between paragraphs [89] and [91] of his judgment:

"[89] It is step (4) which is key and requires the court to consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. He is equipped with the common general knowledge; he is deemed to have read or listened to the prior disclosure properly and in that sense with interest; he has the prejudices, preferences and attitudes of those in the field; and he has no knowledge of the invention.
[90] One of the matters which it may be appropriate to take into account is whether it was obvious to try a particular route to an improved product or process. There may be no certainty of success but the skilled person might nevertheless assess the prospects of success as being sufficient to warrant a trial. In some circumstances this may be sufficient to render an invention obvious. On the other hand, there are areas of technology such as pharmaceuticals and biotechnology which are heavily dependent on research, and where workers are faced with many possible avenues to explore but have little idea if any one of them will prove fruitful. Nevertheless they do pursue them in the hope that they will find new and useful products. They plainly would not carry out this work if the prospects of success were so low as not to make them worthwhile. But denial of patent protection in all such cases would act as a significant deterrent to research.
[91] For these reasons, the judgments of the courts in England and Wales and of the Boards of Appeal of the EPO often reveal an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way."

He concluded at paragraph [93] that 

"[u]ltimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim."

In his concurring judgment, Lord Justice Lewison agreed.  He referred to dicta of Lord Justice Jacob in Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82, [2010] FSR 18 and Lords Justices Diplock and Wilmer in Johns-Manville Corporation's Patent [1967] RPC 479 that the question of whether or not an invention involves an inventive step is whether the invention is obvious and that any paraphrase or other test is only an aid to answering that question.  He added at paragraph [181] that those sentiments seem to have been largely ignored by the profession and emphasized that the statutory question is: "was the invention obvious at the priority date?" and not: "was it obvious to try?" In his lordship's judgment 

"too much elaboration of the statutory question has been attached to it. The questions of the degree of expectation of success and the length of time thought to be needed to undertake a trial have taken on lives of their own." 

His lordship thought that that has happened in this case.   Having said that, he conceded at paragraph [184] that there are some inventions where the idea of trying an experiment has constituted the inventive step.

Though this case turned very much on its own facts it is likely to be cited frequently as an aid to understanding the Pozzoli test.  Obviousness is often the most promising ground upon which one can defend an infringement action especially since the explosion of prior art in most technologies from North Asia and the advent of the internet which has greatly extended the scope of common general knowledge that can be expected of a skilled addressee.  Although this particular case went against the patentee, the emphasis on the need to return to first principles in the judgments of both Lord Justice Kitchin and Lord Justice Lewison may turn out to be good news for inventors.

Should any of my readers wish to discuss this fascinating case, they can call me on 0161 850 0080 or send a message through my contact form.  They can, of course, also follow me on Facebook, Linkedin, twitter or Xing,

Apple v Samsung - the Appeal

On 9 July 2012 HH Judge Birss QC, sitting as a judge of the High Court, held in Samsung Electronics (UK) Ltd v Apple Inc. [2012] EWHC 1882 (Pat) that Samsung's Galaxy 10.1, 8.9 and 7.7 tablet computers did not infringe Apple Inc.'s Community design number 000181607-0001. I discussed that judgment in this blog in "Apple v Samsung - Compare and Contrast" on 28 Aug 2012. A few days afterwards in Samsung Electronics (UK) Ltd v Apple Inc (No. 2) [2012] EWHC 2049 (Pat) (18 July 2012) Judge Birss ordered Apple to display the following notice on the home page of their website and in advertisements in the national press:

"On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronics (UK) Limited's Galaxy Tablet computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design 000181607-0001. A copy of the full judgment of the High Court is available via the following link [insert hyperlink]."

I also commented about that judgment on 28 Aug 2012 in "Samsung v Apple - The Aftermath."

At the end of that second case note I observed:

"The notice was supposed to have been inserted within 7 days of the date of the Order but I could find no trace of it when I checked Apple's website just now. That could be because the judge or Court of Appeal have agreed to vary, suspend or vacate the order pending appeal or because the parties have agreed something. If that is the case we shall no doubt learn in time."

