Wednesday, 30 September 2009

Easy peasy

Is it an accident that the acronym for the latest version of the proposed European and Community Patent Court is ECPC, a close homophone of "easy peasy"? Document 13607/09 published yesterday ahead of next week's discussions by the Working Party on Intellectual Property (Patents), describes the current thinking with regard to a court in its Annex:

4. The ECPC shall have exclusive jurisdiction in respect of litigation related to the infringement and validity of Community patents and European patents.

5. As outlined in the Draft Agreement, the ECPC shall comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance shall comprise a central division as well as local and regional divisions.

6. The Court of Justice of the European Communities shall ensure the principle of primacy of Community law and its uniform interpretation [Here's hoping that the Court can speed-read its way through patent law and emerge with some mastery of it].


7. In order to build up trust and confidence with users of the patent system and to guarantee high quality and efficiency of the ECPC's work, it is vital that the composition of the panels is organised in a way which makes best use of available experience with patent litigation among judges and practitioners at national level through pooling of resources.

8. All panels of the local and regional divisions and the central division of the Court of First Instance shall guarantee the same quality of work and the same legal and technical expertise [This is a lot to guarantee. Can it confidently be said of the EPO or OHIM Boards of Appeal, for instance, that they have achieved "the same quality of work and the same legal and technical expertise" in the period since their establishment?].

9. Divisions in a Contracting State where, during a period of three successive years, less than fifty cases per year have been commenced, shall either join a regional division with a critical mass of at least fifty cases per year or sit in a composition whereby one of the legally qualified judges is a national of the Contracting State(s) concerned and two of the legally qualified judges come from the pool of judges to be allocated to the division on a case by case basis [Will this enable the 50+ judge to fulfil a didactic role, or will he be diluted by his juniors?].

10. Divisions in a Contracting State where, during a period of three successive years, more than fifty cases per calendar year have been commenced shall sit in a composition whereby two of the legally qualified judges are nationals of the Contracting State. The third legally qualified judge, who will be of a different
nationality, will be allocated from the pool of judges on a yearly basis.

11. All panels of the local and regional divisions shall comprise an additional technical judge in the case of a counterclaim for revocation or, in the case of an action for infringement, when requested by one of the parties. All panels of the central division shall sit in a composition of two legally qualified judges and one technically qualified judge. The technically qualified judge shall be qualified in the field of technology concerned and be allocated to the panel from the pool of judges on a case by case basis [If handled properly, this could be quite effective].

12. The allocation of judges shall be based on their legal or technical expertise, linguistic skills and proven experience.


13. In order to ensure that local and regional divisions work in an expeditious and most efficient way, it is vital that the divisions have some flexibility on how to proceed with counterclaims for revocation. Direct actions for revocation of patents shall be brought before the central division. A counterclaim for revocation can be brought in the case of an action for infringement before a local or regional division.

The local or regional division concerned may proceed with the counterclaim for revocation or refer the counterclaim to the central division and proceed with the infringement action or stay those proceedings [Naturally, considerations of speed and timing are paramount for many litigants, and it is as much by its responsiveness in these matters as by the quality of final decisions that the system will be judged].

It may also, with the agreement of the parties, refer the case for decision to the central division.


14. The Draft Agreement, the Statute and the Rules of procedure shall provide for arrangements which will guarantee fairness and predictability of the language regime for the parties [So long as language is a procedural issue, it shouldn't cause any problems. It's only when people start using it that difficulties arise]. Furthermore, any division of the ECPC shall provide translation and interpretation facilities in oral proceedings to assist the parties concerned to the extent deemed appropriate.

15. The language of proceedings of the local and regional divisions shall in general be the language(s) of the Contracting State(s) where they will be established. Contracting States may however designate one or more of the official languages of the European Patent Office as language of proceedings of the local or regional division they host. The language of proceedings of the central division shall be the language
of the patent. The language of proceedings of the Court of Appeal shall be the language of the proceedings at the First Instance. It shall however be possible, for reasons of convenience and fairness to the parties, for the panels in local and regional divisions to, under particular circumstances, decide on the language of the patent as the language of proceedings at the request of one party, after having heard
the other parties. Such circumstances could for instance be when one of the parties is a small or medium sized enterprise or a private party that has no establishment or domicile in the Contracting State where the relevant division is situated. Such an order may always be appealed separately".

