Books for review

JIPLP offers another selection of intellectual property books for review.  If you would like to review one of these titles, please email Sarah Harris here by not later than Wednesday 3 October and let her know of your interest.  If you have not previously reviewed a book for JIPLP, do tell Sarah why you feel you would be well qualified to review the book which you request.

The books currently available are as follows:

Overlapping Intellectual Property Rights
Editors: Neil Wilkof and Shamnad Basheer.
Published by Oxford University Press.
"Providing a comprehensive and systematic commentary on the nature of overlapping Intellectual Property rights and their place in practice, this book is a major contribution to the way that IP is understood. IP rights are mostly studied in isolation, yet in practice each of the legal categories created to protect IP rights will usually only provide partial legal coverage of the broader context in which such rights are actually created, used, and enforced. Consequently, often multiple IP rights may overlap, in whole or in part, with respect to the same underlying subject matter. Some patterns, for instance, in addition to being protected from copying under the design rights regime, may also be distinctive enough to warrant trade mark protection. ".
Further information is available from the book's web page here.


Constructing Intellectual Property
Author: Alexandra George
Published by Cambridge University Press.
"What is 'intellectual property'? This book examines the way in which this important area of law is constructed by the legal system. It argues that intellectual property is a body of rules, created by the legal system, that regulate the documented forms of abstract objects, which are also defined into existence by the legal system. Intellectual property law thus constructs its own objects of regulation and it does so through the application of a collection of core concepts. By analyzing the metaphysical structure of intellectual property law and the concepts the legal system uses to construct 'intellectual property', the book sheds new light on the nature of this fascinating area of law. It explains anomalies between social and intellectual property uses of concepts such as authorship – here dubbed 'creatorship' – and originality and it helps to explain the role of intellectual property from a structural (rather than the traditional normative) perspective.".
Further information available from the book's web page here.


 • New Frontiers in the Philosophy of Intellectual Property
Editor: Annabelle Lever.
Publisher: Cambridge University Press
"Are intellectual property rights a threat to autonomy, global justice, indigenous rights, access to lifesaving knowledge and medicines? The essays in this volume examine the justification of patents, copyrights and trademarks in light of the political and moral controversy over TRIPS (the Agreement on Trade-Related Aspects of Intellectual Property Rights). Written by a distinguished international group of experts, this book draws on the latest philosophical work on autonomy, equality, property ownership and human rights in order to explore the moral, political and economic implications of property rights in ideas. Written with an interdisciplinary audience in mind, these essays introduce readers to the latest debates in the philosophy of intellectual property, whether their interests are in the restrictions that copyright places on the reproduction of music and printed words or in the morality and legality of patenting human genes, essential medicines or traditional knowledge.".
Further details available from the book's web page here.

New Balance wins shoe battle with Bestseller: a lesson in enforcement

Author: Hanne Weywardt (MAQS Law Firm, Copenhagen)

New Balance v Bestseller, Danish Supreme Court, 30 May 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps135, first published online: 17 September 2012

The Danish Supreme Court affirmed the ruling of the court of first instance, awarding New Balance DKK 2.5 million in damages and around DKK 500,000 in case costs for unfair competition and trade mark infringement.


The Bestseller products, ‘JJ Slick’ and ‘JJ Stan’, were found to be close imitations of the New Balance product line under the brand PF FLYERS, these being the models ‘SGrounder Hi’ and ‘Number 5’, each of which came in several styles. Bestseller had sold 7,000 pairs of ‘JJ Slick’ and 12,800 pairs of ‘JJ Stan’, these sales being spread across most of the countries in Europe. One model, ‘JJ Slick’, was purchased by Bestseller from a Chinese supplier, whereas ‘JJ Stan’ was designed by an in-house designer with Bestseller.

Images of the products in question:





Additionally, Bestseller had distributed 290,000 copies of an advertisement magazine in connection with their marketing of its products in which there was a picture of a sticker art wall depicting New Balance's trade mark PF FLYERS. This was found to constitute a trade mark infringement, despite the argument from Bestseller that a picture of a sticker art wall which was not prepared or manipulated by Bestseller was not used in direct correlation with the shoe products in question and did not constitute trade mark use.