Apple was not best pleased with His Honour's order because it would have been forced it to grovel and ruin its home page so (as I had surmised in my case note) it applied to the Court of Appeal to suspend the order.   In  Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1223 (26 July 2012), Lord Justice Kitchin and Sir Robert Jacob acceded to Apple's application.  That was fair enough but Apple incredibly persisted in an appeal to the Oberlandesgericht (regional court of appeal) against the refusal of the Landgericht (district court) for Düsseldorf to grant an interim injunction to restrain Samsung Electronics Co. Ltd. of South Korea from selling the 7.7 Galaxy tablet throughout Europe even though Judge Birss QC sitting as a Community design court had already declared that the 7.7 did not infringe Apple' s registered Community design. Even more incredibly the Oberlandesgericht allowed the appeal notwithstanding that there were no proceedings in Germany or indeed anywhere else in Europe outside England on the substantive issue.

The decision of the Oberlandesgericht appears to have done enormous damage to Samsung.   As Sir Robin Jacob put it: 

"The decision of the Oberlandesgericht received much publicity. What was the ordinary consumer, or the marketing department of a potential Samsung customer to make of it? On the one hand the media said Samsung had won, on the other the media were saying that Apple had a German Europe-wide injunction. Real commercial uncertainty was thereby created. A consumer might well think "I had better not buy a Samsung - maybe it's illegal and if I buy one it may not be supported". A customer (and I include its legal department) might well wonder whether, if it bought Samsung's 7.7 it might be in trouble before the German courts. Safest thing to do either way is not to buy."

And so they didn't.  Again, in Sir Robin's words:

"Even though these injunctions as regards design infringement were later first limited to Germany and even later discharged altogether as regards the 8.9 and 10.1 Samsung says that its market share of tablets in the UK plummeted from 10% to 1% and has only recovered to 3%."

Sir Robin's words that I have quoted above were extracted from paragraphs [83] and [78] of his judgment in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339 (18 Oct 2012) which was the substantive appeal against both of Judge Birss's judgments.   In that appeal the Court of Appeal (Lord Justice Kitchin and Longmore and Sir Robin Jacob) upheld Judge Birss's declaration of non-infringement and ordered Apple to publicize their lordships' judgment though in somewhat less humiliating terms than His Honour had ordered. Though they varied his order, their lordships went out of their way to avoid criticism of His Honour. In so far as their order differed from that of the trial judge, they made clear that it was because they were dealing with different facts in different circumstances that required a different exercise of discretion.

Apple made a number of minor complaints about Judge Birss's judgment.   It argued first that an "informed user, noting that the design was from 2004, would know and expect that advances in technology would make thinner tablets possible" and that he or she would give little significance to the thickness of the design as registered. Sir Robin rejected that criticism for two reasons:

"First is that the scope of protection is for the design as registered, not some future, even if foreseeable, variant. Second is that Apple's point cuts both ways: if the informed user could foresee thinner tablets ere long so could Apple whom the informed user would take to have the same prevision. Thus the informed user would take the thickness to be a deliberate design choice by Apple."

Secondly, Apple complained that the judge took account of the fact that the Samsung products had the trade mark Samsung on both their fronts and backs. It submitted that the informed user would disregard the trade mark altogether as being a mere conventional addition to the design of the accused product. The Court of Appeal found no error there:

"If an important feature of a design is no ornamentation, as Apple contended and was undisputed, the Judge was right to say that a departure from no ornamentation would be taken into account by the informed user. Where you put a trade mark can influence the aesthetics of a design, particularly one whose virtue in part rests on simplicity and lack of ornamentation. The Judge was right to say that an informed user would give it appropriate weight - which in the overall assessment was slight."

Apple's main argument, however, was that the judge was wrong in his assessment of a different overall assessment to an informed user. It complained that His Honour had made a feature by feature comparison of the registered Community design and the Samsung tablets and failed to have regard to the overall design as compared with the items of prior art contained in the design corpus. The Court of Appeal found that the trial judge had done no such thing.  He did address the individual features that Apple had drawn to his attention - an exercise that Apple could hardly complain about since it had invited him to do just that - but the judge did "pull it all together and consider the overall impression of the Apple design on an informed user" as Sir Robin noted at paragraph [28].  The Court endorsed Judge Birss's assessment of design freedom which Sir Robin summarized as follows at paragraph [39]:

"In overall terms for a hand-held tablet (1) you need a flat transparent screen, (2) rounded corners are unremarkable (and have some obvious functional value in a hand-held device), and (3) you need a border of some sort for functional reasons. There is some design freedom as regards ornamentation, the rim, the overall shape (rectangular or with some curved sides) but not a lot. And the main thing, the screen itself was something with which the informed user would be familiar ......"

