Issue No. 8, August 2024
Welcome
There have been three important appeals since the last issue:
As in previous years, I chaired the sessions on patents and enforcement and spoke about patents and IP litigation at the Cambridge IP Law Summer School at Downing College between 12 and 16 Aug 2024. I wrote about the course in the Cambridge IP Law Summer School 2024 Report in NIPC News on 23 Aug 2024.
Local enterprise partnerships ("LEPs") were collaborations of English local authorities, businesses and universities to take over responsibility for local economic development from the regional development agencies.? They were established by the coalition government shortly after it came into office.? I wrote about them in Local Enterprise Partnerships Begin to Take Shape?for the?NIPC Inventors Club blog on 21 Oct 2010. Following the publication of Guidance for Local Enterprise Partnerships (LEPs) and Local and Combined Authorities: Integration of LEP functions into local democratic institutions?on 4 Aug 2023 the functions previously carried out by the LEPs have been transferred to local authorities. I discussed this transfer of responsibilities in The End of LEPs in NIPC News on 8 Aug 2024.
The LEPs used to support independent inventors (that is to say, inventors not employed in R&D by businesses or universities) in various ways. It is not yet clear whether local authorities will offer them a similar level of support. Independent inventors may also have been disadvantaged by the disappearance of many local inventors clubs since the pandemic. To fill at least part of the gap that they have left I am expanding the activities of the LinkedIn Inventors Club to replicate some of the clubs' functions such as regular talks, clinics and links to resources.
Other topics I have discussed have been the launch of the IPO's standard essential patents resources hub and the UK's diplomatic representation in the United Arab Emirates.
Patents
FRAND
FRAND stands for the words "fair", "reasonable" and "non-discriminatory." They are the terms on which owners of standard essential patents ("SEPs") (patents that are essential for compliance with a technical standard) promise to license their monopolies. Problems arise because a SEP owner's idea of what is fair, reasonable and non-discriminatory terms is not always the same as an implementor's (user of a standard) Consequently, there has been a lot of litigation between SEP owners and implementors over whether alleged SEPs are really valid, essential for compliance with a standard and infringed. If a court finds that at least one patent in an owner's portfolio is valid, essential and infringed there can be a trial to decide FRAND terms for a worldwide licence for the patent.
Mr Justice Birss (as he then was) settled the first global licence on FRAND terms in Unwired Planet International Ltd v Huawei Technologies Co Ltd and another [2017] EWHC 1304 (Pat) (7 June 2017).[2017] RPC 20, [2017] EWHC 1304 (Pat), His judgment was ultimately upheld by the UK Supreme Court in Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another?[2020] RPC 21, [2021] 4 CMLR 3, [2021] 1 All ER 1141, [2021] ECC 17, [2020] UKSC 37, [2020] Bus LR 2422, [2021] 1 All ER (Comm) 885.
In InterDigital Technology Corporation and others v Lenovo Group Ltd and others [2023] EWHC 1578 (Pat) (27 June 2023) which implemented his judgment in??InterDigital Technology Corporation and others v Lenovo Group Ltd (FRAND Judgment - Public Version) [2023] EWHC 539 (Pat) (16 March 2023), Mr Justice Mellor settled the terms of a global FRAND licence between InterDigital Technology Corp and others ("InterDigital") and Lenovo Group Ltd and others ("Lenovo"). He required Lenovo to pay a lump sum of $138.7 million?to InterDigital?for a licence covering sales by Lenovo from 1 Jan 2007 to 31 Dec 2023 together with $46.2 million accrued interest.??I commented on his judgment in?Patents - Interdigital Technology Corporation and others v Lenovo Group Ltd. and others?on 21 March 2023,
Both sides appealed against Mr Justice Mellor's order. InterDigital complained that the lump sum was too low. It claimed a lump sum of $388.5 million together with $129.3 million accrued interest.? ?Lenovo argued that the award was too high and that the judge should have computed a lump sum of $108.9 million without any interest or interest at a lower rate and for a shorter period.