The Supreme Court decision is of principal importance. If you look back at case law in recent years within this field, it would be difficult to predict the outcome of Supreme Court rulings when it comes to the question of infringement. However, this Supreme Court ruling clearly states that you have to be very careful in not making a business out of other companies' creations and creativity or riding on another's marketing efforts.

Practical significance

The case is a good example of highly effective enforcement in order to stop an infringement. Bestseller's products were put on the market in late September 2006. New Balance took action by filing a request for a combined procedure with the bailiff's court for preservation of evidence and injunctive relief. The goods were off the market by mid-December, still rendering New Balance a substantial amount in compensation. From a Danish perspective, the amount of compensation is historically high. This can be seen as a result of the implementation of the EU Enforcement Directive (2004/48) by which the law in Denmark was changed with effect from 1 January 2006. When calculating the amount of damages to the right holder, the court should now take into consideration among other things the unfair profit of the infringer.

Bestseller had made an unfair profit of DKK 1.7 million and with the recent ruling awarding New Balance a considerably higher amount, the ruling confirms that it is not worthwhile violating the rights of other businesses.

Samsung v Apple: How does the judge become an ‘informed user’?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882 (Pat), Patents Court, England and Wales, 9 July 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps142, first published online: 17 September 2012

Judge Birss QC has decided, despite initially being struck by their similarity, that three Samsung Galaxy Tab tablet computer designs did not infringe Apple's Community Registered Design No 000181607-0001.

Legal context

According to Article 10 of the Community Design Regulation (Council Regulation 6/2002):
1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. 
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. Moreover, Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, states: The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.
How then should the judge don the spectacles of the informed user (Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936) and judge whether a different overall impression is produced?


Apple iPad
In response to Apple's allegations of infringement, Samsung brought proceedings in the United Kingdom for a declaration that three Samsung tablet computers, namely the Tab 10.1, Tab 8.9 and Tab 7.7, did not infringe Apple's tablet computer design. Apple counterclaimed for infringement, alleging that seven features were reproduced, namely:

  • A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners. 

  • A flat transparent surface without any ornamentation covering the entire front of the device up to the rim. 

  • A very thin rim of constant width, surrounding and flush with the front transparent surface. 

  • A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface. 

  • A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge. 

  • A thin profile, the impression of which is emphasized by (5) above. 

  • Overall, a design of extreme simplicity without features which specify orientation.
Samsung Galaxy
Expert evidence was adduced about whether any features of the design were solely dictated by technical function and therefore excluded from design protection altogether under Article 8(1) of the Regulation, and also the degree of freedom of the designer under Article 10 of the Regulation. Further, over 50 designs were put forward by Samsung as evidence of the existing design corpus. The judge considered each of the seven features in relation to the prior designs, and in relation to the expert evidence on design freedom.

The judge found that the first four features were present in the Samsung products, but gave them lesser significance because they were present in the design corpus.

The fifth feature was considered to be present only as a feature of a class of products that would be familiar to the informed user.

The last two features were considered to represent points of difference between the Samsung products and the RCD. The Samsung products were thinner, and they had ornamentation on the back that was absent from the RCD.

The judge concluded:
Are these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is—to what degree?
The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.
He therefore concluded that they did not infringe.


The judge noted that ‘Community design infringement cases are supposed to be simple. The material presented in this case is complex and detailed.’ Therefore, although ‘the end result is a judgment much longer than should be necessary’, he specifically stated: ‘Given the commercial importance of this dispute I do not criticise the parties for putting it forward in this way.’ In assessing the scope of protection, the judge followed the approach advocated by Apple, and not resisted by Samsung, reading the requirements of Recital 14 into the test set out in Article 10 of the Regulation, and proceeded in the following manner:
Although the outcome depends on overall impression, as a practical matter the design must be broken down into features. Each feature needs to be considered in order to give it appropriate significance or weight. Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.
Since this case is concerned with infringement only and not validity, the list of features is a list of similarities said to exist between the design and the alleged infringement. Aside from considering similarities, the differences between the design and the alleged infringement also need to be addressed and weighted. For all the similarities and differences, the weighting exercise is concerned with assessing the significance of the similarity to the informed user. Things which look the same because all the products in the class look that way do not excite the informed user's interest to the same extent as unusual features.