It also endorsed his approach to the design corpus and in particular to the Flatron handheld computer which appears below.

Overall the Court could find no material error by Judge Birss and added at paragraph [54] 

"if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons. If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled."

Because the Oberlandesgericht had entertained Apple's appeal against the Düsseldorf's court's refusal to grant a European wide injunction in respect of the 7.7 tablet notwithstanding a final decision of a Community design court, Sir Robin Jacob was scathing - and rightly so in my respectful submission:

"[56] Firstly I cannot understand on what basis the Court thought it had jurisdiction to grant interim relief. I do not think it did for several reasons.
[57] Firstly it is common ground that no German court was "first seized" of the claim for a declaration of non-infringement. Indeed given that Apple withdrew its claim for infringement in Germany, no German court appears even now to be seized of a claim for infringement. It is true that Samsung applied for declarations of non-infringement on the same day, 8th September 2011 in Spain, the Netherlands and England and Wales and there could be (but I think rather overtaken by events given that the trial and appeal are over here) a dispute about which case started first in point of time. After all there is now a Community-wide decision on the point, now affirmed on appeal. One would think that ought to put an end to all other litigation about it.
58. Secondly I cannot see any basis for an interim injunction. The UK court had already granted a final declaration. Moreover it was sitting not just as a UK court but as a Community Court. Interim injunctions are what you grant in urgent cases where there is not enough time to have a full trial on the merits. That was not this case. Lord Grabiner told us that the Oberlandesgericht had jurisdiction pursuant to Art. 31 of the Brussels Regulation EC/44/2001. But that relates to "provisional, including protective measures." There was no room for "provisional" measures once Judge Birss, sitting as a Community Court had granted a final declaration of non-infringement.
[59] Further Judge Birss was not sitting as a purely national court. He was sitting as a Community design court, see Arts. 80 and 81 of the Designs Regulation 44/2001. So his declaration of non-infringement was binding throughout the Community. It was not for a national court - particularly one not first seized - to interfere with this Community wide jurisdiction and declaration.
[60] The Oberlandesgericht apparently also thought it had jurisdiction because the party before it was SEC whereas the party before the English court was SEC's UK subsidiary. With great respect that is quite unrealistic commercially - especially as I shall recount below, Apple at least took the view that SEC would be liable for the subsidiary's actions. They were all one "undertaking". I use the word of EU law for this sort of situation.
[61] Finally I regret to say that I find the Oberlandesgericht's reasoning on the merits sparse in the extreme. Firstly, for the reasons I have given, I think it was wrong to say that the General Court decision in Grupo Promer/Pepsico was "outdated" when the decision on appeal affirmed the General Court. Secondly the Court wrongly assumed that the trade mark point was critical to Judge Birss's decision when it was not. And for the reasons I have given I think it was wrong in law to say that the positioning of a trade mark was irrelevant where it interfered with one of the key features of the design (simplicity and plainness).
[62] What the Oberlandesgericht did not do was to consider Judge Birss's decision in detail. It gave only meagre reasons for saying "The Court cannot concur with the interpretation of the High Court". I regret that. In Grimme v Scott [2010] EWCA Civ 1110, this Court said:

'[63] The Judges of the patent courts of the various countries of Europe have thereby been able to create some degree of uniformity even though the European Commission and the politicians continue to struggle on the long, long road which one day will give Europe a common patent court'.
[64] That principle was not followed by the Oberlandesgericht. If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer.'

[63] Broadly we think the principle in our courts - and indeed that in the courts of other member states - should be to try to follow the reasoning of an important decision in another country. Only if the court of one state is convinced that the reasoning of a court in another member state is erroneous should it depart from a point that has been authoritatively decided there. Increasingly that has become the practice in a number of countries, particularly in the important patent countries of France, Germany, Holland and England and Wales. Nowadays we refer to each other's decisions with a frequency which would have been hardly imaginable even twenty years ago. And we do try to be consistent where possible."