The appeal came before Lord Justices Arnold, Nugee and Birss between 10 and 14 June 2024.? It will be recalled that Sir Colin had settled the first FRAND licence in Unwired Planet when he was a first instance judge. The hearing was filmed and videos of the proceedings can be viewed on the Court of Appeal's Court 63 YouTube page.
The Court dealt with Lenovo's appeal first. Lenovo had argued that Mr Justice Mellor should have taken the 6-year limitation period into account and that he should not have awarded interest. The Court responded that the judge was not awarding damages but determining the consideration that a willing licensee would pay a willing licensor for a global licence on FRAND terms. Such a licensee would have required a licence from the first day of its use of the patent regardless of the limitation period and would have been willing to pay interest to compensate the licensor for any delay in payment.
Turning to InterDigital's appeal, the Court agreed that the lump sum that Mr Justice Mellor had awarded was too low. It was based on a unit rate that had been heavily discounted as a result of uncertainty over the law. In choosing that rate the trial judge had acted inconsistently with his finding that the results of such discounting were not FRAND. The Court substituted a higher rate, resulting in a lump sum of $178.3 million upon which 4% interest compounded quarterly was payable.
I discussed this appeal in my talk at Cambridge. I also mentioned the UK Intellectual Property Office's consultation on small and medium enterprises and licensing of standard essential patents which I had covered in ?Patents: a New Resource Hub on Standard Essential Patents in May and HMG's other Proposals on FRAND Licensing on 5 March 2024. The IPO had promised a resources hub on SEPs licensing by May but a general election was announced before the hub could appear. It was launched in July and I announced it in Launch of the IPO's Standard Essential Patents (SEPs) Resource Hub in NIPC News on 7 Aug 2024. This is a very useful resource for anyone interested in FRAND.
Excluded Matter
In Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023]?[2024] Bus LR 14, [2023] WLR(D) 500, [2023] EWHC 2948 (Ch)) (21 Nov 2023). Sir Anthony Mann held that a system for analysing a listener's preferences in music and recommending a track from any genre was patentable. There were already systems which divided music tracks into genres such as classical, folk, rock and so on that were capable of recommending tracks from the same genre based on listeners' previous choices,? The clever aspect of the invention was that it had trained itself to recommend tracks from any genre based on its analysis of a listener's predilections.
The invention could perform that task because it ran on an artificial neural network ("ANN"). That was an information processing system that mimicked the processing in the brain rather than the binary switching of transistors in a conventional computer.? In an ANN the system trains itself by adjusting qualifiers known as "weights" and "biases" in artificial neurons.? Once the process is complete the weightings can be transferred to another system.? Sometimes the circuitry of that system is permanently wired (a process known as "hard wiring") but it is also possible to program a conventional computer to function in the same way as an ANN.
As is well known, s.1 (2) (c) of the Patents Act 1977 excludes computer programs "as such" from patentability. When the company that owned the invention applied to the IPO for a patent, the examiner refused the application on the ground that the invention was nothing more than a computer program that made no technical contribution. The applicant appealed against the examiner's decision to Mr Phil Thorpe, a hearing officer appointed by the Comptroller-General of Patents, Designs and Trade Marks ("Comptroller") to determine disputes between inventors and examiners.
Mr Thorpe agreed with the examiner whereupon the applicant appealed to the Patents Court. The appeal was heard by Sir Anthony Mann who asked the parties to identify the computer and to indicate the program. The Comptroller's response suggested to the judge that there was no computer and certainly no program to which the exclusion could apply. If his assessment was wrong, the invention was more than a computer program as such in that it recommended a music track using the ANN,
The Comptroller appealed to the Court of Appeal which heard the appeal on 14 and 15 May, The hearing was filmed and can be viewed on the Court of Appeal's YouTube site here?and here.? The leading judgment was given by Lord Justice Birss on 19 July 2024. Lord Justice Birss defined a computer?as "a machine which processes information" and a computer program as "a set of instructions for a computer to do something." An ANN fell within his definition of a computer and it made no difference as to whether it was hardwired or software implemented.? The training process by which a user's preferences were analysed and weightings were adjusted fell within the definition of a computer program even though the process was automatic.? He could see no reason why a program had to be written by a human.? That was enough to haul the invention within the statutory exclusion of computer programs "as such."
