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Wednesday, 7 February 2007

Macrossan refused leave to appeal; Lots going on in Ireland

Macrossan refused leave to appeal

The IPKat has learned from a press release that the House of Lords (right), the highest appellate court for England and Wales, has refused Australian businessman Neal Macrossan leave to appeal against the Court of Appeal's decision to refuse his application for a patent on his invention for an automated system that compiles the necessary documents for incorporating a company in the UK. This case had been viewed as a crucial case in clearing up disparities between UK and European Patent Office treatment of patents for software. Says the press release:

"It is currently harder to obtain a patent for such inventions in the UK than in the rest of Europe, even though the UK has signed up to the European Patent Convention (EPC), providing for uniform patent laws".
The House of Lords has refused permission on the grounds that the case “does not raise an arguable point of law of general public importance". Dr John Collins (Partner at Marks & Clerk who has acted for Macrossan) is quoted as saying:

"It is highly surprising that the House of Lords did not consider there to be significant points of law and public interest at stake here, especially given the questions referred to the European Patent Office by the Court of Appeal. Hopefully the EPO will take up the referral and their response to these questions will help us, in time, to establish a pan-European consensus on the patentability of software".
The IPKat thinks the Lords have a point, though. Is it really worth their Lordships dipping their noble toes into the water when we're all awaiting great waves from the EPO. Hmm, grumbles Merpel, can it be that Lord Hoffmann is missing out on an opportunity to rewrite yet another branch of patent law? If so, it's probably because he's fed up with so many people mis-spelling his surname.

Earlier IPKat posts on the Macrossan here, here , here and here


Lots going on in Ireland

The IPKat's friend Deirdre Kilroy (LK Shields, Dublin) has sent him two jolly snippets. The first, from the Sunday Business Post, is "Dunnes in court actions for alleged copying". This piece relates that Karen Millen and Coast, the British high-street fashion chains, have launched muti-million-euro legal

Above right, and left: design houses like Karen Millen are increasingly fed up at illicit attempts to break up their niche markets

actions against Dunnes Stores, claiming that the Irish retail giant is producing ‘knock-off’ copies of their designer garments. Both UK chains are owned by British retailer Mosaic Fashions, also known for its Oasis, Warehouse, Principles, Nine West and Bertie brands. Damages of many millions of euro are sought.

The second, "Danone puts Glanbia in dock over yoghurt", tells of the threat to Glanbia's ambitions to double its market share with the introduction of 'shot-sized' Yoplait Essence yoghurt drinks, now that multinational food giant Danone is suing it for patent infringement. Damages of up to 10 million euros are sought. The patent in question turns out to be for, er ... the word "Essence", though. Wonder how they got it patented? Will the relevant journalist at Business World be made to walk the plank?

10 comments:

Gerontius said...

The House of Lords' decision not to hear the appeal is highly disappointing but not remotely surprising.

There can be no doubt that this is a point of law of huge public importance. The important bit of the Lords' decision must therefore be that Macrossan did not raise an arguable point of law. This seems sensible. Macrossan's "invention" is so far from being patentable that it is the wrong case for the Lords to take. Hopefully there'll be some other, stronger cases that make it that far in the coming year(s) because we really do need a good Hoffman-esque ruling on this point of law as much as the EPO need a G decision.

Neal Macrossan said...

In relation to Gerontius's comment that,

'The important bit of the Lords' decision must therefore be that Macrossan did not raise an arguable point of law. This seems sensible. Macrossan's "invention" is so far from being patentable that it is the wrong case for the Lords to take.',

why then did the Court of Appeal's most senior IP Judge, Lord Justice Jacob, rule that my skeleton argument had a real prospect of success?

Anonymous said...

Two points here: (i) "real" means "within the bounds of reality" rather than "likely" or "probable". A 1% prospect of success is still a real prospect.

(ii) Some folk wonder whether sometimes a case is pursued not so much on account of the merits of the issues before the court as on account of the immediacy of the legal issues that the case touches on.

Gerontius said...

For Neal Macrossan - Given how far away your patent application (or at least the current claims) are from being patentable under UK and European practice, the only explanation I can give is that Lord Justice Jacob wanted to get his hands dirty with this issue, or at least felt that the importance of the issues raised sufficiently outweighed the utter hopelesness of your application. Your case was, to my knowledge, the first time the Court of Appeal has had to tackle an application that was BOTH a business method and a computer program, so its importance to the development of UK law cannot be overstated.