Thursday, 24 September 2009

Patent search tool: any comments?

Kristin Whitman (Senior Content Editor, has emailed to ask what PatLit readers think. She writes:
"I work for the Alexandria-based search firm Landon IP (you may have heard of us through our contract work for the USPTO). We’ve recently launched the free website Intellogist ( as a resource for information about patent searching tools and techniques.

I was hoping to get your thoughts on the usefulness of this resource to the IP community and any thoughts you might have for its further improvement. I know your blog is focused on issues in intellectual property litigation, but skilled patent searching is an important component of most cases involving patents, and I have always thought that the community might welcome a resource directed specifically to finding prior art.

The product contains five major resources:
- Formal reports on the features, pros and cons of commercial patent search tools (e.g. Thomson Innovation, PatBase etc.)
- Side-by-side comparisons of the major features of major patent search tools
- An “interactive coverage map” that allows users to select a country to see which search resources offer electronic patent data coverage
- A “resource finder” that lists major scientific and technical literature databases by subject
- A wiki area for best practices in prior art searching techniques

I would be very grateful for any comment you may want to share with us, as we are hoping to continue offering the service as a free resource to the community and improving it in any way we can".
If you have any thoughts you'd like to share with other readers, please post them below. If they're for Kristin's eyes only, you can email her here.

Wednesday, 23 September 2009

Coming soon: the Future

A circular from UCL's Institute of Brand and Innovation Law announces that on 11 November 2009 it will hold its annual Innovation Seminar, "The Future of Patent Litigation". The venue is UCL's lovely Cruciform Lecture Theatre 1, Cruciform Building, Gower Street,London, WC1.

Speakers at this event include Lord Justice Jackson (Litigation Costs), Mr Justice Arnold (Patents County Court) and Professor Adrian Zuckerman (Civil Procedure and Patent Law). Professor Lionel Bently, of Cambridge University's CIPIL, will take the chair. According to the information received,
The event will start at 6pm and finish, with a drinks reception, at 7.30pm. It is accredited with 1.5 CPD hours by the Solicitors' Regulatory Authority and BSB [click here for some delightful possibilities afforded by Wikipedia's disambiguation page] .

This event is free of charge for academics and students; there is a small fee for solicitors, barristers, government lawyers, NGOs and others.
If you'd like to register, or are just plain curious to see who has already registered, click here.

Monday, 21 September 2009

If you liked the Rule, you'll love the Practice Direction

Following on from today's earlier post here about the new version of Part 63 CPR, on 1 October 2009, the 50th Update to the CPR will introduce a new Practice Direction to Part 63. The new Part 63 Practice Direction complements the new Part 63 CPR in that they have both been re-ordered, updated and renamed as governing "Intellectual Property Claims" generally.

The significant changes to the Part 63 Practice Direction are:
1. Claim forms must include the registration number of the patent, registered design or trade mark to which the claim relates.

2. Where the validity of a patent or registered design is challenged, the Grounds of Invalidity must specify the grounds on which validity is challenged, as well as "include particulars that will clearly define every issue (including any challenge to any claimed priority date) which it is intended to raise."

3. A party intending to serve a product and process description (instead of complying with the standard disclosure obligations) must notify the other party of its intention to do so, 21 days before the date for serving disclosure lists. The product and process description must be accompanied by a witness statement which states that the person making the statement (i) is acquainted with the facts, (ii) verifies that the description is a true and complete description of the product or process alleged to infringe, and (iii) understands that he or she may be cross-examined on the contents of the description.

4. paragraphs 11.1 to 11.4 have been added to deal with requests to limit a patent centrally at the European Patent Office.
The new Part 63 Practice Direction can be found here.

In addition to the changes to Part 63, of interest to patent litigators, will be the changes to Part 35 governing expert evidence. Although most of the amendments deal with single joint experts and any discussions between experts, experts must sign a new statement of truth, which cannot be modified. They must also state, in their reports, that they understand and have complied with their duty to the Court, and are aware of the requirements of Part 35, the Practice Direction to Part 35 and the Protocol for Instruction of Experts to give Evidence in Civil Claims. The new wording can be found here.