All that remained was to decide whether the invention was a computer program "as such" or something more. Lord Justice Birss decided that there was nothing technical about selecting a music track for the following reasons:
"What makes the recommended file worth recommending are its semantic qualities. This is a matter of aesthetics or, in the language used by the Hearing Officer, they are subjective and cognitive in nature. They are not technical and do not turn this into a system which produces a technical effect outside the excluded subject matter."
The Court of Appeal allowed the appeal from Sir Anthony and restored Mr Thorpe's decision.in ?InterDigital Technology Corporation and others v Lenovo Group Ltd and others [2024] EWCA Civ 743 (12 July 2024).
Patents and Alternatives to Patenting
While compiling lists of links to useful articles on patents for the Inventors' Club I found How to Apply for a Patent in the UK which I had written on 29 June 2019. It required a little bit of updating which I did on 24 Aug 2024. I reissued it that same day and the post received a lot of interest. For the sake of balance, I also reissued Alternatives to Patenting which I had published in NIPC Cymru on 6 Oct 2021 in which I discuss the law of confidence and trade secrets, unregistered design rights, copyright, plant breeders' rights and ad hoc protection of semiconductor topographies.
Avoiding Entitlement Actions
Entitlement actions are proceedings to determine ownership of and rights and interests in patents and patent applications. I wrote about them in Disputes over Ownership of Inventions on 9 Aug 2015 in NIPC Southeast. In How to Avoid Entitlement Disputes I described those proceedings as "often heartbreaking because they arise from a breakdown of hope and trust and sometimes friendship."? ?I added that the right to a patent or patent application is contested fiercely even when it is clear that the patent is invalid or of little commercial value.
I noted that there are three types of relationships from which entitlement disputes tend to arise:
I observed that each of those situations can be avoided if the parties take independent legal advice and negotiate a written agreement that reflects the parties' intentions before any time or money is committed. I made very much the same point in Business Prenupts which I posted to NIPC Cymru on 31 Jan 2022.
Trade Marks
Likelihood of Confusion
Lifestyle Equities CV is the registered proprietor of the following mark in the UK and also in several other countries at the time of trial for clothing, footwear and other goods:
Lifestyle is and was its exclusive licensee. The two companies sued The Royal County of Berkshire Polo Club (one of the most prestigious polo clubs in the UK) for trade mark infringement and passing off for selling and offering for sale clothing, footwear, fragrances, luggage and watches under the following sign:
The club admitted that it had sold the specified goods but denied any likelihood of confusion. The action came on for trial before Mr Justice Mellor who dismissed the claim in ?Lifestyle Equities CV and Anotherr v Royal County of Berkshire Polo Club Ltd and others (Rev1) [2023] EWHC 1839 (Ch) (19 July 2023). In reaching his judgment, the judge took account of the existence?of other polo-themed clothing brands featuring horse-and-rider logos such as "Polo" by Ralph Lauren and the United States Polo Association. He described it as a "crowded market". The judge held that should such a crowded market be established, the claimants' trade marks would have a lesser degree of distinctive character than would otherwise have been the case.? Consequently, that would mean that there was less scope for a likelihood of confusion than would otherwise have been the case.
In comparing the sign and mark he noted that both were composite marks. No particular component dominated in either the mark or the sign.? The horse-and-rider motif did not have an independent distinctive role in the mark. He assessed the degree of visual and aural similarity as low to medium.? The degree of conceptual similarity was slightly above medium because both the mark and the sign signified a polo club. The visual impression was the most important. The aural impression was the least important. Even bearing imperfect recollection in mind, the words BEVERLY HILLS on the one hand and ROYAL COUNTY OF BERKSKIRE on the other hand had a material effect on the degree of similarity.?
