IP Issues and Technology: Lord Justice Jacob at the SCL London Group Meeting

March 1, 2006

The prospect of seeing Lord Justice Jacob at the SCL London Group Webinar give a presentation and answer questions on “IP Issues Relevant to Technology Disputes” led to enormous demand from IT lawyers and the meeting itself soon sold out. Those who applied for a place in time were well rewarded. Sir Robin looked at a range of topics and made some memorable comments, born of the extensive experience he has of IP litigation and differing international attitudes to IP rights. SCL made the meeting available as a video webinar and it is now also available as a downloadable file for i-Pods and all MP3 players too, which will help SCL Members who find themselves with an opportunity to listen to the meeting, rather than to watch the webinar. Both webinar and podcast remain available via the Webinars link.

Sir Robin’s highly digestible presentation did not mask the fact that there was some considerable meat on offer. He asked how far copyright goes in the context of computer software, where some “borrowing” is both inevitable and acceptable. He referred back to his judgment in the IBCOS case and, while he felt that there remained pointers there, he admitted that the assessment of what amounted to breach, what in essence amounted to overborrowing, was essentially a matter of gut reaction. He was unsure about applying a “look and feel” test of the kind endorsed in Navitaire when it came to computer programs – there was an extra weight to be given to the competition element in such a case. On interfaces and the special problems that they bring, Sir Robin referred back to a case in which he was briefed before taking the bench; he feels that the old sheet-music case of Chappel v Columbia [1914] 2 Ch 745, which he was able to use to his advantage then, is not as widely exploited as it might. In Chappel a one-off infringement had led to the granting of remedies which covered subsequent activities and profits and that kind of approach, now known as a “reach-through remedy”, was apt to breaches arising from the short-circuiting of security interfaces and the like. His guidance on these detailed matters was prefaced with one fairly stark warning relating to the practical limits of copyright: “The world has got to get on with the fact of piracy in the Third World – police in the Third World have better things to do”.

Sir Robin moved on to talk about the patentability of computer programs and the divergence in view which separated the USA and Europe, and one European from another: “The United States takes the view that anything made by man under the sun can be patented. And they have granted patents for business methods, mainly computer business methods. But as far as I can see, it would cover a new and improved method of stacking oranges on a barrel. The European view is that we mustn’t patent computer programs but the European Patent Office then does everything it can to make it possible to do so” “Do we need patents for computer programs? Where is the evidence for it?” he asked.

He reminded the audience that IP rights represent an exception to the general rule that you can copy and compete. While IP rights are often justified on the pragmatic grounds that they encourage research and development, people have got to look at all IP rights critically and ask if they need them.

One aspect of the patentability of computer programs that Lord Justice Jacob is concerned about is the searching for prior art. His response to the suggestion that difficulties over searching for prior art are all going to be sorted out and that it will be very easy to do was pretty clear: “I don’t believe it,” he said. “And some of the fuzzy patents that have emerged from the United States tell you that it’s going to be very difficult to stop very ordinary things from being patented.” The decision on this was, he gladly acknowledged, a question of policy rather than an issue for a judge.

Sir Robin went on to deal with trade secrets and the use of trade marks in metatags. As regards the latter, he highlighted the fact that the reaction of courts was most often determined by cultural attitudes to competition. In Germany, for example (and in particular), trade mark rights and the like were prized above the benefits of competition. Sir Robin also suggested that cybersquatting problems might need a “world common law” if they were to be solved entirely satisfactorily – a prospective development which he clearly relished.

It was in relation to the difficulties in adjudicating technology disputes, and especially international disputes, that Sir Robin showed most passion. He catalogued the various failings under the current system which led to the massive and often crippling expense associated with such disputes. Since non-expert tribunals were involved, the system focuses on teaching the judge, and very often the lawyers too, which is expensive in terms of time and money. The extended use of experts brought its own problems – not least the tendency of experts to answer questions of their own choosing rather than those identified by the court. He tends to the view that a tribunal consisting of a judge and expert assessors may be the best available answer and that the approach taken in public inquiries to the evaluation and assessment of evidence may have lessons for the wider resolution of disputes. Sir Robin was dismissive of the European Commission’s proposals for the resolution of patent disputes, suggesting to appreciative laughter that the requirement that a defendant be sued in his on language must have been set to make the system fail and that the classification of technology into seven fields could only be the work of someone with an arts degree. He drew the meeting’s attention to the European Patent Litigation Protocol (a coalition of the willing) and the need for a strong international tribunal which could deal with European IP disputes. A court of that nature could and should be built around technology – with video links being unexceptionable and cost-effective in the very near future. There were sufficient judges with the necessary expertise, especially in Germany, the UK, Holland and France, to man such a court – and other able judges who were willing to learn from those with the existing expertise. Certainly some alternative had to be found to a current situation where a dispute before the EPO Boards of Appeal might take 15 years to resolve.

In response to questions, Sir Robin thought that he had noticed a change in the attitude toward patents and intellectual property in general: “IP rights themselves may have reached the top of the swing of the pendulum”. He detected public disquiet in a number of areas of intellectual property, with people asking “Are we going too far?” Most of what patent offices do is protective but courts around the world are very much more cautious than once they were. It was, he said, worth remembering that to practice in the area of IP was, when he came to the Bar, to practice in a moribund area and that there had been a great awakening since then: “it will never go to sleep again but it will never be quite so ferocious again either”.

The full presentation, which includes Sir Robin’s reflections on matters as diverse as mediation, open source and the statutory threats regime, remains accessible via the Webinars link.