Not surprisingly, Apple agreed to ask the Oberlandesgericht to discharge its injunction.

The difficulties that had been caused by the German court's intervention that I have mentioned above. were one of the reasons why the Court of Appeal was moved to make a publicity order. It ordered Apple to insert a hypertext link on its home page under the words "Samsung/Apple UK judgment" linking to the notice

"On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronic (UK) Limited's Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link [link given].

That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on ….. A copy of the Court of Appeal's judgment is available on the following link […]. There is no injunction in respect of the registered design in force anywhere in Europe."

I have just had a look at the Apple home page and found a link to the Samsung clicked the link "Samsing/Apple UK judgment".  Sure enough, the words prescribed by the Court of Appeal are there but between the first and second sentences Apple has inserted the following text:

"In the ruling, the judge made several important points comparing the designs of the Apple and Samsung products:

'The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a cool design.'
'The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool.'"

Apple also added the following  paragraph at the end of its notice:

"However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design. A U.S. jury also found Samsung guilty of infringing on Apple's design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc. So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung willfully (sic) copied Apple's far more popular iPad."

Those words have been inserted after the Court of Appeal had gone out of its way in paragraph [3] to dispel any notion that Samsung was accused of copying in this country at any rate, that the case was to be determined as though the iPad had never existed and to stress that this case was only about the registered Community design and not about the other intellectual property disputes between the same parties that were being litigated overseas.

Long after the iPad and Galaxy will have been forgotten, this case will be remembered for two points.   First, Sir Robin Jacob's definition of the informed user at paragraphs [34] and [35] which I have already cut and pasted into my registered design skelly template ready for my next scrap in the Designs Registry, Patents County Court or even OHIM whenever it should come:

"He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).
However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).

[35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."

The other point for which this case is likely to be remembered is that the Court held at paragraph [75] that it had jurisdiction to make a publicity order not by virtue of the Enforcement Directive 2004/48/EC which enables the court to make them in favour of successful claimants but as an adjunct to the power to make a declaration. Sir Robin made clear that this jurisdiction is to be used sparingly and proportionately.

There is a lot of strong meat in this judgment and should anyone want me to cut it up into digestible chunks he or she should call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

Patents County Court: More on the Small Claims Track

Following on from my article "Patents County Court - the New Small Claims Track Rules" of 20 Sept I can now report that the Part 63 Practice Direction has been amended and that we now have a new "Guide to the Patents County Court Small Claims Track."

A new paragraph 32 has been added to the Part 63 Practice Direction.   It provides as follows:

"Small claims
32.1    This Practice Direction shall apply to a claim allocated to the small claims track in a patents county court to the extent provided by paragraphs 32.2 and 32.3.
32.2    The following paragraphs shall apply –
(1) in Section II, 16.1, 17.1, 17.2, 19.1, 20.1, 21.1 to 21.5, 22.1, 23.1, 24.1;
(2) in Section IV, 26.1, 26.2;
(3) in Section V, 30.1, 31.1.
32.3 No other provision in this Practice Direction shall apply."

The Guide pretty well confirms what I had anticipated in my article of 20 Sept.  However, it contains two titbits of information that were new to me.   The first is that hearings will take place in the Thomas More Building in the Royal Courts of Justice and not in the Rolls Building.   The second is that cases will come on before District Judges Janet Lambert, Melissa Clarke and Charlotte Hart and Deputy District Judge Nicola Solomon and Richard Vary. That's a lot of judges which suggests that that the court expects a lot of work. Both of the deputy district judges are acknowledged intellectual property specialists.

Finally, I should mention that I gave a presentation on the new court to Sheffield Inventors Group on 1 Oct which I shall repeat to Liverpool Inventors Club at the offices QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on Monday 29 Oct 2012 at 17:00.  The boardroom will take only 15 or so guests so email or call Michael Sandys on 0151 282 1700. I will try to get Michael to obtain CPD accreditation for the talk from the SRA and IPReg and I will ask the BSB but no promises mind.   You will also find a reading list with links to all the materials that I have been able to assemble on the small claims track at the end of my article of 20 Sept 2012 including my latest article "How to bring a Small Claim in the Patents County Court" of 12 Oct 2012.