The claimants appealed on the following grounds:
Ground 1:? The trial judge wrongly relied on matter extrinsic to the trade marks and the signs in making his decisions on infringement in two respects:
(a) The judge wrongly relied on the existence of other polo-themed trade marks. He was wrong to do so in particular because?
(i) those other brands were not relevant as a matter of law in assessing the distinctiveness of the claimants' trade marks,?
(ii) they did not form part of the relevant context in which the allegations of infringement should have been assessed, and?
(iii) there was no evidential basis on which to conclude that there was no significant proportion of the relevant public who was unaware of those other polo-themed trade marks.
(b) The judge wrongly relied on the terms of coexistence agreements entered into by the parties with third parties.
Ground 2:? If Ground 1 was successful but not to the extent that it led to a finding of infringement owing to a likelihood of confusion at the point of sale, then the judge would have wrongly rejected the claimants' reliance upon the likelihood of post-sale confusion.
领英推荐
The appeal came on before Lords Justices Baker, Arnold and Nugee on 9 July 2024.? The hearing was filmed and may be viewed on the Court of Appeal's YouTube channel (morning and afternoon). At the end of the oral proceedings, the Court of Appeal said that it would dismiss the appeal.? Lord Justice Arnold with the agreement of Lords Justices Baker and Nugee delivered those reasons on 22 July 2022 (see in Lifestyle Equities CV and others v Royal County of Berkshire Polo Club Ltd and others ?[2024] EWCA Civ 814).
Referring to paras [78] and [81]? in Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318 and paras [46] to [50] of Lord Briggs and Lord Kitchin's judgment in Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, [2024] Bus LR 532, Lord Justice Arnold reminded the Court that the likelihood of confusion required a multifactorial evaluation with which an appeal court could interfere only if the judge had made an error of law or principle.
The claimants had relied on Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703, [2006] EUECJ C-145/5, [2007] FSR 8, [2006] ETMR 71, [2006] EUECJ C-145/05 in support of their contention that the use of similar signs by other parties was legally irrelevant to the assessment of a registered mark's distinctiveness.? The claimants contended that just as use by a defendant of its sign could not be relied upon to support its claim for revocation on the ground that the mark had become the common name in the trade for a product or service for which it was registered, neither could use by third parties of signs similar to the registered mark diminish the distinctiveness of the mark. Lord Justice Arnold rejected that argument. The issue was not the impact of the defendant's use of its sign on the distinctive character of the trade mark, but the impact of third-party use of other signs. There was no good reason to discount this. On the contrary, experience showed that third-party use of similar signs does tend to diminish the distinctiveness of a trade mark. His lordship concluded that in a crowded market, it is hard for one mark to stand out.
The second reason why the claimants had argued that Mr Justice Mellor had been wrong to rely on the existence of other polo-themed trade marks was that they did not form part of the relevant context in which the allegations of infringement should have been assessed. Lord Justice Anbold disagreed. He noted that the context in which a sign was used had been irrelevant under the? Trade Marks Act 1938,? but that is not the case under the 1994 Act as is illustrated by Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2009] Bus LR 339, [2008] CEC 899, [2008] EUECJ C-533/06, [2008] RPC 33, (2009) 32(1) IPD 32001, [2008] 3 CMLR 14, [2008] ETMR 55, [2008] ECR I-4231, [2008] EUECJ C-533/6.? In that case, the defendant had used an image that was similar to the claimant's trade mark in a comparative advertisement for the services for which the mark had been registered. The Court of Justice held that there was no likelihood of confusion because the national court had found that the comparative advertisement was not misleading and did not suggest any commercial link between the parties or their services.? The Court of Appeal had considered that judgment in Specsavers and had taken account of it when formulating the principle that the use of a sign should be considered in context.
