Posts Tagged ‘Patent litigation’

Patent Law Update – High Court upholds patent validity decision of the Patent Office

Monday June 21st 2010, by Piers Strickland

SUMMARY: The High Court has approved of and upheld the decision of a more cost-effective and efficient way of assessing whether patents are valid (as opposed to going to court).

BACKGROUND: The High Court has recently upheld the decision of the Patent Office (otherwise known as the Intellectual Property Office (IPO)) in the case of Nampak Cartons Ltd v Rapid Action Packaging Ltd [2010] EWHC 1458 (Pat), 18 June 2010. The hearing officer in the Patent Office had held that a patent for a carton for holding a sandwich with a specific means for tearing the carton open was valid.

The appellant (Nampak) appealed the decision of the hearing officer of the Patent Office that the patent (owned by Rapid Action) was valid.  In particular, Nampak sought to revoke a patent on the grounds that it was obvious in the light of cited prior art.

The Judge in the High Court, the Honorable Mr Justice Floyd held that he could interfere with the decision of the hearing officer if the hearing officer had erred in principle or was clearly wrong.  The Judge also referred to a previous case which stated that: “Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation” (as per Lord Hoffmann in Biogen v Medeva [1997] RPC 1 at page 45).

COMMENT

This decision is good news for those companies who are reluctant to spend millions of pounds litigating patents in the High Court.  If a company simply wants clarity on whether a patent is valid or invalid, and/or whether a product or process infringes a patent, then such an applicant may apply to the Patent Office for a declaration in this respect.  Such an application is likely to be a fraction of the price of making such an application in the High Court and crucially even an unsuccessful applicant will not be exposed to such a high level of legal costs as would be the case if such an application was made to the High Court.

Expect more companies to lodge such applications in the Patent Office in order test whether certain patents are valid.

If you would like to discuss making such an application to the Patent Office, please feel free to call us in confidence.

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Dragons’ Den shows the importance of intellectual property rights

Friday September 4th 2009, by Piers Strickland

The Dragons’ Den television series always raises a smile on the face of intellectual property lawyers, as it emphasises the importance of intellectual property rights in the modern competitive market.

One of the first questions often asked of the inventors by the Dragons is “who owns the rights to this product”.  Frequently, this translates as to meaning who owns the intellectual property rights in a product.  In the most recent episode broadcast of Dragons’ Den, a 21 year-old inventor, Vernon Kerswell, faced what came close to threats of patent infringement from Peter Jones, who is a 25% owner of a competing toy company.

Peter Jones claimed that there was no way this inventor could sell his wheeled helicopter device because his company owned the “worldwide patent” on this invention.  Strictly speaking, there is no such thing as a unitary worldwide patent, so Peter Jones can be quite legitimately accused of over-stating his position right at the outset.  In any event, patent issues are rarely simple enough to make broad sweeping generalisations, without a careful consideration of the issues.

In assessing whether the wheeled helicopter device does amount to an instance of patent infringement, a court would analyse the claims of the patent to see if they cover the new product.  The court would also usually be asked to decide whether the patent in question was valid.

Many granted patents are in fact invalid, hence perhaps Peter Jones’ sensitivity by claiming the patent in question was “watertight”.  Also, the wider the claims of a patent are, the more chance they often have of being judged invalid.  Furthermore, patents are time-limited, generally to around 20 years, so while they offer a monopoly over the invention in question, it is a monopoly right that does not last forever.

In the field of helicopters, which have clearly been around for well over 20 years, one issue would be how much longer such patents will be in force.  On the other hand, novel applications of existing technologies can, on occasion, give rise to the right to a fresh patent.

Conclusion: inventors should not take at face value broad statements from patentees / patent licensees, such as Peter Jones.  The law in this area is complex, so much so that the great Evan Davis clearly is muddled himself referring to this patent infringement issue as a “copyright infringement” matter.

A specialist intellectual property lawyer can often find a new company an effective and safe way through what it called the “patent thicket”.  As is no doubt one of the Dragons’ mantra (so long as they don’t have a competing vested interest), perseverance pays dividends.

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