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IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

Archive

Case Review: C-530/12 P OHIM v National Lottery Commission

file0001764062159This is the latest decision by the Court of Justice of the European Union (“CJEU”) in respect of Case T-404/10 National Lottery Commission v OHIM – Mediatek Italia and De Gregorio.

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The vexed question of “use as a trade mark”

stacked-booksToday on IPcopy we have a guest post from Carmen Champion, an IP barrister in Sydney, on the subject of “use as a trade mark”.

In a couple of recent cases in Australia, dealing with businesses as disparate as home elevators and halal butcheries, the courts have considered (or in one case, ignored!) that question central to trade make disputes: was the mark in question “used as a trade mark”? (more…)

New to IP? Here’s 10 facts about Intellectual Property

file2611249338382The aim of this article is to very briefly introduce some topics, facts and issues from the area of intellectual property law. This article is aimed at people who have had little or no contact with intellectual property and is designed as a (very brief) primer to highlight some particular elements of the subject area. (more…)

IP in collaborations – some considerations

AgreementThe following is a briefing note prepared for Interface by Richard Lawrence and Keith Turner of Keltie LLP.

A key role of Interface is to facilitate effective interactions between industry and academic and research-based organisations. Intellectual property rights ( ‘IP’ ) will often be relevant to this kind of interaction. In the case of a collaborative project, for example, there may be existing IP (owned by the participants and/or third parties) and also new IP created as a result of the project.

The identification of what IP is involved at various stages of any project and determination of how this IP is managed are central to a successful collaboration agreement. These are not intuitive issues. Intuitively, ownership of newly-generated IP would appear to be the main concern, and this can be problematic in negotiations. In practice, however, issues relating to how the IP relevant to the project can be used and how this IP should be managed during and after the project can be more problematic in any subsequent commercial exploitation. (more…)

America Invents Act – One Year Later

photo-3rToday on IPcopy we have a guest post from Wolf Greenfield attorneys Patrick Waller and Daniel Young that takes a look at the changes seen in the US following the implementation of the America Invents Act. This article is reproduced with permission from Intellectual Property Magazine (IPM). This article first featured in IPM’s May 2014 issue.

We are now well past the one-year anniversary of the implementation of the final changes to US patent law under the America Invents Act (AIA), signed into law by President Obama in 2011. While the full impact of these changes on US patent applicants will play out over the next several years, this anniversary provides an opportunity to reflect on the significance of the changes and their impact on the country’s patent system. (more…)

Managing Confidential Information

OLYMPUS DIGITAL CAMERAThis is the second in a series of articles which aims to demystify the topic of technology transfer and give you valuable insight into its key elements. Whether you are just setting out to conduct R&D in collaboration with a third party, or are exploring a business opportunity such as licensing-in someone else’s technology or licensing-out your own technology, it will be vital to manage the flow of confidential information, including any know-how or trade secrets, in order to mitigate the twin risks of knowledge leakage and knowledge contamination. (more…)

High Court rules no compensation for inventor Shanks

Piggy bankToday we have a guest post from David Knight of Field Fisher Waterhouse LLP on the Shanks v Unilever case and the issue of employee compensation. This article first appeared on the SnIPpets IP blog and is reproduced here with the permission of the author.

Three years have passed since we reported on the appeal on an interim point in the case of Shanks v Unilever, a case relating to Professor Shanks’ (a former employee of Unilever) right to compensation as an inventor of patents of outstanding benefit.  (The patents related to a capillary action measuring device which has now found large scale use in home diagnostic kits for diabetes.)

Amazingly the case continues to rumble on, and the High Court (Arnold J) has recently issued a Judgment on appeal from the UK Intellectual Property Office (UKIPO) on the substantive part of the case.

By way of reminder, section 41 of the UK Patents Act provides that an employee inventor may be entitled to compensation if two conditions are satisfied:

  • that the patent is of “outstanding benefit to the employer”; and if so
  • that it “is just” that he should be awarded compensation.

Once these requirements are fulfilled the employee should receive such a fair share of the benefit the employer has derived, or may be expected to derive from the patent or the invention.

The case was brought in the UKIPO which, together with the courts, has jurisdiction to hear cases relating to employee compensation.  After a marathon nine day hearing at the UKIPO, including three expert witnesses, the Hearing Officer decided that:-

  1. the benefit of the patents to Unilever was £24.5m;
  2. the benefit was not outstanding;
  3. but had the benefit been outstanding, Professor Shanks’ fair share would be 5%.

Professor Shanks appealed the second and third point above; Unilever appealed against the first and third point.  Many issues were thrown up by the parties in support of their respective appeals; we comment below on those that are more likely to have general relevance in other employee compensation cases. (more…)

Unitary patent: News nuggets (August 2014)

EU flagThings in unitary patent preparation land are beginning to slow down a little as we head into the summer season. Things will no doubt pick up again in the autumn but in the meantime here’s some nuggets of news to keep you going. (more…)

EPO – Rules relating to Unitary Patent Protection

EU flagThe EPO Select Committee approved the Rules relating to unitary patent protection on 24 June. A copy of these rules has appeared online and is discussed below.

During a session of the recent “Unitary patent and Unified patent court” seminar held in Paris, Jerome Debrulle (Chair EPO Select Committee) indicated that the Select Committee had approved the rules that will be used to administer the unitary patent. IPcopy had not seen a copy of these rules at the time of our conference review post but now, thanks to reader Hans van Tongeren, we have been pointed towards what appears to be the latest version of the rules, which can be found on the Bristows website here.

The EPO’s rules document runs to over 80 pages and there is also a 40+ page Annex which highlights the changes from the previous version of the rules. An overview of the structure of the rules document is provided below along with some “highlights” from the rules themselves.

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USPTO starts lobbing rejections from Room 101 (is this the post-Alice situation?)

Court (Small)Are USPTO Examiners beginning to issue blanket “Alice” objections against software patent applications? How should such patent applications be presented? How might this develop going forward? And, what should we be doing (if anything) to address it?

An eagle-eyed colleague here at Keltie (thank you Peter Kent) spotted a discussion online last week that suggested that, in the wake of the Alice v CLS Bank decision from the Supremes,  Examiners at the USPTO might be beginning to issue blanket objections under 35 U.S.C. 101 to patent applications containing software-implemented inventions.

IPcopy reached out to William Jividen at Dinsmore & Shohl LLP in the US to see if this was the case. The discussion below has been distilled from Bill’s comments and other comments seen online. Any mistakes or inaccuracies may be attributed solely to me!

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