Written by Priya; posted by Jeremy

In force soon, the new Part 63 in England and Wales

On 1 October 2009 the Civil Procedure (Amendment) Rules 2009 will come into force in England and Wales. Among other things, the new rules will introduce a new version of CPR Part 63 governing intellectual property claims. The new Part 63 has largely been amended to update references to legislation, as well as re-order and clarify some of the rules. The more significant changes are:

1. claims relating to Community registered designs, semiconductor topography rights or plant varieties must be started in the Patents Court of the High Court or a patents county court and the procedural rules for patent and registered design claims will apply equally to them.

2. A defendant to a claim for infringement of a patent or registered design will now have at least 42 days from service of the particulars of claim in which to file its defence. Previously a defendant had 42 days from service of the claim form (although this change will have little practical significance where the particulars are served with the claim form). New r. 63.7(b) CPR clarifies that if r. 15.4(2) CPR affords the defendant a longer period of time to file its defence (e.g. because the claim form is served out of the jurisdiction or the defendant disputes the court's jurisdiction), then the longer period will apply.

3. A person may refer questions of entitlement prior to and after grant of a patent, issues of employee compensation for certain inventions, as well as patent revocation and infringement issues to the Comptroller-General. If the Comptroller considers that it is more appropriate for the Court to determine such matters, a person should issue a claim form within 14 days of notification of the Comptroller's decision. New r. 63.11(2) CPR provides that if a person fails to start a claim within the 14 day period, the reference will be deemed to have been abandoned. However, retrospective extensions of the 14 day period are possible.

4. The previous Part 63 provided that the Registrar should be served with copies of Part 20 claims seeking any relief, which if granted, affected entries on the trade mark register (e.g. revocation, invalidation or rectification of trade marks). The new Part 63 does not limit the service of documents on the Registrar to Part 20 claims about trade marks. New r. 63.14(3) CPR provides that where a party seeks any remedy (whether by claim form, counterclaim or application notice) which would, if granted, affect an entry in any UK Intellectual Property register, the party must serve a copy of the relevant statement of case and accompanying documents on the Comptroller or Registrar. Once served, the Comptroller or Registrar may take part in proceedings, but will not need to serve a defence or other statement of case unless the court orders otherwise.
The new Part 63 can be found here

Written by Priya; posted by Jeremy

Friday, 18 September 2009

Forthcoming events now listed

The PatLit weblog's side bar is now running a list of forthcoming events. If you are running any conferences, seminars, courses or lectures which have patent dispute resolution as their main focus or one of their themes, email me here and I'll be pleased to add it to the events list.

Friday, 11 September 2009

World Patent Court? You're off your trolley ...

The best thing to come out of the IPKat's recent Dilbert post ("Not enough to make a Kat laugh ..." here) was the anonymous posting of an item the Hemi Patent Sketch. Its subject-matter is closely related to patent litigation and, for the true IP fan, it's every bit as as good as the Monty Python sketch which it so gloriously recalls. For the benefit of readers of this blog who are never likely to read down as far as the 29th comment on the original posting, PatLit is pleased to reproduce it here.

The Hemi Patent Sketch runs as follows:
"Client: Hello. I would like to sue someone for patent infringement.

Attorney: Certainly sir, in which jurisdiction?

Client: At the world patent court.

Attorney: [ Face clouding over] But Sir, there is no such court.

Client: There must be, I had a judgement from it last year.

Attorney: You cannot have a judgement from a court which does not exist.

Client: Well I bleeding well got one.

Attorney: You’re a loony you are.

Client: Why should I be tarred with the epithet loony, simply because I chose the most convenient judicial body. I’ll have you know that Mr Dupont of the Dupont Clothing Inc went to the same court and won. So if, by implication, you are calling the inventor of the self removing trouser a loony, I’m afraid I shall have to ask you to step outside.

Attorney: All right, all right, so you want to sue. Did you try in any other jurisdictions?

Client: Yes, at the European Patent Litigation Court.

Attorney: You are a loony!

Client: Look I have a European Patent, it’s quite logical that I should litigate at the corresponding European Judicial instance.

Attorney: [Recovering his composure] Well can I see a copy of the judgement then?

Client: There you go my good man [hands over a document]

Attorney: This isn’t a judgement from a European Patent Litigation Court, it’s a judgement from the County Court of South Wales, with the word “Gwent” crossed out and “European” written in crayon!

Client: The man didn’t have the right form.

Attorney: What man?

Client: The man from the counterfeiting detector unit

Attorney: You mean the loony detecting unit!

Client: It’s people like you what cause unrest.

Attorney: So there’s a counterfeiting detector unit?

Client: Yes, from the department of Trade and Industria.

Attorney: The department of Trade and Industria?

Client: Yes, it was spelt like that on the van. I notice these things. Anyway, since my European patent was published last year, it was a cinch to copy the invention. They told me I should grant a compulsory licence to avoid being fined.

Attorney: And how much did they charge you for this advice?

Client: Two-hundred quid..... and forty for the unicorn.

Attorney: What unicorn?

Client: The one they kept in the van.

Attorney: A unicorn, almost as mythical a beast as the European Patent Litigation Court. Is everything about you fake?

Client: I’ll have you know that the first Comptroller of the British Patent Office kept an entire menagerie of Pan-European Intellectual property instances in his garden shed.

Attorney: No he didn’t.

Client: Did!

Attorney: Didn’t!

Client: Did, did, did, did, did and did!

Attorney: Oh all right then.

Client: Spoken like a true gentleman sir, now can I sue at the world patent court or not?

Attorney: I promise you that there is no such thing - you have to sue separately in every state.

Client: In that case I’d like to sue at the ASEAN regional Intellectual Property, small claims and defective noodles court.

Attorney: [Pensively] Defective noodles.... hmmm.....

Client: It concerns my world patent WP-09/000001

Attorney: Of course it does. So you want to litigate for infringement of this non-existent IP.

Client: Half-IP.

Attorney: Half-IP!

Client: It suffered a partial accidental anticipation.

Attorney: You’re off your trolley. In fact, after you gnawed through the leather straps and got off the trolley, you left the funny farm entirely and started a new life in Exeter with a complimentary lifetime supply of lithium-flavoured boiled sweets.

Client: Look, if you intend by that utilisation of an obscure colloquialism to imply that my sanity is not up to scratch--or indeed to deny the semi-existence of my patent--I shall have to ask you to listen to this.....Take it away, the non-existent orchestra Leader!

[Musical interlude – Eric the half-IP]".

Thursday, 10 September 2009

Patents, pirates and programs -- a random thought

Fascinated by the growth of the Pirate Party around Europe in recent months, PatLit tried to do a little research on it. This is because, while that party's support for file-sharing without copyright restrictions is frequently mentioned in the media, its opposition to patents (particularly software patents), which is less well-known, may result in the party extending its activities to the submission of amicus briefs and otherwise supporting anti software patent causes. The party is now active, so far as Wikipedia's entry on Pirate Party International shows), in most countries in Europe. It is particularly active in Sweden (where it has secured representation in the European Parliament) and Germany (where it is represented both in the German parliament and at local level).

This causes PatLit to wonder: if the Pirate Party were to seek to intervene in patent litigation in European national courts or to side with a defendant in infringement proceedings, where would it stand the best chance of success? It is a well known but regrettable fact that, while the European Patent Convention ostensibly provides the identical standard for patentability in all its member states, the application of its principles at national level is far from homogenous; some nations' courts seem quite comfortable with software-related patents which others would hesitate to uphold -- whether as business methods, presentations of information or computer programs "as such", or as lacking sufficiency or inventive subject matter.

PatLit therefore asks: which European jurisdictions are likely to be the most resistant, and which the least, to assaults on the validity of software patents? If you have any insights, do let me know. If we get enough responses we can even publish a 'league table' ...

Wednesday, 9 September 2009

Truth or costs savings: dealing with a tired, unwell and confused witness

PatLit missed this Patents Court decision of Mr Justice Arnold of 15 June 2009 at the time, but it throws some light on the relationship between the treatment of witness evidence and the desire to avoid unnecessary costs: it's FNM Corporation Ltd v Drammock International Ltd and LEC (L'Pool) Ltd (the redacted judgment is [2009] EWHC 1294 (Pat)). The action was for infringement, with counterclaims for revocation and ungrounded threats of infringement proceedings. The second defendant LEC was a business that was formerly a supplier of the claimant patent proprietor FNM. Mr Savage was employed by LEC as a chemist for nearly seven years and his evidence regarding the formulation of his employer's products was crucial.

