THE MODERN LAW OF PATENTS; OHIM BoA FREEDOM AGAIN

The Modern Law of Patents

Butterworths' Modern Law of Patents has been the subject of some careful perusal on the part of the IPKat. The new title boasts a strong editorial team. Consultant Editor is the friendly face of patent litigation in England and Wales, Patents County Court Judge Michael Fysh QC, with the following as

* general editors: Ashley Roughton (Hogarth Chambers), Trevor Cook (Bird & Bird), Michael Spence (University of Oxford) and

* contributors: Mark Anderson (Anderson and Co); Neil Jenkins (Bird & Bird), Roger Wyand QC, Richard Davis and Nicholas Saunders (Hogarth Chambers), James Cross (RGC Jenkins & Co), Vicki Salmon (Eversheds), Robert Anderson (Lovells), Benet X. Brandreth (South Square - does anyone know what the "X" stands for?), Aidan Robson (Reddie & Grose), Ian Karet (Linklaters), Nick Gardner (Herbert Smith), Jo Oliver and David Rose (SJ Berwin).

The publisher's blurb states:

"The first new book on the UK Law of patents for 25 years, this title is an essential resource for patent lawyers and patent attorneys. Written by some of the most eminent IP practitioners in the UK, The Modern Law of Patents offers a fresh, comprehensive approach to patent law".

The IPKat says one of the reasons the approach is fresh is that the law itself is fresh: the courts keep changing it, which is hell for anyone writing a chapter in a field of activity that keeps rapidly changing. Having said that, Ian Karet's chapter on the construction of patents shows how effectively an (Amgen-driven) moving target can be picked off by anyone with a good eye, a steady hand and a ready brain. At the other end of the spectrum, Mark Anderson must have been willing exciting things to happen when he was putting together his chapter on ownership and transactions.

Below: this book helps you keep afoot of the latest patent developments

The editors and authors are to be congratulated on their efforts in providing (i) a sister to the Modern Law of Copyright and the Modern Law of Trade Marks (all three Modern Law books can be searched here) and (ii) a competitor for Sweet & Maxwell's new Terrell (which the IPKat has not yet seen).

Merpel says the list of editors and contributors is huge: she hopes they don't outnumber the list of readers ...

Black mark for the publishers: in the LexisNexis catalogue of Intellectual Property titles The Modern Law of Patents is listed under "T" for "The", unlike The Modern Law of Copyright and The Modern Law of Trade Marks (which are listed under "L" for Laddie and "M" for "Morcom" respectively).

Bibligographical details: ISBN/ISSN 0406958610. Price £254 (hardback). Forest friendliness: lxxxix + 1818 pages (serious analysis stops at p.716, when the Appendices kick in). Rupture factor: medium, thanks to the very thin paper.


More on OHIM Board of Appeal independence

Recently the IPKat suggested that Boards of Appeal at OHIM, the office that grants and administers the Community trade mark, were not entirely free and independent. This suggestion, having received both hostile and cynical responses, now enjoys the support of Dave Landau (UK Patent Office) who writes:

"The answer re the position of the BoAs and their "independence" has already been given by the CFI in Procter & Gamble v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2003] ETMR 43:

"19 The Court notes at the outset that the Boards of Appeal are composed of members whose independence is ensured by the mode of appointment, by the duration of their term of office and also by the rules governing the exercise of their functions. Furthermore, certain provisions of Regulation 40/94 governing the procedure before the Boards of Appeal guarantee, inter alia, the parties' rights of defence.

20 However, the Boards of Appeal form part of the Office, which is the authority responsible for registering trade marks under the conditions laid down in Regulation 40/94, and also contribute, within the limits set by that regulation, to the completion of the internal market (Case T-163/98 Procter & Gamble v OHIM (BABY-DRY) [1999] E.C.R. II-2383, paras 36 and 37).

21 In that regard, it follows from BABY-DRY, paras 38 to 43, that there is continuity in terms of their functions between the various departments of the Office and that the Boards of Appeal enjoy, in particular, the same powers in determining an appeal as the examiner. Thus, while the Boards of Appeal enjoy a wide degree of independence in carrying out their duties, they constitute a department of the Office responsible for controlling, under the conditions and within the limits laid down in Regulation 40/94, the activities of the other departments of the administration to which they belong.

22 Since a Board of Appeal enjoys, in particular, the same powers as the examiner, where it exercises them it acts as the administration of the Office. An action before the Board of Appeal therefore forms part of the administrative registration procedure, following an "interlocutory revision" by the "first department" to carry out an examination, pursuant to Art.60 of Regulation 40/94.

23 In the light of the foregoing, the Boards of Appeal cannot be classified as 'tribunals'. Consequently, the applicant cannot properly rely on a right to a fair 'hearing' before the Boards of Appeal of the Office".