LICENSING EXECUTIVES SOCIETY

Britain and Ireland

NEWS EXCHANGE
Issue 91: April - May 2003

(Return to News page)

• NESTA's Invention & Innovation Programme
• President's Diary
• The Honorable Mr. Robin Jacob MA, LLB, High Court Judge of England and Wales and Judge of the Patents Court of England and Wales. LES Britain and Ireland, Honorary President
• Keeping Science Open
• The Road to Success is Paved with Good Inventions (and a Friendly Licensing Executive)!
• LES and the Parliamentary & Scientific Committee
• Inventing in the NHS. A Personal Experience
• LES Council Member Advises BBC on a New Series of Programmes on Innovation.
• News from the Regions
• A freestanding right to privacy? Douglas and others v Hello! Ltd and others.
• New Members

Keeping Science Open

The above recently published policy document of The Royal Society examines the effects of intellectual property policy on the conduct of science. The report makes several key points on how such policy should be modified in the academic sphere; it is where it drifts into general criticism of IP laws and systems that it seems to lose its way.

Major concerns of the report are the possible negative effects of IP policy on education and the free flow of information. In particular, it recognises that questions of ownership in the university sector can often hinder the appropriate exploitation of IPRs. No particular solution is offered. My view is that the legal position could be greatly simplified by introducing a series of statutory presumptions, which would apply in the absence of a written agreement to the contrary. Such provisions are already included in the Patents Act regarding the effects of joint ownership. For example, university students involved in research could be deemed to have no ownership rights; this would not affect the issues of inventorship and the possible rights to compensation. Another statutory presumption could set out the situations in which confidentiality would be deemed to apply, especially when academic papers are submitted to journals for publication.

Patents
The chapter on patents contains the highest number of recommendations. One of these, bearing in mind the risks of monopolistic abuse in the biosciences field, is that governments further facilitate compulsory licensing and the application of competition law where the development of inventions might be adversely effected. Another recommendation concerns clarification of the "experimental use" exceptions to patent infringement; this would clearly be attractive to academic research scientists, but there would be a limit to what would be regarded as acceptable by large companies.

I found recommendation 3.26 to be the most interesting:

We recommend that governments make it clear to their respective national and regional patent offices that their primary goal is to examine patent applications appropriately rather than to strive to grant as many patents as possible.

Readers of News Exchange are invited to submit suitable wording for a letter from a government minister to a Patent Office head of their choice.

Paragraph 3.28 makes two controversial comments. Firstly, it proposes that Patent Office novelty searches should include journal and trade literature as well as patents and patent applications. A brief glance at the recent EPO Annual Report would have revealed that in addition to 29 million patent documents, the Office also has an in-house collection of over 3.7 million technical and scientific articles. Moreover, search examiners have access to 35 million more articles on commercial databases through the EPOQUE system and to all sources of information available free over the Internet. Secondly, the report hints that the examiners' understanding of developing areas of science is inadequate. Given that the examiners are in touch with current developments by the nature of their role and with access to the voluminous search material mentioned above, this observation also appears to be unsupported.

The next significant proposal in the report is that the requirements for "utility" and "disclosure of best mode" should be strengthened. The working group is also off target here, in my opinion. A principal advantage of the IP system is that "one size fits all", that is, the same law applies whether the applicant is a lone inventor, a university, a small or medium enterprise or a multi-national. The same law also applies in all technical fields, although there may be differences in the way in which the law is interpreted. Although the working group clearly feels that this occasionally leads to unsatisfactory results, the alternative would be a highly-tailored system, which would be complicated and, more seriously, expensive. Patent practitioners would benefit, but no-one else, and the patent system would become prohibitively expensive for universities and SMEs.

The report cites one of the submissions to the working group, which categorises as "absurd" the situation that, in view of the costs of infringement citations, many patentees cannot afford to enforce their patents. This view, however, ignores the possibilities and advantages of patent licensing and other forms of technology transfer, which avoid the need for contentious proceedings.

Copyright and Databases
The report favours the reduction of the duration of copyright protection from the life of the author plus 70 years. Although the active life of much scientific copyright is only 10 years or so, it is noted that access to historical archives is frustrated by the present position; for example, Ernest Rutherford's work is still in copyright.

