e-patents.au® – December 2003

e-patents.au® – December 2003

A Newsletter from the Information Sciences Group of Davies Collison Cave


  • The European Parliament recently voted on amendments to a new directive relating to computer–implemented inventions. The European Patent Office (EPO) presently relies on a patchwork of national interpretations of the Munich Patent Convention. Presently, there is a degree of uncertainty in, and differences between, national interpretations concerning the validity of computerimplemented (eg. software/business method) patents in Europe. The European Parliament has issued a text seeking to improve the situation. In a much criticised move the amendments appear designed to make it more difficult to obtain software-related patents and to prevent the patenting of business methods. Commentators have suggested the amended directive does nothing to remove the ambiguity of present EPO tests for the patentability of computer-implemented inventions in Europe. The issue must still be debated by the national European Union member governments before any binding national laws are passed.
  • Acacia Research, a US company, says it is currently in negotiations with major audio and video streaming sites on the Internet. Acacia claims to hold patents dating back to 1991 for compressing and transferring streaming media files over the Internet. The company was recently successful in using a Court injunction to temporarily shut down the Go Entertainment network of numerous pornography sites after Go Entertainment would not enter licensing negotiations. Acacia also claims to have many license agreements already in place and is further pursuing an active licensing program.
  • Research In Motion (RIM), the maker of the popular BlackBerry e-mail device, has lost a patent infringement case against NTP, the holder of patents relating to wireless communications in email systems. The Court granted an injunction preventing RIM from making or selling BlackBerry devices in the US, pending an appeal. NTP was also awarded US$53.7 million in damages. After the result RIM share value slipped about 15%.
  • A French Court has ordered Google France to pay a 70,000 euro fine to two companies that owned trade mark rights to certain words. Google’s ‘Adwords’ feature permits advertisements to appear and be linked to specific search terms. The Court concluded Google had no authorisation for such use and violated trade mark rights of the companies.

Important UK Internet gambling case

An appeal decision has issued in Menashe

Business Mercantile Limited v William Hill Organisation Limited. The three member appeal bench essentially upheld the first instance judgment handed down previously, but used different reasoning to reach their conclusion.

To recap, William Hill were sued by Menashe for infringement of a European (UK) patent relating to Internet gambling. The product provided by William Hill consisted of a CD including software for installation on a punter’s PC. The software allowed the PC to act as a terminal and thus communicate with a server system, which was located offshore in the Caribbean.

The critical issue in this case turned on whether the location of the server outside the jurisdiction of the UK courts had any effect on the infringement of the patent in the UK. The Appeal Court judges considered that to the end user of the system, the actual location of the server was irrelevant. It was therefore of no relevance that the server was located offshore. An important factor to determine was ‘Who is using the system?’. A user in the UK would be accessing, and thus, ‘using’ the remote server in the UK. The user was effectively using the server in the UK, even though the server was physically located elsewhere.

This case shows that in the world of the Internet and other connected systems, the actual location of various parts of the system is less important than the effect they might have in a particular jurisdiction. Although decided under UK law, as evolved from European treaties, this case raises issues of relevance in all jurisdictions.