Tuesday, 4 November 2008

Educating Samuel: No. 1 Added Matter

The talk on brand protection in tiddlywinks somehow attracted a good number of serious looking fresh faced young assistants and trainees from Addleshaws, DLA, Eversehds, Hammonds and so on Ito the LES meeting the other day, but there were a few familiar faces. Bob Stringer and Lucy Ball from Tebbits, Gary Grail and Will Furry from Callaghan Cannon, Sebastian Goat of Hannibals and Mr Samuel Pepys of Deweys (recently rebranded from Dewey, Screwem & Howe). Purchasers of my book "Enforcing Intellectual Property Rights" will be able to read about my con with Mr. Pepys where I rescue him from the likelihood of a threats action as well as a great deal more.
As it happened Mr. Pepys parked himself next to me when we assembled for dinner at La Pattumiera, the trendy new eating place which was the venue for our meeting.   After shaking hands and exchanging business cards with 2 weedy-looking, bespectacled technical assistants from Applecores sitting opposite us and studiously avoiding Sebastian whom he had known from a previous life Samuel turned to greet me and froze.
"Anything the matter, Sam?" I asked.
"Good Lord," replied Sam, "Are you who I think you are?"
I reminded myself that it had been a very long time since Sam last darkened the door of my chambers and that he had probably not been aware that I was transsexual and that I had changed my name since we last met.
"Who do you think I am?" I teased.
"Well you do remind me of a barrister I once instructed but - er - he, I mean she, I mean the barrister was different."
"Different in what way," I prompted.
"Well you've got more hair".
"And you've certainly got less" I replied. "Must be the cares of office since you got equity at Deweys."
"You knew about that?"
"Yes you told me. More than once in fact"
"Oh!" said Sam. And then he repeated himself.
Realizing that I would have a very tedious evening unless I made some conversation I asked him what he was doing nowadays.
"Well actually John ...."
"Jane" I corrected
"Well John I mean Jane, I happen to have a patent case."
"Oh really. Who's doing it for you?"
"Oh Nigel Smith as it happens. Do you know him."
"Oh yes" I replied. "You were instructing him when we last met. I seem to remember he got rather a buffeting from the V-C at Liverpool motion day."   I know motion day is now called "chancery interim applications day" but that's rather a mouthful.
"Well I do support the local bar. Mr. I mean Ms. Lambert."
"You mean you've done the rounds of the patent sets and run up all the credit you can in Lincoln's Inn," I said to myself, sottissime voce.
"Well I was wondering whether I could pick your brains, Jane, seeing as we've met again."
'Picking brains'  is solicitor speak for baksheesh advice. Often it is preceded with a tempting inducement like "I'm not yet in funds but just as soon as I am you'll be hearing from me."   Sam knows me better than to try that one on. However, curiosity as to the sort of scrape into which Sam had landed himself got the better of me.
"Course you can, Sam" I replied with a smile. "Fire away."
"Well we're for the claimants and Nigel says we have a slam dunk case and I think so too. But the other side won't make an offer. In fact they say our patent is invalid. They warn us that they will counterclaim for revocation under s.72 (1) (d) of the Patents Act 1977 if we issue proceedings. Nigel says that there is nothing to worry about and that Fowl & Fowl are bluffing. And I am sure he is right but I thought it wouldn't hurt to get another opinion."
"Especially if you don't have to pay for it", I thought.
"OK. Well what do you want to ask me exactly." 
"Well the patent agents told us that we ought to amend our patent before we tried to sue because an infringer could argue that there was too much old fashioned artwork or something....."
"I think that they probably said was your specification did not disclose your invention clearly enough and completely enough for it to be performed by a person skilled in the art", I suggested.
"Yes, I think they did as it happens, John"....
"Jane" I interrupted
"How did you guess that?"
"Well I didn't actually but s.14 (3) of the Act requires the specification of a patent application to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."
"Who is this artist person Jo.... Jane?"
Oh there's a lot of case law, Samuel, going back over at least a century and it would take me far too long to go through it with you but just think of him or her as someone in the relevant industry with the skills, knowledge and experience to make the invention from the specification."
"But he can't do that, can he? At least not for 20 years. The patent is supposed to be a monopoly of the invention, isn't it. A bit like a copyright only you don't have to prove copying." He implored.
"So long as the patent is valid and subsisting" I corrected. "It's a deal between the inventor and the public whereby the inventor discloses to the world how to make or use his or her invention and the public gives him or her a conditional monopoly in return".
"H-m-m-m" purred Sam. I could definitely hear wheels turning and gears grinding in his brain. "I never thought of it like that."