The report also expresses concerns over the application of database right to scientific data. The Royal Society has submitted observations to the European Commission on this topic advocating repeal.

Conclusion
While acknowledging the stimulating effect of IPRs, the report concludes that the restrictions they necessitate are not in the interests of society and unduly hamper scientific endeavour. However, this approach of damning with faint praise forgets that IPRs are not an end in themselves; rather, they are a way to encourage exploitation and commercialisation of invention and, indeed, for all sectors not just academics.

The working group was chaired by Professor Roger Needham, who unfortunately died before the report was published. The report "Keeping science open: the effects of intellectual property policy on the conduct of science" can be found on the web at www.royalsoc.ac.uk in the Science Policy section.

Stephen Powell
Vice President, LES B&I

The Road to Success is Paved with Good Inventions (and a Friendly Licensing Executive)!

Once upon a time there was a consultant who specialised in the procurement of material and equipment solutions for international clients in the construction and civil engineering industries. He operated on the principle that his clients only needed his services if they required something on site that simply was not in the book. As a result, almost everything he ever did was a "one off". One fine day he was asked to devise a means of protecting an occupied shopping mall from the noise of diamond saws which were just about to slice up …..…the shopping mall! He started researching the background to the problem by talking to almost everyone he knew in the construction industry and in the arcane world of acoustics. All said much the same thing - that there was nothing which did what was required, but if ever he should find the answer they wanted to hear about it; everyone needed such a system. It took him all of three hours to devise an innovative acoustic barrier system.

Suddenly he realised what he had been for all those years. No, not a lunatic, an inventor! So, as innocent inventors are prone to do, he thought about capitalising on the new system, which he realised meant patenting and then licensing the system.

He thought he knew something of patent applications, but he needed expertise in a field that was as alien to him as it still is to most folk - licensing. He went looking and this at a time when few had even heard of the Internet, much less search facilities. He found all sorts of hooligans out there. You know the types. They even advertise in the broadsheets. "Tell us everything about your invention, give us thousands of your pounds and we promise we might make you rich". By chance, our inventor found a rather more promising outfit, called the Licensing Executives Society, whatever that meant. He rang them and asked for help and spoke to a charming lady called Renate. She gave the unworldly inventor a list of members of the mysterious society who were willing to work for private clients and the inventor started to make more phone calls to folk on the list. He very quickly discovered that they were not all running charities for the aid and succour of distressed inventors. Most appeared well qualified, willing to help and, in most cases, their fees were not really outrageous. Reasonable the fees may have been, but the inventor's project was, at that time, exceedingly speculative (aren't they all?) and he was unwilling to spend a farthing he didn't need to until the project seemed a little less speculative, and not even then if he could help it! All his resources would have to be channelled into developing the product and then paying the horrendous patent fees (they are horrendous aren't they?) to protect his brainchild around the world.

Eventually, after trying to get something for nothing with several members of this august body, he came across a member, a Council member no less, who was perfectly willing to work on what the unworldly inventor discovered was called a contingency basis. This apparently meant, "no deal, no fee". This seemed to suit the bill (or rather lack of bill) down to the ground and the inventor and the Licensing Executive (for that was his profession) agreed some terms and exchanged agreements. History records that neither of them looked at that agreement ever again and, if asked, neither would have known where to find it. It seems that, astonishingly, they had never actually reached a point of disagreement and therefore never needed to get out the pieces of paper and see if they could sue one another!

Time moved on and the inventor got his product licensed. And that was that, except that although successful, the product was never quite as successful as both the inventor and the Licensing Executive had hoped. However, the inventor had not been idle (heaven forbid that the Licensing Executive might have been) and he busily carried on inventing all manner of other things to the special order of his clients, ranging from the M.O.D to H.H. The Emir of Oman, and from Railtrack to the Kuwait Oil Company.