Taking into account the similarities and differences, appropriately weighted, the court can decide whether the alleged infringement produces a different overall impression on the informed user from that produced by the registered design. Each of the seven features was therefore analysed in this way, leading to the final result.

The judge additionally commented in the antepenultimate paragraph of the judgment: This case illustrates the importance of properly taking into account the informed user's knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art.

This indicates that the expert evidence, and the mass of prior designs, is not an optional add-on that the parties can indulge in if they wish to devote extra resources to a commercially important case, but an essential step in educating the judge into an informed user. This is the more remarkable given that validity was not at issue in the proceedings, but only infringement.

This approach stands in marked contrast to the approach indicated by Jacob LJ in Procter & Gamble v Reckitt Benckiser, and again in Dyson Limited v Vax Limited [2011] EWCA Civ 1206:
The most important things in a case about registered designs are: 

  • the registered design; 

  • the accused object; 

  • the prior art.
And the most important thing about each of these is what they look like.
It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours.
These remarks recommend that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom. It remains to be seen as to how these approaches are to be reconciled in subsequent cases.

Practical significance

This judgment suggests that, in order to judge the scope of a Community design right, it will be necessary as a matter of course, and not only as an exceptional matter, to provide evidence of the design corpus and expert evidence on the degree of freedom of the designer in order that the judge can become an informed user.

YouTube guilty but not liable for late removal of infringing material

Author: Catherine Jasserand (University of Amsterdam, Institute for Information Law (IViR))

TF1, TF1 Video, TF1 droits audiovisuels, LCI and e-TF1 v YouTube (RG: 10/11205), Tribunal de Grande Instance, Paris, 29 May 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps128, first published online: 17 September 2012

No obligation of monitoring subsequent publications is inscribed in law; however, French courts have a tendency to impose such an obligation on hosting providers shifting from a notice and take down rule to a notice and stay down rule.

Legal context

Article 6 of the French law on digital economy (Law No 2004-575 of 21 June 2004, known as the LCEN) implements Articles 12 to 15 of the E-Commerce Directive (Directive 2000/31).

Article 6-I-2 of the LCEN defines hosting providers as natural or legal persons offering, even for free, the storage of signals, images, written material, sounds or messages supplied by the users of the services. Hosting providers cannot be liable for the information they store unless they had actual knowledge (or were informed) of the presence of illegal content on their systems and did not promptly act to remove it or block access to it.

Article 6-I-7 of the LCEN states that persons mentioned in Article 6-I-1 and Article 6-I-2 of the LCEN (internet service providers and hosting providers) are not subject to a general obligation to monitor information they transmit or store, or to actively seek facts or circumstances indicating illegal activities.

Article 6-III-1 of the LCEN covers the case of professional and non-professional publishers (or content providers).

Article L.261-1 of the French Intellectual Property Code states that a broadcasting company must give its consent for any reproduction, sale, exchange, rental or communication of its programmes to the public against the payment of a fee.


TF1, a French TV channel, and its affiliated entities (TF1 video, TF1 droits audiovisuels, LCI and e-TF1) noticed that several of their TV shows and films were being made available on the YouTube platform. In March 2008 they sued YouTube before the Paris Tribunal de Commerce (commercial court) for copyright and related rights infringements, trade mark infringements as well as unfair competition/parasitic behaviour. The Tribunal rejected the case for lack of jurisdiction. In May 2010 the same plaintiffs referred the case to the Paris Tribunal de Grande Instance (civil court of first instance) on the same grounds.


The Tribunal de Grande Instance rejected most of the claims brought by the plaintiffs as the court considered they were not sufficiently evidenced to establish the rights of TF1 and its affiliated companies. The court reduced the action to seven sport programmes for which TF1 claimed broadcaster's rights in application of Article L.216-1 of the French Intellectual Property Code. TF1 also invoked infringement of its copyright for the same programmes. However, the court denied that claim on the ground that a claim of copyright infringement could not be combined with a claim of violation of a related right with respect to the same subject matter. This statement is questionable: it is not based on any legal provision and the subject matter of the related right at stake (broadcasting right) is different from the subject matter of the copyright. The broadcasting right relates to the programmes as messages or signals, whereas the copyright relates to the programmes as protectable works. The programmes should therefore have benefitted from both classifications and received two separate (but cumulative) protections.

