IP Bulletin - Summer 2011

Cases from June

KEY CASE

Albert Packaging Ltd and others v Nampak Cartons & Healthcare Ltd, Patents County Court – unregistered design right. The Patents County Court has held that the claimants had design right in the shape of their carton, but that it had not been infringed by the defendant. PATENTS

High Court – mobile phone patent

Nokia Corporation v IPCom GmbH & Co KG, [2011] EWHC 1470 (Pat), Floyd J, 16 June 2011

The High Court has held a divisional patent of a parent mobile-phone patent to be valid.

This action was another stage in the litigation which is pending in a number of jurisdictions in relation to the mobile telephony patent portfolio which the defendant, IPCom, purchased from Robert Bosch GmbH.

The claimant, Nokia Corporation, sought revocation of IPCom's European Patent (UK) No. 1,841,268 on the grounds of obviousness, added matter and insufficiency. This patent was divided out of the parent patent, European Patent No. 1,186,189. Like the parent patent, 268 was concerned with managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station ie how one controls access by mobiles to a random access radio channel or RACH between the mobile and the base station (the "uplink"). Where the uplink from a mobile station is a shared random access channel, there is a danger of collision between users' signals, allowing stronger signals through and preventing weaker ones. This competition is called "contention". It can be tackled in numerous ways. One set of ways in which the problem is tackled is by restricting access to the channel.

The parent patent was found to be invalid in an earlier action in which Floyd J refused (on procedural grounds) IPCom's attempts to introduce claim-narrowing amendments, one before and one after judgment. The claims of 268 resembled those which IPCom were trying to get into the parent action by amendment: but no procedural objection was taken on this ground.

In response to the action for revocation, IPCom made a conditional application to amend the 268 patent. In addition, by counterclaim, IPCom alleged infringement of 268 in respect of a number of mobile phones sold by Nokia. Nokia denied infringement.

Nokia also sought declarations of non-infringement in relation to a series of further mobile phones. IPCom advanced no positive case in relation to these phones, but sought a declaration that the relevant Nokia phones were not compliant with the relevant mobile telecommunications standard (UMTS). Nokia applied for summary judgment in its declaratory action. That application was adjourned to the trial.

The court rejected all the attacks on the 268 patent based on obviousness. It held that the patent as amended was not invalid for added subject matter or insufficiency.

The court held there to be infringement by certain Nokia devices and granted a declaration of non-infringement in respect of other devices. IPCom's request for a declaration was refused.

IPO – entitlement provisions in Patents Act and CPC

Rigcool Ltd v Optima Solutions UK Ltd, O/182/11, 1 June 2011

A hearing officer has allowed an extension of time for an application for entitlement proceedings that was filed out of time on the second anniversary of grant.

Previously, an application to the IPO to commence entitlement proceedings which was filed on the second anniversary of the grant of the patent concerned, was held to be out of time (see May 2011 Bulletin).

The applicant requested an exercise of discretion under rule 107 of the Patents Rules 2007 to extend the period.

Rule 107 provides that an irregularity may be corrected if:

"(3)(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner or the Patent Office; and

(b) it appears to the comptroller that the irregularity should be rectified."

The hearing officer allowed an extension of time of one day, so that the proceedings could continue.

The hearing officer said that references in the IPO manuals to "more than two years after the mention of grant" were unclear; in an earlier case in which the issue arose, the hearing officer had said that this was a difficult issue; and there was evidence that the IPO had accepted applications filed on the second anniversary.

IPO – Peer to Patent

http://www.ipo.gov.uk/about/press/press-release/press-release-2011/press-release- 20110601.htm

A pilot of Peer to Patent, a new tool designed to help improve the patent application process, was launched today. Peer To Patent is a review website which allows experts from the scientific and technology community to view and comment on patent applications.

It follows successful Peer To Patent websites that have already been run in the USA and Australia.

During the six month pilot, up to 200 applications in the computing field will gradually be uploaded for review on the website. These will include a range of inventions from computer mice to complex processor operations.

The first group of applications have been uploaded and are open for review by registered users for three months. Following this, the system will create a summary of the comments which will be sent to an IPO Patent Examiner, who will then consider these as part of the patent review process.

The UK pilot went live on 1 June 2011 and will end on 31 December 2011.

Patents County Court (Financial Limits) Order 2011 (SI 2011/1402), 8 June 2011

http://www.legislation.gov.uk/uksi/2011/1402/pdfs/uksi_20111402_en.pdf This Order came into force on 8 June 20110. It affects all proceedings within the special jurisdiction of a patents county court in which a claim is made for damages or an account of profits. It states that the amount or value of that claim shall not exceed £500,000. In determining the amount or value of a claim, a claim for interest, other than interest payable under an agreement, or costs shall be disregarded.

There are appropriate transitional provisions.

IPO – consultation on patent infringement in pharmaceutical trials

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