Then the day dawned when the inventor needed a construction industry item for his own domestic use. It simply didn't exist and so he just invented yet another new product. This time he was his own client and strangely enough it is not always true what they say about anyone who is his own lawyer. Suddenly, he remembered that he had a friendly Licensing Executive in tow who could, in certain circumstances, be persuaded to work for nothing…. He called up the Licensing Executive, and asked him if he thought this new product was capable of being patented. The Licensing Executive said that not only did he think it was patentable, but that he quite liked the product itself and so yet another patent application was born. Then it was discovered that a whole lot of other people liked the product too and away it went.

And the current state of play?
The product is now fully developed, a PCT (Patent Co-operation Treaty) application is in, the trademark is registered, manufacturers have been found and potential licensees are tripping over each other. Watch this space. The new product is called TileCell - of which, perhaps, more in a future issue

Tony Precey, email: adp@psi3000.com

LES and the Parliamentary & Scientific Committee

The Parliamentary and Scientific Committee (P&SC) which was established in 1939, held its AGM on 20th May. The P&SC is one of the largest and longest established standing Committees having about 80 members from the Lords, 40 MPs, 20 MEPs, 140 members representing scientific and technical organisations (including the LES), 50 industrial members, 50 from British universities and one individual member. The three honorary members comprise HRH The Duke of Edinburgh, The President of The Royal Society and The President of The Royal Academy of Engineering. The Chief Scientific Advisor to the Government and the Director-General of the Research Councils are members by virtue of their offices.

This year the P&SC has extended the range of organisations eligible for membership to include "bodies representing those whose interests are affected by science". This is a considerable broadening of potential membership. Although currently there are about 400 members, the monthly meetings are attended typically by 80 - 100 members.

LES is represented on the P&SC by our President, Christi Mitchell, and Michael Connor, one of our past Presidents.

The role of the P&SC is to act as a primary focus for scientific and technical matters. Its main aim is to communicate and debate those matters where science and politics meet. Such matters of public interest are debated to assist the development of Government policy.

During the past year the subjects covered included safety on the railways, breast and prostate cancers, the MMR vaccine, occupational stress, hydrogen fuel for cars and a whole day meeting to discuss the new frontiers of engineering including engineering for space, the bioengineered person, stem cells and therapeutic cloning, white heat in aero-engines and the future of engineering research.

In the coming year it is planned to discuss the Energy White Paper and the precautionary principle as an instrument of policy. After most meetings there is a dinner at which the topic is pursued in a more "off-the-record, no-holds-barred" informal atmosphere. The P&SC also arranges visits for about a dozen or so members to industrial, scientific and research establishments.

The associated Parliamentary Office for Science and Technology (POST) in the last year produced 22 reports and held seven major seminars for Parliamentarians on such subjects of possible interest to LES as broadband Internet, electronic privacy, Internet copyright, UK drugs policy, CCTV and access to energy in developing countries.

The P&SC is also associated with the production of a journal entitled "Science in Parliament" which is a record of science and technology in both houses of Parliament and the European Community. If LES members are interested in subscribing to the journal they should write to: Science in Parliament, 3 Birdcage Walk, London, SW1H 9JJ
Telephone: 020 7222 7085
Fax: 020 722 7189.

P Michael Connor, Council Member and Past President of LES B&I

Inventing in the NHS. A Personal Experience

This is a personal experience of having an idea and attempting commercialisation whilst working full time within the NHS. The story will be similar to the experience of many and has only just begun.

When I was a specialist surgeon in South Africa I came over to the Shetland Islands in 1995 to do a two-month consultant locum. One day I lost a 17 year old male on the operating table due to haemorrhage from major liver trauma. It brought to mind a surgical method for stopping such bleeding, which was sound theoretically but was known to double mortality due to its complicated nature. For a successful outcome it required experience and techniques not readily available outside major centres. It was only used as a last resort in the most shocked patients, who would be the least able to withstand further major surgery. What was required was a totally new device, easy to use and instantly available in any operating theatre. If safe, it would also be used in the less severe categories of damage with equal benefit.

It was obvious that market assessment would be difficult, and equally obvious that if it could be used as a technology platform it would have a wider appeal. Such uses readily presented themselves, and the main thrust of this project is now aimed at the commercialisation of one of the original alternatives. This has a much more secure potential in the expanding part of a global market worth $2 billion annually.

