Peter Prescott's Judgment in Oxonica v Neuftec
This dispute arose from an ambiguity in a technology licence.
The issue was whether royalties were payable on a product that the licensee had second sourced that arguably fell outside the plain words the licence.
Under the licence, royalties were due on sales of a "Licensed Product", but "Licensed Product" was defined as "any product, process or use falling within the scope of claims in the Licensed Application or Licensed Patent."
The product that the licensee had second sourced fell within the scope of the claims of the patent application but not those of the granted patent.
The ambiguity appeared to have arisen because the draftsman had not anticipated that that might happen. In the deputy judge's view that was because he or she did not fully understand patent law.
Commenting on the drafting of the agreement, Mr Prescott said:
"The more I read the document, the more I think: 'A little learning is a dangerous thing'. It contains a number of malapropisms: they cause me to believe that the draftsman was not very familiar with patent practice and terminology. It conveys an impression that he was not always clear in his own mind about what he was doing and, when not clear, allowed his word processor to do his thinking for him."
The judge decided the case the case in favour of the licensor by construing "Licensed Products" as meaning "things falling within the scope of claims of the Licensed Application or Licensed Patent as the context may require". Having regard to the context he held that "Licensed Products" referred to products falling within the claims in the application as filed. That definition was wide enough to catch the second sourced product.
For more information see my blog post "The Dangers of Precedents - Oxonica Energy v Neuftec" which links to Peter Prescott's judgment.
We still have 3 places for the IP Law Foundation Course at Gumption Centres, Bradford on 2 Oct 2008 between 14:00 and 17:00. We have now received SRA accreditation for the course and can award 2½ hours CPD points. At £25 + VAT, what a bargain. If you want to book, please complete the online booking form or call 0870 990 5081 immediately to secure your place.
Over the next 12 months we shall offer foundation courses in Yorkshire on IPR enforcement and dispute resolution and protecting investment in
We also plan intermediate workshops in the North later in the year on
Conducting Pre-Action Negotiations in IP cases covering threats actions, search orders, freezing injunctions and other pre-emptive remedies and the Code of Practice for pre-action conduct in IP disputes;
Brand Protection: UK, Community and Madrid trade mark applications, registered and registered Community designs, passing off, geographical indications and domain names; and
Alternative Dispute Resolution of IP Disputes: UDRP, Nominet and Czech Court of Arbitration proceedings, advisory UK IP Office opinions on validity and infringement of patents, mediation in the UK IP Office and the WIPO and much more.
Since the UK and other national governments appear to be throwing their weight behind the European Patent Litigation Agreement we are planning a major seminar on the practice and procedure of the court just as soon as it shows signs of becoming a reality.
Contact us on 0870 990 5081 or through our website if you want to register your interest in any of those courses.
If you have a client who needs advice on any aspect of intellectual property or technology law but he or she does not want, or can't afford, to instruct you to go to patent counsel or research the point yourself you could do worse than book that client on one of our IP clinics.
These are pro bono advice sessions at which clients get up to 30 minutes with me or some other specialist IP lawyer or patent or trade mark attorney. Information about what happens at those clinics appears on our website.
So far, we hold one 2-hour clinic a month at Barnsley, Bradford, Halifax and Huddersfield and you will find details of the October clinics on our IP Yorkshire blog.
We hope shortly to extend the service to other towns in Yorkshire but as I can't cover any more towns personally I shall need some volunteer helpers. Clinics are a good source of work and connections. If you are a specialist IP practitioner and would like to help in your area, please get in touch with me on 0870 990 5081 or through our website.
Something else you might like to suggest to such a client is to attend a meeting of the Leeds or Sheffield Inventors' Club.
These usually take the form of a talk by a guest speaker and networking with other inventors, investors and professional advisors over tea and biscuits. The Sheffield Club meets on the first Monday of every month at the Sheffield Central Library in Surrey Street between 18:00 and 20:00 and the Leeds Club on the third Wednesday at the Leeds Central Library in Calverley Street between 18:00 and 20:00.
The speaker at Sheffield on 6 October 2008 will be Manish Sethis of the Sethi Expert Group. The title of his talk is "India: To be a Guru know the Mantra!" It will focus on manufacturing outsourcing for inventors and SME in India.
The speaker at Leeds on 15 October 2008 will be Barbara Greaves of YABA (Yorkshire Association of Business Angels). She will talk about angel investment in start-ups and other SME.
You will also be very welcome at these events.
A new Director-General has been appointed to head the WIPO (the UN agency for intellectual property. He is Australian Francis Gurry who happens to be someone I know. You can read my appreciation in my IP/IT Update blog.
Mr Justice Richard Davis is to take over from Mr Justice Patten as Vice-Chancellor of the County Palatine of Lancaster on Wednesday, 1 October 2008. The Vice-Chancellor is head of the Chancery Division in the North of England and since IP is assigned to the Chancery Division that places him in charge of IP litigation in our region.
Richard Arnold QC of 11 South Square was elevated to the Chancery Division on 11 Sep 2008. As an IP practitioner he will certainly take the IP list and can no doubt expect to be assigned to the Patents Court.
Finally, Peter Holland is the new International Policy Director at the UK Intellectual Property Office
Other Peoples' Events
IP related events taking place this month in Yorkshire that you may want to attend include: