London IP clinics

Mr Burke worked as a promoter and events manager. Mr Burke was employed by C&F to promote and manage events at a venue owned by C&F. C&F agreed that Mr Burke was permitted to promote and organise his own events at the venue, provided that he generated an acceptable level of business for C&F whilst he was working for them.

Mr Burke met Mr Lacey during the time he worked for C&F. Mr Lacey was a DJ acting under the stage name “Jonny Bongo”. Mr Burke and Mr Lacey met in early 2015 to explore Mr Lacey’s interest in hosting events at the venue. During this meeting, Mr Lacey explained that he had a new idea to incorporate a bingo theme into his offbeat version of a traditional pub quiz. Mr Burke made arrangements with Mr Lacey to stage a new club night at the venue named “Bongo’s Bingo”.

The event was a success and Mr Burke and Mr Lacey continued to hold events at the venue. C&F was entitled to the bar receipts, and paid Mr Burke 15% of the net profits from the bar in addition to his salary. In light of the success of the venture, Mr Burke resigned from C&F to work directly with Mr Lacey. Mr Lacey subsequently assigned the goodwill in the brand to himself and Mr Burke, and later, once it was incorporated, to Shua.

Despite Mr Burke’s resignation from C&F, it was understood that he intended to continue to host event nights at the venue and wished to retain his entitlement to 15% of net profits from the bar at any such events. On 15 June 2015, Mr Burke and C&F met to discuss the future relationship between Mr Burke and C&F.

An email C&F sent following the meeting sought to confirm that C&F had “a 15% ‘stake’ in Bongos Bingo on the road”. This was agreed by Mr Burke by way of return email. It was clear from the witness evidence that the word “stake” had been placed in inverted commas as it wasn’t clear to the parties at the time what form C&F’s interest in the venture was going to take. The expression was kept deliberately vague so that it could have meant a 15% share of income or 15% share of the business. Sometime after Shua was incorporated, 15% of the shares in Shua were transferred to C&F upon C&F’s request.

Ownership of goodwill in the business The Judge noted that where an entertainer personally develops a name and attracts a public following, goodwill subsists in that person regardless of whether a third party engaged them to provide services. The Judge considered that it was “overwhelmingly clear” that the goodwill in the BB brand initially belonged to Mr Lacey in his personal capacity. The concept of an entertainment medium fusing bingo with rave and dances was developed by Mr Lacey, with some limited involvement of Mr Burke. The success of the club night was primarily based on Mr Lacey’s act: until 2017 events were personally presented by Mr Lacey and witness evidence from C&F confirmed that the BB event was “heavily driven by (or dependent upon) [Mr Lacey’s] personality”.

The Judge was not convinced that C&F had played a significant part in creating the BB concept, with witness evidence focusing on peripheral details such as lighting. It was not relevant that C&F had incurred expenses in connection with the BB events. C&F generated substantial revenue from bar receipts in respect of the BB events well in excess of its initial expenditure. As a result, Mr Lacey was solely entitled to the BB goodwill when he assigned the goodwill to both himself and Mr Burke and later to Shua.

Ownership of the copyright in the logos Mr Burke engaged a third party, Mr Joe Murphy, to draw logos for BB, the copyright in relation to which was later assigned to Mr Burke and then to both Mr Burke and Mr Lacey.

The Judge was convinced that, despite the commission taking place during the time that Mr Burke was employed by C&F, on the basis that C&F did not restrict Mr Burke from engaging in promotional activities outside the limits of his employment, it could not be assumed that he engaged Mr Murphy in his capacity as employee. Accordingly, C&F had no rights in the copyright in logos used by BB.

London IP clinics continue with new dates

During the ongoing disruption of the Covid-19 outbreak, our London IP clinics will be continuing. However, all appointments will be hosted remotely by staff via video and teleconference.

Clinics will take place on Monday evenings instead of Tuesdays. There will, however, be one Tuesday a month (dates decided on a month-by-month basis) available for clients and clinicians who are unavailable on Mondays. If you can spare a little time in the evening and would like to volunteer your expertise to help those seeking free intellectual property advice, we would love to hear from you. The growth and success of this important, free service to the public could not happen without our members volunteering their time. For more information on any of the above, please email clinics@cipa.org.uk.

CIPA webinars

For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. Missed a webinar? Catch up at www.cipa.org.uk/whats-on/past-webinar-recordings

Wednesday 17 June 2020 Webinar US/EPO PATENT CASE LAW Time: 12.30–13.30

Join speakers Yelena Morozova and Anthony Tridico (Finnegan) alongside Dominic Adair and Gemma Barrett (Bristows) for this CPD webinar that will focus on interesting recent patent decisions to have come from the EPO and the US courts.

CPD: 1; Prices: £73.20 | £49.20 members

Friday 19 June 2020 Webinar EXAMINATION AT THE EPO: How it’s done, and what the examining division is looking for Time: 12.30–13.30

The Procedure of examination of European applications is defined in the European Patent Convention. It is described in more detail in the Guidelines for Examination. But how precisely does the Examining Division come to the conclusion that the application documents are in order for grant? An insight into the decision-making process knowledge may help to draft replies to the Communications of Examiner more efficiently.