I decided to explore the possibility of making my ideas come true. I had never done this before, and a previous experience had shown me that if you don't pursue your ideas someone else will solve the same problem. I performed due diligence and found that whilst there were similar ideas in the literature, the key feature and unique selling point of my concept did not exist as either prior art or in a commercial form. I approached a patent agent and filed an application. During the next year the application was modified to include extra concepts that I thought would be obvious to a competitor. The European examiner initially rejected half of the original claims, and it was clear that the key feature was not understood. After resubmission and a further precise explanation, 35 out of 37 revised claims were deemed both novel and inventive with industrial application. The concept won a John Logie Baird award for innovation in October 2000 and this was followed by a presentation using CD animation at the commercial launch of Medical Devices in Scotland in January 2001. Models made by a 3D printer have been very useful in explaining the concept as they can be handled and form a basis for discussion. The device was runner-up in the Medical Futures international competition in London in May 2001 and in May 2002 a SMART award for a feasibility study was granted by Scottish Executive. Development started straight away and the design engineers have been able to make a working model, which is the basis of the platform technology. There is still an element of risk, but we are optimistic that this phase will be successful. Currently we are applying for a SPUR grant and seeking investors for first round funding. Knowing how to approach investors and which ones are likely to be suitable as long term partners requires specialist knowledge and we have been helped by financial experts in this field.

Right at the beginning I approached Scottish Enterprise Borders, my local enterprise company, for commercial assistance. Their help has been invaluable and through their contacts I have been able to enhance my own network to establish a team whereby my virtual company is able to buy in expertise when necessary.

There have been many difficulties in this process. First there is the need to be confident that the idea is a good one and worth pursuing. I was encouraged in this by early recognition, and the positive approach of not only the design engineers but of many on my team, who at times had as much, if not more, enthusiasm than I did myself. A competitive Government award was a major milestone and offered further encouragement. With all this support came an increase in confidence and this underpinned the need for personal funding to a substantial level.

One difficulty encountered was that of obtaining endorsements from colleagues. Some would promise much and deliver nothing, whilst others would produce a wonderfully generous recommendation.

I contacted several people who had been down a similar path before, but despite this there was a feeling that we were doing this alone for the first time. The situation was dynamic and at every stage there were decisions to make that might affect strategy and exit. Generally, I found more encouragement and empathy from the business community rather than from within medicine, where innovation is not yet long established as part of the culture. It may have been helpful to have been able to approach an organisation from within the NHS that had direct experience of commercialisation, but at that time none existed. Recent Government initiatives are aiming to redress this problem, but they are in competition with companies that have established networks and the experience needed to drive ideas forward.

So far it has been a fascinating and exciting journey during which I have met many interesting and talented people. Since I am still working full time, meetings have to be held in periods of leave, and I am frequently emailing late at night or even in the small hours. There are peaks and troughs, but at the end of the day there is progress towards a vision that can bring benefit to both clinicians and patients, with the satisfaction of knowing that if the project is successful one has made a contribution to innovative technology in an expanding sector. A royalty stream is not an end in itself so much as a means of expanding the technology into a global market and taking on further developments.

Richard Halpin, Halpin Innovation Ltd
Email: richard.halpin@dial.pipex.com

LES Council Member Advises BBC on a New Series of Programmes on Innovation.

Long time LES Council Member, Michael Connor, has been one of those advising the BBC on the content of a new series on innovation. Michael reports,

"On Wednesday 30th April the BBC launched a trawl for new innovative ideas, the selected "best" of which will form the basis for a series of programmes, called "Innovation Nation", to be transmitted later in the year. The programme interviewed many well-known inventors who made their millions from inventions that have changed our lives (for better or worse) forever. Initially, the BBC is seeking a one-line entry that says what the invention is about, but without saying how it is constructed or works. These entries will be screened for 'good ideas' to select a shortlist. The BBC are calling for teams of two or more to submit a video of themselves saying how they came together as an innovative team, what inspired their invention, and why they should be selected.

From the shortlist NESTA will select those inventions that they consider worth patent protection (paid for by the BBC) and which they will promote to manufacturers and retail outlets. Young inventors are also being encouraged in the BBC programmes Blue Peter and CBBC."

