IP Snapshot - September 2015

PATENTS

T 1436/12 Platform system/ERICSSON, 21 July 2015

An appeals board of the European Patent Office has refused to allow an incorrect reference to a document in a patent application to be amended under Article 123(2) of the European Patent Convention (“EPC”) or corrected under Rule 139 EPC. The patent application made reference to the docket number of a US patent. The appellant submitted a change request for a correction or amendment which it believed would aid the construction of the patent in its favour.

The amendment under Article 123(2) was refused on the basis that the requested amendment in question would not fall within what the skilled person would derive directly and unambiguously from the documents when the application was filed, as required by previous case law. Further, the board held that Rule 139 could not apply, as the suggested correction did not meet the requirement of being obvious. This was due to it being conceivable that the reference would have been intentionally included, as the same patent claim will often be used for several jurisdictions without being amended. Therefore, there may be parts that are only relevant to certain of those jurisdictions.

For the full text of the decision, please click here.

Medical Research Council v Celltech R&D Ltd [2015] EWHC 2139 (Ch), 7 July 2015

The High Court has refused an application to transfer a claim from the General List of the Chancery Division to the specialist Patents Court. The case concerned the construction of a patent licence that the claimant had granted to the defendant.

The court held that while there was a possibility that it would become necessary to determine what fell within the claims of the patent, this was not inevitable. Although patents judges may be better placed to construe a patent licence, this could be performed by non-specialist judges. Therefore, putting the case before patent judges would be an inappropriate use of those judges. The decision was made without prejudice to the possibility of transferring the proceedings to the Patents Court should it become necessary to interpret the patent.

The full text of this decision is currently only available through Lawtel.

Electromagenetic Geoservices ASA v Petroleum Geo-Services ASA [2015] EWHC 2391 (Pat), 21 July 2015

The Patents Court has refused to grant an order requiring the claimant to answer specific questions on its claim in pleaded form, although the Court did order the claimant to provide further information in respect of its case on claim construction. The defendant had requested that the Court order the claimant to provide further information in respect of the construction of the claims for its patent and that this should extend to answering specific questions. The Court held that, while in principle there was no problem in isolating and defining the issues in respect of the claim construction at the pleadings stage, it is not appropriate to specifically define construction issues at such an early stage in proceedings. It is likely that a substantial amount of the factual background to the case will not have been revealed at this stage. Claim construction is to be considered in the context of this factual background and this will not be revealed more fully until the production of the expert reports. The answers to these questions would therefore not necessarily be useful. If the information was required by the defendant’s expert witness, then this could be rectified by permitting a longer period for the report in reply.

The full text of this decision is currently only available through Westlaw.

TRADE MARKS

Iron and another v Unilever NV, Case C-125/14, 3 September 2015

The ECJ has confirmed that a reputation established in a single Member State can be “a reputation in the Community” for the purposes of Article 4(3) of the Trade Marks Directive (2008/95/EC). The case concerned an application to register a Hungarian figurative trade mark containing the words “be impulsive”. Unilever opposed on the basis that this mark was similar to its Community trade mark (“CTM”) for “IMPULSE”.

This ruling follows the previous decision of PAGO International v Tirolmilchhere, (for information on that case, please see our previous Law Now ) where the ECJ held that to have a reputation in the Community, a CTM must be known by a significant part of the public concerned by the product in a substantial part of the EU, and ruled that one Member State could be considered a “substantial part” of the EU.

Furthermore, the ECJ held that the reputation for the earlier CTM need not be in the Member State of the application to register the new mark, provided that a commercially significant part of the public make a connection between the two marks. The ECJ further confirmed that the case law regarding genuine use in the Community is not relevant to demonstrating a reputation for the purposes of Article 4(3).

For the full text of the decision, please click here.

COPYRIGHT

Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC and others [2015] EWHC 2291 (IPEC) , 30 July 2015

The Intellectual Property Enterprise Court has ruled that the commissioner of logos from a designer should be assigned the legal interest in the copyright of those logos, even though the legal interest had already been assigned to another company by the designer. As the claimant had commissioned the work on behalf of the defendant, it was the defendant that could be considered the ‘commissioner’. It, therefore, took the equitable interest in the copyright of the work under Griggs and others v Evans and others [2005] EWCA (Civ) 11. Having commissioned the work on behalf of the defendant, the claimant also had notice of the defendant’s equitable interest. It, therefore, could not be a darling of equity and took the assignment of the legal interest from the designer subject to the defendant’s equitable interest.

For the full text of the decision, please click here.