"But the conditions for patentability are pretty onerous, Sam. If you want to consider the terms, I wrote a sort of spoof about them in my blog on 6 December 2007 called "The Bargain the Public makes with Inventors".
"Anyway getting back to the point, s.14 (2) of the Act sets out the requirements for a patent application of which the most relevant for present purposes is s.14 (2) (b):
'a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim.'
Now the claims are very important. They set out the boundary of the invention just like the habendum and plan define the boundaries of a plot of land in an unregistered conveyance.   Take a look at s.125 (1):
'For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.'"
I could hear more clicks in Sam's mind and saw a look of amazement.
"Goodness! Do you carry all that in your head?"
"Doesn't Nigel?" I asked.
"No, but he's a very good advocate. He looks very good in court."
"As if that mattered nowadays," I thought to myself.
"Oh well, I suppose he could do the same sort of party trick with bits of the Insolvency Act or whatever has replaced the Rent Acts", I suggested.   "Look, Sam, you really shouldn't monkey about with IP cases. If you don't want to0 come to me you should at least go to someone in the IP Bar Association."
"Just like I hear that you're telling your public access clients to go to firms that belong to the Intellectual Property Lawyers' Association."
"Or solicitors who have been trained in one of those firms or otherwise know what they are doing. I have referred clients to Kate Reid and James Love in Harrogate for instance or indeed to Michael Sandys of Liverpool on this Circuit." I continued.
"Anyway! Sam, we're straying again. The point is that a claim is supposed to:
'(a) define the matter for which the applicant
seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.'
Of these, the most important paragraph is probably (c). The claim must be supported by the description.   If it doesn't the inventor is claiming a monopoly for more than he or she is actually disclosing to the public."
"And that's a no-no?"
"Yes, that's a no, no, because the patent or monopoly is suppose to be an incentive for the disclosure of the invention. And that is why one of the grounds upon which the court or IP Office can revoke a patent is that 
'the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed.'
and another is that
'the protection conferred by the patent has been extended by an amendment which should not have been allowed.'
"Oh!" said Samuel clearly impressed, his mouth opening and shutting like a goldfish's. "Is there any case law",
"Yes as it happens," I replied. Two recent cases. One is European Central Bank v Document Security Systems [2008] EWCA Civ 192 and Vector Corporation v Glatt Air Techniques Inc [2007] EWCA Civ 805 whcih set out the principles. Also, Robin Jacob's judgment in Corus UK Ltd v Qual-Chem Ltd [2008] EWCA Civ 1177 which was decided only last month ties everything together.   I blogged it earlier this month (Patents: Corus UK Ltd. v Qual-Chem Ltd.).
"Oh, thanks very much, John"
"Jane" for goodness sake. Look, Sam, I'm wearing a skirt."
"Yes, I'm sorry but it takes a long time to get used to things that are new."
"You can say that again Sam" I sighed. "Anyway what did the other side object to?"
"Well one of the intricates."
"I think you mean, integers, Sam".
"Yes, that's right, whatever it is. Anyway the claim referred to a 'leg' as originally drafted and out patent agents advised us to change it to 'member' because the other side had something that was not quite a leg."
"Oh, and what did the specification actually teach?"
"Oh it wasn't an educational device. I think it was some kind of assembly."
"Sorry! I've confused you. What did the specification say? Did it talk about legs or members?"
"Legs" I think.
"Well I can see why you may have a problem I said but everything depends on how the patent is construed."
"Do we have a chance?"
"I dunno. Ask Nigel. After all you are paying him enough. I suggest next time you have an IP Case you make your peace with Ginger John and the other patent clerks and go to one of their governors.   Or indeed you could come to one of us."
For the rest of the meal we discussed Sam's summer holiday at his gite. His half term in the Lakes with his kids. His skiing holiday over Christmas.
"You certainly see, to take a lot of holidays" I observed.
"Life work balance, you know, Mr Lambert. I'm sure I've told you this before. Very important when you have a family."
"I'm sure it is Sam."
We also discussed his next car purchase, whether it was to be a Lotus or Porsche.
Just before I left La Pattumiera, I spotted Dr. Princess Burreh-Hamilton, a patent attorney from Leeds who had been to school with my tenant, Lois Cole-Wilson. She had very kindly agreed to staff an IP clinic for IP Yorkshire. Having read the "Heart of the Matter"   I'd picked up a few greetings in Krio. Having exchanged elaborate greetings about each other's health and well being I asked her how she got on at her first patent clinic.
"Not bad" she replied "I'll email you about it."
That email when it arrived was hilarious.   To catch that email when you will need to register with IP Yorkshire. You will also need to register here to be sure of catching Sam's lesson in intellectual property law, one that he learned from Lucy and not from me.

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