News from the Regions

LES Healthcare Group - Half-Day Meeting 1 May 2003

The recent half-day meeting of the LES Healthcare Group proved a great success. The programme included many industry speakers and, with the Royal Institute as the venue, the event was a sell out.

Eleanor Hunt of the Business Development team at Celltech presented some of the key learnings from a licensing benchmarking exercise she had recently completed. Eleanor's presentation highlighted that there is no 'one size fits all' when it comes to licensing. One of the key benefits she identified from undertaking the work was the opportunity it offered to improve communication across the company, ensuring local operations work towards common licensing goals.

Andrea Knott from the Global Licensing team at AstraZeneca discussed the growing interest in the use of financial equity in structuring licensing deals. Andrea updated the audience on the various elements that need to be addressed when considering equity financing. Issues such as the size of an equity stake, tax considerations and the various pros and cons for both biotech and big pharma were reviewed. In the current environment it looks likely that equity financing may become an increasingly common component of licensing deals.

Hearing both sides of one successful licensing deal proved entertaining. Co-presenters John Roe of Mundipharma and Steve Mansfield of Boots Healthcare presented what each saw as the benefits from a deal that lead to the successful roll-out of the well known OTC brand Nurofen-Plus. Both speakers highlighted the importance of seeking a win-win solution as the best way of ensuring a long-term commitment to a successful partnership.

Further reinforcing the benefits of win-win deals, Malcolm Skingle, Director of European Academic Liaison at GlaxoSmithKline reviewed the many ways industry and academia are benefiting from collaborative ventures. Malcolm highlighted the commitment industry is making to the funding of academic-based research and the increasing emergence of consortia as a funding vehicle for these programmes. Perhaps the most important message to come from Malcolm's presentation was how many of the collaborations had delivered real and tangible benefits to drug discovery, formulation and development.

The meeting concluded with an update from Claire Irvine of JA Kemp, who discussed some of the important issues to be aware of when completing IP due diligence in the biotech area. Claire made the case for the inclusion of an IP attorney as early as possible in any due diligence involving biotech IP and highlighted the impact that both time and budget often had on what could be achieved. Interestingly, Claire also highlighted the importance of considering the potential ethical dimension of biotech IP during the due diligence process.

The meeting provided a great opportunity not only to network with colleagues, but also to get an update on some of the current hot topics within the healthcare licensing arena.

Spurred on by its success, the Healthcare Committee hopes to organise another half-day event within the next six months.

Stephen Rowntree

LES North-East -14th May 2003

22 members and guests welcomed Professor Damien McDonnell, Director General of the Defence Diversification Agency, together with his NE Regional Managers, John Gates and Chris Jenkinson, to the warm ambience of the Leeds Club to hear how the enormous wealth of knowledge and technology generated by the Government defence agencies over past decades is being unlocked for the benefit of UK industry.

The DDA's Synnova® -synthesising innovation - consulting service provides a range of complementary skills and capabilities for identifying and meeting business technology needs to enable the assisted company to take its commercial performance into a different league.

Professor McDonnell described a number of fascinating case histories where the Synnova® consulting service, which is entirely free of charge to the recipient company, had already proved a great success.

DDA assistance can be accessed on 0845 600 1221 and much more information is available from the DDA web site www.dda.gov.uk.

Trevor Hunter

NEWS FROM LES IRISH SECTION

The 3rd April 2003 saw the return to Chapter One Restaurant for the Irish Section Annual Dinner. As in previous years, a reception was initially held in the Dublin Writer's Museum, and the 30+ attendees then assembled downstairs in the restaurant for a pre-dinner "after-dinner" talk by George Hedges. George is a US attorney, having amongst his clients the Elvis Presley Estate. His talk, which was both entertaining and insightful, was entitled Elvis lives! The anatomy of an American copyright case. Dinner was then served and the conversation continued until late in the night. Thanks must go to the staff at Chapter One Restaurant for the professional and excellent service- we may return yet again.