I will add two caveats. Firstly, I never saw your skeleton arguments, and I think the final CoA judgment does you a disservice by not saying anything about what your arguments were. It's also not very helpful to us patent attorneys.

Secondly, so you don't think I'm insulting your product, here's some advice I give to a number of my "software" clients: not every good idea is patentable and not every patentable idea is a good one. Of course, it's different in the US! :)

To the IPKat - I've linked to this post from the wikipedia article http://en.wikipedia.org/wiki/Aerotel_v_Telco_and_Macrossan%27s_application which is currently mentioned on the Wikipedia front page. I'd add that link below, but don't have a Google account to be able to do so.

Neal Macrossan said...

Thanks Anonymous. That enlightens me somewhat.

However, what about these points which would seem to suggest that there must have been arguable points of law? ...

The Court of Appeal judgment (which judgment the House of Lords has chosen not to disturb) pronounced that –

(a) 'The [Article 52(2)] provisions about what are not to be "regarded as inventions" are not easy. Over the years there has been and continues to be much debate about them and about decisions on them given by national courts and the Boards of Appeal of the EPO. They form the basis of a distinct industry of conferences and are the foundation of a plethora of academic theses and publications.' (paragraph 8)

(b) '… it is our job to interpret [the Article 52(2) provisions about what are not to be "regarded as inventions"] as they stand. As the decisions show this is not an easy task.' (end of paragraph 8 and the beginning of paragraph 9)

(c) "It is clear that a whole range of approaches have been adopted over the years both by the EPO and national courts." (paragraph 24)

(d) "The decisions of the EPO Boards of Appeal are mutually contradictory. … There are indeed at least four differing points of view." (paragraph 25)

(e) "… the time has come for matters to be clarified by an Enlarged Board of Appeal." (at paragraph 25) [and the Court of Appeal Judgment goes on, at paragraph 76, to suggest that the EPO Enlarged Board of Appeal should clarify "What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?"]

(The above is an extract from something I wrote about this at http://www.ukcorporator.co.uk/leave_refusal_reasonable.php)

Neal Macrossan said...

Thanks Gerontiuos.

You mentioned ...

"Given how far away your patent application (or at least the current claims) are from being patentable under UK and European practice, ..."

well ...

1. A specialist High Court Patent Judge, Mr Justice Mann, held that my application was not a business method (see paragraph 30 of the High Court judgment);

2. How could that be so in the light of the Microsoft case (see paragraph 113 of the Court of Appeal's Judgment)?

You also mentioned -

"...I never saw your skeleton arguments, and I think the final CoA judgment does you a disservice by not saying anything about what your arguments were. It's also not very helpful to us patent attorneys."

you can now read my skeleton argument here: http://www.ukcorporator.co.uk/Skeleton_Argument.pdf.

And in due course I intend that you'll be able to read my full written arguments on this resource page about the case which I have created here: http://www.ukcorporator.co.uk/patentappeal.php.

You further mentioned -

"Your case was, to my knowledge, the first time the Court of Appeal has had to tackle an application that was BOTH a business method and a computer program ..."

what about the Court of Appeal's Merrill Lynch Judgment?

David said...

I suspect that the House of Lords may have chosen not to have taken the case because they want to see if the Enlarged Board of Appeal of the EPO get round to resolving those conflicting decisions. This would be a better way of doing it than getting a UK decision (which will be binding on all lower courts) that might conflict with the EPO. This does unfortunately mean that Mr Macrossan's appeal has to end here, but that's the way the cookie crumbles.

Neal Macrossan said...

David, in terms of your comment that you ...

"suspect that the House of Lords may have chosen not to have taken the case because they want to see if the Enlarged Board of Appeal of the EPO get round to resolving those conflicting decisions",

I think that you may very well be right. The problem is, however, that the House of Lords didn't give that as their reason, even though they reasonably could have (at least arguably anyway) ...

The criteria against which the House of Lords assesses requests for it to hear appeals from decisions of the Court of Appeal, is contained in direction 4.7 of the House of Lords Practice Directions and Standing Orders Applicable to Civil Appeals, which provides as follows –


"Leave to appeal is granted to petitions that, in the opinion of the Appeal Committee, raise an arguable point of law of general public importance which ought to be considered by the House at this time ..."

So if you are right David, then the House of Lords should have given a reason something like this ...

"Even though the matter raises an arguable point of law of general public importance, it ought not be considered by the House at this time."

Company Formation India said...

Not surprising at all.

Company Formation said...

What an interesting - though not suprising - ruling

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