Having established the ground on which TF1 was entitled to sue YouTube, the Tribunal de Grande Instance ruled on the status of YouTube. The court had to determine whether YouTube was to be considered as a hosting provider or a publisher (content provider) in order to assess its liability regarding the videos available on its platform. The court referred to the criteria set forth by the French Supreme Court (Cour de Cassation, Société Nord-Ouest & UGC Images v Dailymotion, 1st civil chamber, 09-67.896, Decision 165, 17 February 2011) and by the Court of Justice of the European Union (Case C-360/10, SABAM v Netlog) to determine that YouTube had a passive role. First, the platform did not perform an a priori monitoring of the posted videos. Secondly, the selection of material was made automatically via algorithms. Finally, the fact that YouTube made commercial profits (through the sale of advertisements) could not be considered as a criterion to classify the platform as a content provider. The court concluded that YouTube was a hosting provider subject to Article 6 of the Law on Confidence in the Digital Economy. In application of this article, its liability was limited to its knowledge or awareness of the presence of illegal material on its website. Once informed of its presence, YouTube had the obligation to promptly remove it (or disable access to it). Neither the Directive nor the French law specify what constitutes a prompt removal. However, in the present case, the judges considered that removing the videos five days after their notification was not reasonable.

However, the court did not fine YouTube for this late removal. The judges considered that the conditions of Article L.216-1 of the French Intellectual Property Code (on which the claim was based) were not satisfied. To apply the article, access to the platform should not have been free! This argument does not sound very strong. The court also added that YouTube had provided the means (via its system called Content ID) of preventing a notified material from being reposted online and had performed its duties as a hosting provider.

Practical significance

This decision is interesting in many respects.

First, the judges no longer apply the criterion of commercial benefit or exploitation of a platform through advertisements to qualify the provider's/publisher's content.

Secondly, the court follows a trend that has been observed for several years. In 2007 the Paris Tribunal de Grande Instance ruled that hosting providers could be held liable for subsequent publications of material subject to one-time notification even if the material had been posted by different internet users (TGI Paris, Nord-Ouest Productions v Dailymotion, 13 July 2007). This position was affirmed by the Paris Court of Appeals in four decisions issued the same day (CA Paris, 2nd Chamber, 14 January 2011, Google Inc v les Films de la Croisade, Goatworks Films; Google Inc v Compagnie des phares et balises; Google Inc v Bac Films, the Factory; and Google Inc v Bac Films, the Factory, Canal +). The obligation of monitoring specific content is neither inscribed in French law nor in the E-Commerce Directive. In the present case, the judges acknowledged that YouTube had performed its duty by providing technical means of preventing new publication of notified material. This duty was created by the judges themselves, and they do not hesitate to fine hosting providers for non-compliance. The court hereby confirms a shift from a notice and take down rule (derived from the law) to a notice and stay down rule (liberally established by the courts).

JIPLP-GRUR Int. team up to enhance content quality

Here's some breaking news about a development that will add extra value to JIPLP -- at no extra cost to the subscriber.  According to a media release just posted on the Oxford Journals News website:
"Oxford University Press (OUP) and the German Association for the Protection of Intellectual Property (GRUR) are very pleased to announce a new partnership between the Journal of Intellectual Property Law & Practice (JIPLP) and Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil (GRUR Int.), a publication of the GRUR.

The publishing partnership will be based on exchange of content between the two journals. Under this agreement, both journals will include a section in each issue which will be filled by content from the partner journal. There is no additional cost to the customer, and the only change for each journal’s subscriber base will be the benefit of additional interesting content.