Thursday 15th May saw the second of this year's afternoon meetings organised by the Irish Section of LES B&I. This time we were lucky to avail of the facilities offered by NovaUCD, a purpose built innovation centre located in the grounds of University College, Dublin. The new complex (approx. 2850 sq.m) will provide incubation space for Campus Companies, and also includes facilities providing seminar, meeting and administration space. LES were the first non-UCD organisation to arrange a meeting and we are grateful to Caroline Gill and all the team at NovaUCD for their generosity.

The theme of the meeting reflected the location: Business growth through licensing technology, and the 50+ attendees were offered the benefit of practical experience from speakers from Enterprise Ireland, the Venture Capital Community and the Licensing Executives Society.

Two speakers from Enterprise Ireland (Gearoid Mooney and Nicola NicPhaidin) outlined what is available for the entrepreneur from the state sector, both in starting up your company and how to exploit that niche through technology partners once a product is defined. Christi Mitchell spoke with regard to the due diligence that is essential in forming lasting relationships in business ventures, and Michael Donnelly CEO of a VC fund- Growcorp- reinforced that by offering an insight as to what the VC community are looking for prior to investing. We were then offered the benefit of two practical experiences in licensing; from two completely different technology sectors. Gerry Mortimer, who despite or perhaps because of his aversion to lawyers, was involved in the development of a successful coach company and Ciaran O'Beirne, Technology Transfer Officer within NovaUCD, described how academics can exploit their research through licensing- in this case study the licensing of technology relating to BSE testing.

The meeting concluded with a Q&A session followed by a drinks reception. Again, thanks to UCD for the use of the NovaUCD facilities, the speakers for their time and expertise and to LES Irish Section committee member, Yvonne McNamara, for organising the event. The next item on the Irish Section calendar will be the AGM- at a date to be finalised in June.

Barry Moore, Chair LES Irish Section

DA freestanding right to privacy? Douglas and others v Hello! Ltd and others.

The claim for breach of confidence and infringement of privacy brought by Michael Douglas, Catherine Zeta-Jones and OK! against Hello! has been heralded in some quarters as introducing a freestanding right to privacy.

Michael Douglas and Catherine Zeta-Jones were married in New York. The couple sold exclusive photographic rights of the wedding to the publisher of OK! magazine. They claimed they did this with a view to reducing the media frenzy for photographs of the wedding. However, one intruder, a photographer, managed to elude the extensive security arrangements and surreptitiously take photographs which were subsequently bought for publication by OK!'s rival magazine Hello! Hello! published the unauthorised photographs on the same day as OK! published the official wedding photographs.

The claimants brought proceedings against the defendants alleging, amongst other things, breach of confidence and breach of privacy. The matter came to trial before Lindsay J who gave judgement on 11 April 2003.

The Judge held that breach of confidence was an established cause of action but its scope needed to be re-evaluated in the light of obligations falling upon the court under s 6(1) of the Human Rights Act 1998 (HRA 1988). That could be achieved by regarding the often conflicting rights conferred respectively by Articles 8 and 10 of the European Convention on Human Rights as absorbed into the action for breach of confidence. A balance between the conflicting interests had to be struck.

The Judge looked to the case of Coco v Clarke (1969) to illustrate the necessary components of a successful claim in confidence. He then considered the Human Rights Act 1998 and how the right to confidence needs to be balanced against the right to freedom of expression (Article 10 of the European Convention). He held that Article 10 does not mean a celebrity is not entitled to a private life. Freedom of expression on the media's part, as a counter-force to privacy was not invariably the ace of trumps but it was a powerful card to which the court had to pay appropriate respect. The Judge held that the wedding was a private occasion and not a celebrity event. The Douglases honestly believed that by entering into an exclusive contract with OK! they were preserving the privacy of the event.

Section 12 HRA 1988 states that where the Court is considering whether to grant any relief which might affect the exercise of the right to freedom or expression, and where the proceedings relate to material which is claimed or appears to be journalistic it must have particular regard to any relevant privacy code. The relevant code in this instance was that of the Press Complaints Commission Code of Practice and, in particular, clauses 3 and 11 relating to the taking of surreptitious photography on private occasions. The Judge held that in the absence of any public interest the court was bound to pay particular regard to the code and a newspaper which flouted the code might have its claim to freedom of expression trumped by Article 10. In this case the Hello! defendants were in breach of their own industry's code. There was intrusion into individuals' private lives without consent and the intrusion was not justified - there being no public interest in the publication of the photographs. He concluded that the Hello! defendants' rights to freedom of expression had been trumped by the rights of all the claimants under the law of confidence.