Speaker: Cillian Ó Donnabháin (EPO) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 22 June 2020 Webinar DIVERSITY IN IP BREAKFAST Time: 08.30-09.30

The annual Diversity in IP Breakfast is back! This free event, open to all IP professionals, is a collaboration between IP Inclusive and CIPA.

We will be joined by our guest speaker Daniel Winterfeldt, partner at Reed Smith and founder and chair of the InterLaw Diversity Forum. Together with IP Inclusive Lead Executive Officer Andrea Brewster, Daniel will share his thoughts on allies and “intersectionality”, and how we can all work together, across diversity strands, to ensure our sector is truly inclusive.

CPD: 1; Free for CIPA members – booking essential

Wednesday 24 June 2020 Webinar ESSENTIALLY BIOLOGICAL PROCESSES AFTER G 3/19 Time: 12.30–13.30

Now that the Enlarged Board of Appeal in G 3/19 has confirmed that products obtained by an essentially biological process are not patentable, Rhiannon Turner will provide an overview of the decision and how we got here. She will also consider the remaining options for IP protection for such products.

Speaker: Dr Rhiannon Turner (Greaves Brewster) CPD: 1; Prices: £73.20 | £49.20 members

Tuesday 30 June 2020 Webinar CRISPR IP CONSIDERATIONS Time: 12.30–13.30

Ever wondered why CRISPR is at the forefront of multiple patent interferences in the US and contentious proceedings before the EPO? This webinar will explain for those not familiar with the technology why there is such interest, will give a short overview of the IP battles aimed at all patent attorneys and, for those working in life sciences, will finish with some considerations when drafting in this field.

Speaker: Cath Coombes (Murgitroyd) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 2 July 2020 Webinar US PATENT-ELIGIBLE SUBJECT MATTER – LATEST THINKING Time: 12.30–13.30

US patent attorneys Thomas J Kowalski and Dr Deborah L Lu (Duane Morris LLP) will provide an overview of patent eligibility under 35 USC 101, and examine the latest developments in the US – case law and practical experience before the USPTO – in the ongoing saga of patent-eligible subject matter vs ineligible natural phenomenon. The panel will examine the approaches being taken for determining patent-eligible subject matter, including whether and how a type of problem-solution approach is playing into whether an invention is patenteligible in the US under 35 USC 101.

CPD: 1; Prices: £73.20 | £49.20 members

Friday 3 July 2020 Webinar ACTAVIS, THREE YEARS ON: Much ado about nothing? Time: 12.30–13.30

The Supreme Court handed down its judgment in Actavis v Eli Lilly on 12 July 2017, almost three years ago. At the time it was said variously to be:

Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

the most seismic shift in UK patent law since the 1977 Act; no real change except in marginal cases; a longoverdue recognition of the doctrine of equivalents; the worst decision made in patent law for as long as anyone could remember; the start of a new golden age for patentees; the beginning of a whole new world of uncertainty; and a ruling both that Na = K and Na ≠ K. Douglas Campbell QC considers:

Which of these views, if any, has turned out to be correct? How is Actavis actually being applied at first instance and on appeal? Are patentees winning more cases, or is it different routes to the same result? Does the doctrine of equivalents apply to validity?”

Speaker: Douglas Campbell QC (3 New Square) CPD: 1; Prices: £73.20 | £49.20 members Tuesday 7 July 2020 Webinar GOVERNMENT USE OF PATENTED INVENTIONS: Implications for Covid and beyond Time: 12.30–13.30

The ongoing Covid-19 pandemic has stimulated a lot of discussion around the issue of national governments rights to use patented technologies in dealing with public health emergencies. This webinar provides an analysis of national governments’ powers to make use of patented inventions.

The speakers will examine the situation in three jurisdictions: Canada, where the Covid-19 Emergency Response Act (Bill C-13) received Royal Assent on 25 March 2020; the United Kingdom, where government use of patented inventions is already part of the Patents Act; and South Africa,

which has been very successful in bringing about pricing changes and increased distribution of medicines through use of an active citizenry, skilful interpretation of the constitution.

Speakers: Jennifer Marles (Oyen Wiggs, Canada); John McKnight (Spoor & Fisher, South Africa); Adrian Bradley (Cleveland Scott York, UK) CPD: 1; Prices: £73.20 | £49.20 members

Speakers: Dr Mariana Bullrich (Noetinger & Armando, Argentina); Dr Leonor Magalhães Galvão (Magellan IP, Brazil); Aída Rendón Amelio (ARA Law Firm IP, Mexico) CPD: 1; Prices: £73.20 | £49.20 members

Friday 10 July 2020 Webinar LATIN AMERICA: Patent law and practice Time: 12.30–13.30

This webinar will explain the latest thinking in patent procedure and strategy in Latin America. It will focus on the legal situation in the three largest economies in the region, Argentina, Brazil and Mexico, with expert speakers from all three jurisdictions. In addition to essential knowledge for UK practitioners seeking to obtain protection in the region, the session will cover the latest thinking on important topics including the patenting of medical methods, software patents, and enforcement.

Tuesday 1 September 2020 Webinar DABUS: Seeking to patent inventions made by an AI system – a view from the applicant’s patent attorney Time: 12.30–13.30

The DABUS patent applications have been widely reported in the media and have prompted many commentaries on the merits of the cases by people working or