Rhodri Jackson, Senior Publisher for Law Journals and Oxford Open at OUP, said: “We’re really excited about this new arrangement, which we believe will allow JIPLP and GRUR Int. alike to extend their reach into new markets in an immediately visible and original way. Best of all, the partnership will provide new and interesting content to all our subscribers. JIPLP has become a very successful journal since we launched in 2006, and the partnership with GRUR shows our continuing commitment to innovating with the JIPLP formula in order to make the journal as compelling as possible to readers internationally.”

Professor Dr Michael Loschelder, Secretary General at GRUR, commented: “Intellectual property (IP) law has become increasingly global in nature and has developed into one of the most vibrant and challenging areas of law. As an academic non-profit IP association, GRUR is genuinely interested in fostering the dissemination and perception of IP content of general interest within Europe and beyond. Partnering with the renowned journal JIPLP provides an excellent new platform for this and will contribute to raising the international profile of GRUR Int.”

The first issues of GRUR Int. and JIPLP featuring content from the partner journal will be published in January 2013".
GRUR Int. is a well-established, high quality publication with an enviable reputation. We at JIPLP are thrilled that GRUR has chosen to partner with us and we look forward to working with our colleagues from a jurisdiction which has long combined an active culture of IP practice with a notable tradition of legal scholarship.

More books for review

Here is another pair of titles from Oxford University Press that require reviewing for the Journal of Intellectual Property Law and Practice (JIPLP). If you consider yourself suitably qualified to review either of these titles, please email Sarah Harris here by not later than next Tuesday, 11 September, and let her know.  If you have not reviewed a work for JIPLP before, please give an indication of your suitability.

Knowledge as Property: Issues in the Moral Grounding of Intellectual Property Rights by Rajshree Chandra.  Published by OUP India,
"The book critically analyses the nature and scope of intellectual property rights using three different approaches: the philosophical, the empirical, and the theoretical. It studies the different justifications usually put forward in favour of protecting intellectual property rights, and shows how such rights come into conflict with other rights in society. The volume also discusses their benefits and drawbacks with the help of case studies. The author contends that rights can and should be 'structured in a lexical order of priority where rights which are linked to survival strategies ought to have enough legal teeth to trump rights which are more in the nature of economic entitlements, like intellectual property rights are'".
Further details of this publication may be obtained here.


Blackstone's Statutes on Intellectual Property (Eleventh Edition, edited by Andrew Christie and Stephen Gare).  Published in OUP's Blackstone's Statute Series, this work is the latest edition of a work with which many practitioners and students are familiar.  Further details are available from its web page here. The publishers describe this work as "having a 25-year tradition of trust and quality unrivalled by other statute books, and a rock solid reputation for accuracy, reliability and authority. Content is peer reviewed to ensure a close map to courses".

Sweet success for patent holder: gelled Manuka honey medical dressing non-obvious

Authors: Clive Thorne and Henry Priestley (RPC)

Apimed Medical Honey Ltd v Brightwake Ltd [2012], Court of Appeal, EWCA Civ 5, 20 January 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps124, first published online: August 30, 2012

This decision of the Court of Appeal, England and Wales, provides a useful overview of the correct principles to be applied when assessing common general knowledge and obviousness. In such cases, where a successful appellant has the validity of its patent restored, it should seek a certificate of contested validity from the court.

Legal context

In this patent infringement case the defendant ran a defence of non-infringement and counterclaimed for revocation of the patent on the grounds that it was not novel and was obvious. At first instance the case was heard in the Patents County Court (PCC) by Judge Fysh, who found the patent invalid for obviousness, lack of novelty and no infringement. Apimed appealed to the Court of Appeal.


Clinical evidence from recent studies shows that certain types of honey, particularly Manuka honey, are effective at treating serious wounds where bacteria have developed a resistance to conventional treatments. However, given the physical properties of honey at room temperature, there is an inherent problem as to its use as a practical wound dressing.

Apimed solved this problem by changing honey's physical state into a solid compound. By combining alginate powder and honey, a pliable putty or flexible sheet can be created and easily applied to a wound site. Apimed's patent for this invention is European Patent (UK) No 1,237,561 for ‘medical dressings comprising gelled honey’.

