DECISIONS
The claimants sought four separate declarations: (a) declarations of non-infringement of patent EP 2,032,426 in its UK Designation in relation to the Vessel; and/or (b) declarations of non-infringement of patent EP 2,032,426 in its Finnish and Swedish Designations in relation to the Vessel; and/or (c) declarations that the First Defendant’s rights in respect of the Patent in relation to the Vessel have been exhausted within EEA; and/or (d) declarations that each of the Defendants has consented to the use of the System on the Vessel. It was common ground that the applicable law for each designation of the Patent was the substantive patent law of the relevant country. However, the law which is applicable to the other conditions for a declaration of non-infringement is the lex fori i.e. English law. There was no dispute in relation to declaration (a). In relation to declaration (b), the defendants argued that the Court had no jurisdiction as it concerned acts covered by the Finnish and Swedish designations of the Patent. The claimants did not dispute that, in general, the Court did not have jurisdiction over claims for declarations of noninfringement in non-UK designations, but that in this particular case, the Court did have jurisdiction based on an exhaustion of rights in the Patent. The basis for the argument was that if the Court decided that acts in relation to the Vessel in the UK did
IPO decisions Patentability: section 1(2) Avaya Inc. BL O/512/17 12 October 2017 The application related to a computer-implemented method of monitoring work activities for billing, in which an automated hierarchical search was carried out for details regarding the person to be billed held by a trusted third party, and a billing entry created using the details obtained from the search. The examiner objected that the claimed invention was a method of doing business or a computer program, arguing that the invention automated, in a conventional technical manner, the process of information searching and retrieval that would normally be carried out as part of normal administration of a billing process. The applicant argued that the contribution made by the invention was a hierarchical search of multiple networks to identify an address of a third party based on a trusted relationship to automatically initiate communication for billing purposes, and that the technical contribution was how the search Volume 46, number 12
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not infringe because of exhaustion, it necessarily followed that the decision was equally applicable to the other 11 designations. The judge therefore considered declarations (b) and (c) together. He considered that the argument of the claimant confused two different questions, namely which court has jurisdiction over a defendant in respect of a claim under article 5(3) and second, what is the effect of any decision by a court which has jurisdiction. The judge noted that it was necessary to consider which court has jurisdiction on a claim-by-claim basis. He considered that it did not follow that a court having jurisdiction in respect of one claim had jurisdiction over another claim, even if it were closely related in fact or law. In relation to the second question, Arnold J noted that the question of whether to afford recognition and res judicata effect to the decision of the first court to be seised are matters for the courts of other Contracting States to decide and should not be presumed. The judge noted that whilst declaration (c) depended on the application of a principle of European law, declaration (d) depended on the application of relevant national laws. Therefore, even if the Court had jurisdiction in respect of declaration (c), it did not follow that it had jurisdiction in respect of declaration (d). The judge held that the Court has jurisdiction over the defendants in respect of the claim for declaration a), but not in respect of the claims for declarations (b), (c) or (d) in so far as they extended beyond the UK designation of the Patent.
was accomplished to identify and automatically contact a communication device of the third party. The hearing officer considered that the invention had the advantage of identifying a trusted relationship and searching internal and external sources for an address of a communication device of the third party, which was used to contact the device to obtain information and generate a billing entry. This series of steps was, in the hearing officer’s view, what had been added to human knowledge. The contribution was therefore an improved way of generating a billing entry by identifying a trusted relationship between a client and a third party, and searching to find an electronic address that was then used to contact the device of the third party to obtain information that was then used to generate part of a bill. The contribution, being an improved way of generating a billing entry, was by its very nature one that concerned a better way of conducting an administrative or organisational task. The task of searching for an address in one location followed by other locations was also still in essence an administrative task. The contribution therefore failed the third step of Aerotel, as it was both a method of doing business and a program for a computer. The contribution was also not technical in nature because it did not solve a DECEMBER 2017
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