Publications
Articles and monographs : 185 Documents
EVOLVING THE UK DESIGNS FRAMEWORK
FRAND: busy UK Courts, and the European Commission’s Initiative on a New Framework for Standard-Essential Patents (SEPs)
Highlights from the UK Patents Court 2022: Validity
Obviousness
The principles governing the assessment of obviousness have been looked at by the courts in some depth in recent years. Fundamentally there is a single question. Is it obvious? Aside from the question as to whether it is possible to infer the nature of the skilled person from what the specification assumes about his/her abilities (Meade J said no in Optis v Apple, Mellor J said yes in Alcon v AMO), we have a fairly extensive and consistent body of case law explaining the law on obviousness and illustrating its application. The attribution of the characteristics of a skilled person is an important point though, as noted by Birss J (as he was then) in the Illumina case: “It would be wrong and unfair to the public to define a team so widely that that their common general knowledge is so dilute as to make something seem less obvious than it really was”. Defining the attributes of a skilled person would equally impact the assessment of sufficiency, as noted by Mellor J in Alcon v AMO.Infringement: interesting rulings on the doctrine of equivalents in the UK Patents Court
Inside in-house
A chance to share a virtual coffee with Belinda and Suzanne as they reflect on being an in‑house IP attorney
Suzanne: Well, Belinda, we first met when Roger [Burt] introduced us, as he thought we might get along? At that point though, you had been in the biz for a few years, and I had just started out, having just moved from private practice to in-house at Arm. What can you remember of your first few years in-house? Belinda: Yeah, he did, and good question. When I made the shift from private practice to working in-house at IBM (many years ago now), I thought that the roles would be rather similar – a steady diet of drafting, patent filings, amendments, oral proceedings, and more amendments – just without the step of having to wait for client instructions, or, I hoped, without having to keep track of and bill a client for every 6 minutes (0.1 hr) of my working day! Actually, it was not too dissimilar at the beginning, though luckily the timekeeping/invoicing did vanish. I started with ‘easy stuff’ with which I was familiar – mainly amendment work, and at least one draft per month, but over the last almost 20 years it has changed in almost every aspect (although I still dabble occasionally with the odd amendment!). The role in fact is constantly changing as the company does, and I still get queries popping up on topics which I have never considered before – this week’s example being copyright levies in Spain and the process of obtaining an exemption for laptops used only for business use! But it was not until I joined IP Federation Council in 2011 and listened to the other representatives there that I realised what a broad and varied job that of an in-house patent attorney truly is!