Apimed licensed their invention to Brightwake, which was able to exploit the patent in manufacturing wound dressings. Upon expiration of the licence, Apimed issued an infringement claim against Brightwake. Brightwake denied infringement and counterclaimed for revocation.

The parties settled their dispute before the appeal hearing, so the only issue to be determined by the Court of Appeal was whether the patent was valid. The settlement meant that Brightwake did not oppose Apimed's appeal on this point and played no part in the appeal hearing. This position is undesirable from a public policy perspective as an uncontested appeal as to validity increases the risk that an invalid patent is restored to the register of patents (because an appellant's submissions as to why its patent is valid go unchallenged). However, the Comptroller General of Patents was requested before the Court of Appeal and made active submissions on behalf of the public interest. This enabled a certificate of contested validity to be granted.


The decision at first instance misapplied the test for assessing whether a patent is obvious over prior art. The leading appeal judgment, given by Kitchin LJ, clarified the main principles to be applied by the court when it is asked to consider whether a patent is invalid for obviousness.

The skilled addressee
Kitchin LJ held that a patent specification is addressed to those likely to have a practical interest in the subject matter of the invention of the patent and practical knowledge and experience of the kind of work in which the invention is intended to be used (Catnic Components Ltd v Hill Smith Ltd [1982] RPC 183 at 242–243).

It is the skilled addressee who is the person to be considered for the purpose of assessing obviousness and sufficiency, but Kitchin also noted that where the patent is ‘art changing’ the person skilled in the art may not be the same for the purposes of obviousness on the one hand, and claim interpretation and insufficiency on the other (as per Jacob LJ in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819).

It was also held that, as a matter of law, the skilled addressee is deemed to read the prior art with at least some level of interest (Aldous LJ in Asahi Medical Co Ltd v Macopharma (UK) Ltd [2002] EWCA Civ 466). Therefore, in this case, persons skilled in the art must be deemed to have some interest in the possible use of honey in modern wound care.

Common general knowledge
Kitchin LJ ruled that the common general knowledge of the skilled addressee is all that knowledge which is generally known and generally regarded as a good basis for further action by the bulk of those engaged in a particular art. This could include ‘all that material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help understand the pleaded prior art’ (Laddie J in Raychem Corporation's Patent [1998] RPC 31 at 40, approved on appeal at [1999] RPC 497 at 503–504).

Obviousness over the prior art
Kitchin LJ held that, although the trial judge was correct to follow the steps in Pozzoli SpA v BDMO SA ([2007] EWCA Civ 588) when assessing whether a patent is obvious over prior art, he erred in their application. The Pozzoli steps are as follows:
* Identify the notional person skilled in the art and the relevant common general knowledge of that person;

* Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it;

* Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;

* Ask whether those differences, viewed without any knowledge of the alleged invention as claimed, constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention.
Kitchin LJ held that the trial judge did not correctly identify the differences between the state of the art and the inventive concept of the claim and consequently failed to identify correctly whether the differences constituted steps which would have been obvious to the person skilled in the art or whether they required any degree of invention. On that basis the appeal was allowed, the patent held valid and a certificate of contested validity was ordered by the Court of Appeal (the consequences of which are explained below).

Practical significance

Although this decision does not raise new principles of law, it provides a useful summary of the correct approach the court must take when assessing whether a patent is obvious. It also provides an example of the court, upon a successfully contested appeal of invalidity and the application of the appellant, ordering a certificate of contested validity. This can be of commercial value to a patent owner, for example when negotiating future licences, as the validity of its patent has been proved. This can be seen by the world at large since the certificate is entered on the patents register at the Intellectual Property Office. It could also deter future infringers, since a defence of invalidity in a subsequent action would be pointless if run on similar grounds to the unsuccessful challenge.

Further, if a defendant in a subsequent action proceeded with a validity challenge and lost, it could be liable to pay the claimant's costs on an indemnity basis. This applies even if the case is heard in the PCC for which a £50,000 costs recovery cap usually applies. In Polymer v D S Smith, Judge Birss confirmed that, where a certificate of contested validity is granted after invalidity proceedings either before a court or the Comptroller, the PCC costs cap is not applied in subsequent invalidity proceedings against the patent in the PCC.