Naked Law

Floodgates tightly shut on software patents

It may be the end of a long road for Australian businessman Neal Macrossan and his software patent application, or is it?  After failing in his attempt to be heard by the House of Lords regarding the Court of Appeal's decision not to grant him a patent for his software, Macrossan is considering making a second application to the House for his case to be heard.  Macrossan can make a second petition but it looks likely that the House will reject his application again.

In March 2005, Macrossan applied to the UK Intellectual Property Office (named at that time the UK Patent Office) to protect his invention comprising a piece of software, by way of patent.  Macrossan's invention is an online system which compiles the documents needed to incorporate a company.  His patent application was rejected because under the European Patent Convention, computer programs are generally not patentable in the UK (unless the inventive concept clearly involves some new and inventive physical component or result).

The case has been closely scrutinised and followed by commentators, eager to see if it would result in a change in UK law relating to software patents.  As it stands, the Court of Appeal's ruling means we are unlikely to see any such changes in the near future.  Despite a request by the Court of Appeal, even the European Patent Office has declined to comment on the position of software patents, because "there is an insufficient legal basis for a referral". The UK Intellectual Property Office is going to fully apply the law set out in the Macrossan case as the "definitive statement of how the law on patentable subject matter is now to be applied in the United Kingdom" (see new practice notice).

Telegraph attacks Yahoo! and Google

Daily Telegraph editor Will Lewis has spoken out against Google and Yahoo! at a recent conference, it is reported. Mr Lewis was specifically criticising the aggregation of the third party content which is made available via the web portals. At an IFRA event in Paris he is said to have made the following statement:

"Our ability to protect content is under consistent attack from those such as Google and Yahoo! who wish to access it for free. These companies are seeking to build a business model on the back of our own investment without recognition."

It is generally an infringement of the rights in a copyright work to copy the whole or a substantial part of that work without the consent of the owner. Google's news service has recently lost a court battle in Belgium where its service, which includes the publication of extracts from news articles, was accused of infringing the copyright of newspaper owners.

Playboy win appeal

Playboy Enterprises International Inc (“Playboy”) has won its appeal appeal to overturn Nominet’s decision not to transfer the domain name playboyracing.co.uk to it.

Playboy had argued that Trevor Hodges, who registered the domain name and had intended to use it in relation to a horse racing club, was taking unfair advantage of Playboy’s rights to the “Playboy” name and that the registration was unfairly detrimental. Playboy argued that it had a large portfolio of trade mark registrations featuring the name “Playboy” for a wide range of goods and services, including sporting activities, and operated a high profile motor racing team in the US under the brand “Playboy Racing”. However, Nominet’s expert found that the registration was not abusive because, among other things, Playboy was not active in the same field as Mr Hodges and so there was no likelihood that the public would be confused.

Playboy appealed against the decision. The Appeal Panel found that Playboy had strong rights to the “Playboy” name, which was similar to the domain name in question and that registration of playboyracing.co.uk by Mr Hodges was an abusive registration. The Panel felt that the expert at first instance had placed too much emphasis on the registrant's lack of intention to target Playboy. The Panel commented that although intent can be useful in demonstrating an abusive registration, it is not necessary – the test is more objective.

Has Nominet gone too far in its protection against dilution of what is essentially a generic (albeit well-known) name?

Safer child’s play in cyberspace

The European Commission launched a public consultation on 12 April 2007 into ways of making online technologies such as Internet, mobile phones, game consoles and digital TV, safer for children to use. The consultation concentrates on three areas: illegal content , harmful content  and user-generated content and on-line communication. The Commision is following on from its Safer Internet plus programme, which will end in 2008 and will use the information gathered for assessing which is the best way to address online technology safety in the future.

Unlike the USA, where children are protected under the Children's Internet Protection Act and the Deleting Online Predators Act, there is no specific piece of legislation in the UK that protects minors from being targeted through online technologies. The consultation will be welcome in a number of quarters and may lead to tougher legislation across Europe to protect children.

The consultation will be open until 7 June 2007.

Patent office's IPO

No, the Patent Office isn't selling shares. But, much to the delight of IP lawyers tired of explaining to their clients why trade marks were dealt with by the Patent Office, it has changed its name.

From 2 April 2007, the UK Patent Office is the Intellectual Property Office. This is a result of a suggestion made by the Gower's Review, and aims to reduce confusion.

More importantly, it has given the Patent Office, sorry IPO, an important opportunity to revamp its web site, and surely even the most jaded person doing another online patent search cannot fail to enjoy the butterfly image which graces the new front page.

However, some might argue that as the guardian of innovation in the UK, a little more work on the new IPO logo might have been worthwhile...