The third reason why it was alleged that the judge below had wrongly relied on matter extrinsic to the trade marks and the signs in making his decisions on infringement was that there was no evidential basis on which to conclude that there was no significant proportion of the relevant public that was unaware of those other polo-themed trade marks. The Court of Appeal rejected that argument.? The trial judge had made findings as to the distinctive character of the trade marks in the minds of average consumers in each of the relevant markets based upon the totality of the available evidence and he had been right to do so. It did not appear to have been argued at trial that there were distinct publics with different knowledge and therefore different perceptions of the trade marks. Nor did there appear to have been any evidential basis for such a finding. Contrary to the implication of the claimants' argument, there was no obligation on the defendants to prove a negative.
Mr Justice Mellor was alleged to have wrongly relied on the terms of coexistence agreements entered into by the parties with third parties. Mr Justice Mellor had described the coexistence agreements that both sides had made with Ralph Lauren as "a very useful and practical insight into the market for 'polo' brands and especially those which feature a polo horse and rider motif". ? However, when it came to carrying out his global assessment, the Court found that the judge had not referred to any of the coexistence agreements which had been in evidence. His conclusion that there was no likelihood of confusion was based in particular upon (i) his evaluation of the distinctive character of the trade marks, (ii) his assessment of the degree of visual, aural and conceptual similarity between the trade marks and the signs and (iii) the absence of any significant evidence of actual confusion despite considerable side-by-side trading in some territories. It followed that the judge had made no error of law or principle in his treatment of the coexistence agreements.
The question of whether there was any likelihood of post-sale confusion would have arisen only if the first ground had been successful. As it was unsuccessful, the point did not have to be considered, However, Lord Justice Arnold said that he could not see?how there could be a likelihood of post-sale confusion if there was no likelihood of confusion at the point of sale.
Business Support
IPO Overseas - Middle East and North Africa
The IPO has published a LinkedIn newsletter called IPO Overseas about the UK's?network of overseas IP attachés, trade experts and UK-based policy teams.? The latest issue, which was published on 26 July 2024,?is entitled "IPO's Middle East and North Africa ('MENA') International Team. The publication features an interview with??Ben Llewellyn-Jones, the IPO’s Director of Business and International Policy. As I mentioned in Why is there no longer a British IP Attaché to the Gulf Co-operation Council? there was an attaché to the Gulf Cooperation Council ("GCC") (see ?UK's New Intellectual Property Attache to the GCC 27 Oct 2021 NIPC Gulf).
Mr Llewellyn-Jones said that the GCC is this country's 4th largest non-EU trading partner after the USA, China and Switzerland and that British trade with that region is worth around ￡59 billion.? He indicated that the government is negotiating a free trade agreement with the GCC.? He mentioned that UK businesses can face a number of challenges when registering and protecting their IP in the Middle East. He advised businesses as follows:
He also encouraged businesses to use the IPO's overseas team.
The British government has published further guidance and information on doing business and the IP issues that arise in the Middle East which is not linked directly to the IPO's newsletter.? ?However, I incorporated that guidance and information and combined it with my own in IPO Guidance on the Gulf Cooperation Council?on 8 April 2023.
One resource that the IPO does not mention and perhaps should is that there are English-speaking common law courts in Dubai, Abu Dhabi and Qatar.? Each of those courts has judges who practised in the UK or other Commonwealth common law jurisdictions and all members of the Bar of England and Wales can qualify easily to appear before them.? If a British company is thinking of licensing its technology, distributing its goods or franchising its services in the region it may find advantages in choosing the law of one of those legal systems as the proper law and its courts as the forum for future dispute resolution.? This is an area in which my chambers have some expertise.? Colleagues who practise other areas of law already appear before those courts.? Last year, Stephen Somerville, our first deputy senior clerk visited Dubai and he has been sufficiently encouraged by that visit to make a second trip later this year.?
Transfer of LEPs' Functions to Local Authorities
In The End of LEPs, I mentioned the transfer of responsibilities from local enterprise partnerships ("LEPs") to local authorities. In para 8 of their Guidance on integrating Local Enterprise Partnerships into local democratic institutions the Ministers for Levelling Up and Small Business envisaged three pathways for integrating LEPs into local authorities. In the case of Mayoral Combined Authorities ((M)CAs), the integration would be seamless. In West Yorkshire, where there is such an authority, the transfer of responsibility from LEP to MCA was presented to the public as follows:
"From October 2023, the Leeds City Region Enterprise Partnership (the LEP) became known as West Yorkshire Business and Skills."
The Combined Authority offers various types of business support including help for start-ups and innovation. The website gives details of several businesses that it has helped.?
IP Training for London Boroughs
I have been invited to provide online training in IP for London borough officials on 1 Oct 2024 between 10:00 and 11:30 on 1 Oct 2024.
Cambridge IP Law Summer School
I have been chairing sessions and speaking at the Cambridge IP Law Summer School?on and off since 2017 but this year's was the best.? That was because of an exceptionally talented cohort of attendees, fascinating lectures on topics ranging from artificial intelligence to geographical indications and glorious weather.
I attended most of the talks and enjoyed all that I attended but the following were my favourites:
The talks took place in the Howard Building?which was close to the main dining hall and attendees and speakers were housed in students' residences nearby.? Breakfasts and two of the dinners were served in the hall and lunches and a barbecue in the Howard Building's gardens.? A quiz took place on the first night. There was punting on the second day, a walking tour on Wednesday and a gala dinner on Thursday.
Independent Inventors
Inventors who are not employed in research and development by companies or universities (independent inventors) have contributed many useful inventions but they seldom derive much benefit from their work. There are many reasons for that. It is one thing to invent a product but quite another to place it on the market. Prototypes have to be made and tested. Funding has to be obtained. Patentes or some other form of legal protection has to be secured. Help is not easy to find and can be expensive.
Until the pandemic, inventors' clubs used to help. I helped to set up inventors' clubs at Leeds, Liverpool and Sheffield Central Libraries and chaired their proceedings for many years. Each of those clubs hosted talks from patent attorneys, product design engineers, marketing consultants, patent examiners and inventors who had successfully launched their inventions and established successful businesses.
As I said in The Online Inventors' Academy many of those inventors' clubs appear to have disbanded. The Wessex Region of Technologists and Inventors publishes a list of links to inventors' clubs around the country. I tested them recently and found that many of them were broken. Some of those clubs may have changed their web addresses or are functioning without a website. New clubs may have sprung up around the country. I know of one at the British Library at St Pancras but I have not come across any others.
In an attempt to fill the gap left by the disappearance of the inventors' clubs, I propose to expand the activities of the Linkedin Inventors' Club. It already has a publication which has been running for nearly 20 years. I shall supplement these with resource pages with links to articles, case notes, legislation and precedents. I have made a start with Confidential Information and Patents. This will be combined with the pro bono initial advice and signposting services that I have also run for many years. Most importantly I shall organize a series of online talks by experts in their field between 18:00 and 19:00 of every month starting with a talk by me on Patents and Alternatives to Patenting on 19 Sept 2024.
Contact
If you want to learn more about check out my profile. I offer contentious and non-contentious services in IP and tech law some of which are available under the Bar''s direct access scheme. If you want to know more about the services that barristers can offer read IP Services from Barristers. I practise primarily from 4-5 Grays Inn Square, London, WC1R 5AH but I also have chambers at Two Snow Hill, Birmingham B4 6GA and The Media Centre, 9 Northumberland Street, Huddersfield, HD1 1RL Call me on 020 7404 5252 during office hours or send me a message through my contact form at other times. Finally, I am on LinkedIn, Facebook and X.
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2 个月Thanks foir re-sharing my post, PatWorld,
Expert in Organisational Development: Consultant for Contracts, Tax, Audit, Security, Coaching & Selection at Accorde Public Policy Forum
2 个月How was it then that EMI was allowed to go bust? With its MRI research sold off to Siemens allegedly for a hundred & fifty quid? With somewhat spectacular results?