Today 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…)
The 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…)
The 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…)
Today 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…)
This 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…)
Today 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:-
- the benefit of the patents to Unilever was £24.5m;
- the benefit was not outstanding;
- 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…)
Today on IPcopy we have a guest post from Tom Lingard of Stevens & Bolton LLP.
It’s always nice to have a hobby to keep you busy in retirement; perhaps never more so than when the job from which you have retired is Leader of the Free World. This was presumably former US President George W. Bush’s thinking when he took up painting, but whereas the artwork of most amateur painters will never be seen by anyone other than immediate family, one of the unique benefits of being an ex-President is having a 14,000 sq. ft. exhibition space at your eponymous Presidential Center in which to exhibit them. However, instead of earnest criticism about the obvious influence of early 20th century Fauvism and Post-Impressionist era Gauguin on Mr Bush’s portraits of various world leaders (including Tony Blair, Angela Merkel, Hamid Karzai, Vladimir Putin and the Dalai Lama), the pictures have attracted attention for the striking similarity they bear to photographs that appear at the top of the search results when the leaders’ names are put into search engines. So has Mr Bush inadvertently walked into a legal minefield?
The Supreme Court of the United States (SCOTUS) and the US Court of Appeals for the Federal Circuit (CAFC) have had a busy month as far as intellectual property cases are concerned. Today on IPcopy we have a handy overview courtesy of Wolf, Greenfield & Sacks, P.C. of what’s been baking the noodle of SCOTUS and CAFC recently. So in reverse date order here we go…. (more…)
Technology transfer, or the process of converting scientific and technological advances into marketable goods and services, can be a daunting topic. This is the first in a series of articles which aims to demystify the topic and give you valuable insight into the key elements of technology transfer. A good technology transfer process will be self-sustaining, a form of virtuous circle starting with an innovation, then passing through the stages of technology evaluation, IP protection, technology transfer strategy, IP bundling and valuation, technology marketing, licensing, implementation and ultimately revenue generation, which in turn can support further innovation. This article picks up the story at the IP protection stage. (more…)
A relatively recent decision in the Court of the Commissioner of Patents has confirmed that a South African patent will be open to revocation if the prescribed declaration (on Form P3) was signed before rectifying any invalidity of which the applicant ought to have known. This sends a stern warning to applicants and confirms that many South African patents may be incurably open to revocation. (more…)