Mr Savage, said the judge, initially "struck me as a truthful witness whose evidence was broadly consistent with that of the other witnesses ...". However, a third witness statement of Mr Savage, served by the defendants, relates that
" ... at the time he gave evidence he was unwell from an infection in both ears, tired from waiting around to give evidence and confused. (He does not mention his age, but he would be entitled to rely on that as well)."
When the trial resumed, the parties agreed that, in the interests of avoiding the costs that would be wasted if the trial were to be adjourned and Mr Savage recalled, Mr Savage's third statement would be admitted without cross-examination and FNM would be at liberty to submit that Mr Savage's evidence was false without putting that allegation to him in cross-examination as would normally be required. Said the judge:
"Although I was prepared to acquiesce in this arrangement, I have to say that I do not regard it as very satisfactory. It is not fair to the witness and it makes it more difficult for the court to be sure where the truth lies.
As envisaged by this agreement, counsel for FNM submitted that Mr Savage's evidence was false. Indeed, he went so far as to submit that the evidence I have quoted ... above was "a total and obvious concoction". I do not accept this. Mr Savage is a retired professional chemist. He has had no connection with LEC for over 6 years. No cogent reason has been advanced as to why he should engage in an outright lie. ...
It is fair to say that, given the apparent contradiction between some of the things that he said during cross-examination and his subsequent evidence, Mr Savage's evidence has to be treated with some caution. Nevertheless, I am prepared to accept the explanation given in his third statement that he was unwell, tired and confused at the time of his cross-examination".
PatLit wonders if readers know of other recent instances in which the 'truth v cost savings' issue has arisen in this manner, as well as how the evidence of confused and/or unwell witnesses in patent trials might be handled in jurisdictions other than England and Wales.

New logo competition: the winner

Securing an impressive 33% of the 127 votes cast, the logo featured above romped home as the clear winner of PatLit's new logo competition. The winner is Chana Hughes, of Startle Web Design. Well done, Chana, congratulations from us all. Thanks are also due to the other entrants, especially Kristof Neefs (Altius) whose artistry was much appreciated.

Wednesday, 2 September 2009

Criminalising patent infringement: some issues

The debate over the proposal by celebrated inventor Trevor Baylis that patent infringement be the subject of criminal proceedings as well as actionable under civil law (reported by the BBC here) has triggered a good deal of debate (see for example the large number of comments following Birgit Clark's article "Criminalising patent infringement -- barking mad", published on the IPKat here.

Left: interesting problems might arise where robot policemen themselves constitute infringements of third party patents

Since the debate is likely to continue for a while, PatLit thinks it might be worthwhile making a few points:
* The Crown Prosecution Service in England and Wales, and its Scottish and Northern Irish equivalents, have little knowledge and experience in any branch of intellectual property law. The same can be said for the courts that hear criminal cases. Such expertise would have to be acquired at a cost and would have to be renewed or refreshed at regular intervals, particularly if it were not regularly brought to bear;

* Countries that do make provision for the criminal prosecution of patent infringers appear to invoke the criminal only very rarely;

* If, as in the case of criminal trade mark infringement, it is open to the accused to raise any defence which he might raise in corresponding civil proceedings (see the House of Lords ruling in R v Johnson [2003] UKHL 28), a defendant in criminal proceedings might be expected to raise issues such as invalidity on any number of grounds, not to mention arguing the toss under the Protocol to Article 69 of the EPC on the issue of infringement;
* The possibility will arise for an aggrieved patent owner to seek to invoke the threat of prosecution for criminal infringement as a way of discouraging secondary infringers such as distributors and retailers from handling allegedly infringing goods. Would and should a patent owner who presses the police to prosecute be liable for wrongful threats?

* If criminal law is to remain an important component of the protection of both rights owners and society at large in the fields of trade mark and copyright infringement, are the grounds upon which patent infringers are either included or excluded from that group clearly understood?
PatLit would like to hear from readers as to whether they consider the general criminalisation of patent infringement (i) necessary, (ii) desirable or (iii) unfeasible. Comments, please!