The Judge also considered that information about some people's lives had become a highly lucrative commodity for certain sections of the media and protection was to be given against interference by the media. In considering this, the Judge paid particular attention to the evidence of Miss Zeta-Jones who emphasised that she and her husband were in the business of exploiting their "name and likeness" and how their image is portrayed in public is very important to their careers. The Judge held that their wedding was a valuable commodity, the value of which depended upon its content at first being kept secret then of being made public in ways controlled by the Douglases.

The Judge found that Hello! was not acting in good faith in publishing the unauthorised photographs. Hello! knew there was an exclusive contract with OK! and they knew of the measures the Douglases had gone to keep the wedding private. The Judge held that the surrounding facts were such that a duty of confidence should be inferred. They were protected here by the law of confidence. However, he declined to hold that there was a free-standing law of privacy under which the Douglases were entitled to relief.

In relation to the Data Protection Act 1998 the Judge held that Hello! was a data controller. The unauthorised pictures represented personal data and publication of them in England was to be treated as part of the operations covered by the requirement of the Act. The processing and, in particular, the publication was not fair and in breach of the Act. Whilst the Judge held Hello! did have a legitimate interest, the processing was unwarranted because it prejudiced the rights and freedoms or legitimate interests of the Douglases.

This case highlights a trend by the courts to protect celebrities from press intrusion by using the law of confidence. The Judge specifically held that if there is an intrusion in a situation in which a person can reasonably expect their privacy to be respected then that intrusion will be capable of giving rise to liability in an action for breach of confidence unless the intrusion can be justified.

Once again, in deciding whether an intrusion of as person privacy is justified the Court had to look to whether there was a breach of the PCC Code. Furthermore, the Court had to consider whether the publication was in the public interest within the meaning of the phrase of general law or within the terms of the code.

In addition, the case shows that although there is no "image right" under English law, it is possible to control the use of a celebrity's image by entering into an exclusive agreement and relying on the law of confidence.

Dr Hayley French, Taylor Wessing

New Members

Council has been please to welcome the following new members to the Society:

• Dr Zina Affas, Life Science Industry Specialist, Atlas Venture;
• Mrs B. Mary Allmark, Business IP Developer, Qinetiq, BTG International;
• Mr Richard Buttrick, patent Licensing Manager, Philips Intellectual Property & Standards;
• Mr Hamish Corner, Solicitor, Mills & Reeve;
• Dr Sheetal Handa, IP & Agreements Advisor, BP International;
• Dr Ceris Humphreys, Partner, Abel & Imray;
• Mr Gordon MacMillan, Operations Director, Science Ventures Ltd;
• Mrs Pauline McBride, Associate, Brechin Tindal Oatts;
• Mr Stephen McMellon, Head of Media Rights, WJB Chiltern;
• Mr Mahendra Pankhania, Technology Sourcing Manager, Boots Healthcare International;
• Dr Stuart Robinson, VP Business Development (Europe)SkyePharma;
• Dr Kevin Scott, Patent Licensing Officer, Philips Intellectual Property & Standards;
• Mrs Lisa Sinclair, Associate, Brechin Tindal Oatts;
• Mrs Elaine Spiers, IP Portfolio Manager, Qinetiq;
• Dr Andrew Teuten, Managing Director, Sagittarius IPC Ltd.;
• Mr Elwood Vogt, Life Sciences Director, Sciences Ventures Ltd;

Top

NEWS Exchange is circulated as a service to members of the Society. Editorial contributions and advertising/insert enquiries are welcome and should be addressed in the first instance to the editor.

Editor: The Kudos Partnership Ltd,
Emerson Court, Alderley Road, Wilmslow, Cheshire SK9 1NX
email:s.ireland@kudos-uk.com

(Return to News page)