Publications
My professional and other publications will be added here.
Journal of Intellectual Property Law and Practice (JIPLP)
I have published a number of Current Intelligence and other articles – and even a Guest Editorial – in the Journal of Intellectual Property Law and Practice, published by OUP. I was also privileged to be on the original editorial board of the journal, which means that I have a lovely collection at home of the first few years of this journal. I rejoined the editorial board in 2013. Incidentally, JIPLP has its own blog, featuring editorials and some of the articles.
A Principle of General Application – read about it here.
Lions in the path or paper tigers? – read about it here.
(Another article about the same case was published by the Controlled Release Society – read about it here.)
Samsung v Apple – How does the judge become an “Informed User”? – read about it here
(Another article about the same case was published in World Trademark Review Daily – read about it here.)
When must a patent be plausible? – read about it here.
Wounded patent survives – read about it here.
How is the scope of protection of a registered Community design to be determined?
and
Publicity orders in intellectual property cases—When are they granted and how must a party comply?
– read about both articles (relating to the Apple v Samsung appeal) here.
Routine rejection: Is the EPO’s approach to antibody and polymorph claims correct, balanced and justified? – read about it here. (This is a longer article co-authored with Stephen Ingham.)
A brighter future for consumable suppliers? (co-authored with Paula Flutter) – read about it here.
Insufficiency finally upheld as ground for invalidity of antibody claim – read about it here.
Should non-specialist judges decide patent law cases? – read about it here. (This is a lengthy and somewhat polemical article).
Can springboard injunctions be awarded in respect of non-infringing acts? – read about it here.
Two gaps instead of one: the CJEU’s effect on Supplementary Protection Certificate jurisprudence – read it here. (Guest editorial)
Chemistry World
My first publication after I joined EIP was in Chemistry World, the magazine published by the Royal Society of Chemistry, and concerned the Unitary Patent. You can read about that article here.
Compulsory licences: necessity or threat? – read about it here.
We need to talk about Nagoya – read it here.
The IPKat
In the first half of 2012, I was a guest blogger on the IPKat website. Below are links to all of the posts, in reverse chronological order. I am am very grateful to Jeremy and all past and present members of the IPKat team for their kindness, support and encouragement. Without that, I probably would not have been moved to start this blog. Jeremy in particular was generous enough to teach a complete novice how to navigate blogging software.
Putting the fizz into fuzz and debunking Derrida — or how to be nice to patent claims
Breaking news: glatiramer acetate patent valid and infringed
A scoop from a spook? No, it’s victory for Samsung over Apple
Farewell, and a final review of EPO Board of Appeal Decisions
Japanese practice changes in relation to “sub-combination inventions”
Observing Samsung v Apple at the High Court
Wounded patent survives – Smith & Nephew v Convatec Technologies
Does patenting alienate customers? 23andme gets first US patent.
Reflections on Apple v Samsung
Wasting the time of the Enlarged Board of Appeal? G1/12
How many EBA Referrals does it take to patent (or not) a tomato?
In A Galaxy Far Far Away – More on Samsung v Apple
Nokia v IPCom – still not over…
IPAN Celebrates World IP Day 2012 at the House of Commons
Heartache in Alicante – Find out what OHIM refuses
Sanofi Aventis Taxotere Patents invalidated by CAFC
CJEU declares Poland’s law on cheap drugs contrary to EU Law
VEGF Trap Eye Trapped by Genentech Patent – Regeneron & Bayer unsuccessful
Teva Tigers v Astrazeneca Lions – obvious to sustain…?
The Guidelines to go with the Handbook – EPO Publishes new Guidelines for Examination
What limitations does TRIPS put on compulsory licensing?
The First, but of how many? India grants compulsory licence for Bayer drug Sorafenib
What have the EPO Boards of Appeal been up to? Round-up of recent cases
Patent Translate – EPO and Google launch new service
Rare Diseases – are there sufficient incentives to develop treatments?
What lovely melons – and the EPO wants you to know about them
More hacked off? Mulcaire given leave to appeal
Public interest beats patentee’s right to injunction
No self incrimination privilege for phone hacking
What is obvious – the route or the destination?
Catalogue of Interest: Spot the Difference
What’s the use of contraception? Don’t ask the EPO …
My joining is announced.
At the beginning of 2013 I rejoined the IPKat as a permanent member.
Wounded patent endures further – Smith & Nephew v Convatec Technologies
Innocents Abroad – Negative Equity for smoothie makers at OHIM
Co-authored with Simon Stanes
Regeneron/Bayer v Genentech in Court of Appeal – first instance decision affirmed
Sir Robin Jacob acts as expert witness for Samsung against Ericsson in the USA
Yet More on the Unitary Patent – is there too much prior art?
Novartis fails the priority test – more patents fall
Everything you ever wanted to know about Community Design law but were afraid to ask
The Cheshire Cat design – use of dotted lines in representations
Double Jeopardy for H Lundbeck – Escitalopram SPC back in Court and no speedy Resolution
Poisonous priority – how many ways can a patent be toxic?
The IPKat in despair – What is to be done when senior courts don’t understand novelty?
The IPKat gets Spicy – more detail on the Indian Supreme Court Glivec Decision
Doctrine of Equivalents and Prosecution History Estoppel in Sweden, Who Knew?
Guest post by Peter Kenamets
US Patent Litigation Study – Facts and Analysis at your paws…
Feline Felicity – Consultation on Draft Rules of Procedure for the Unified Patent Court
Alzheimer’s Disease Antibody Patent Insufficient – Lilly v JAI
More on US patent litigation statistics – correlation with granted patents
Guest post from Emeritus Kat Mark Schweizer
OHIM finally moves on invalidity of Apple designs for tablet computers
Co-authored with Gemma Wooden
No Searches on Excluded Matter- the UKIPO Dig Their Claws In
Apple’s Cool design registration not invalid according to OHIM
Stay or Split? – the Legal Board decides
To stay or not to stay, that is the question
Yet more on Unified Patent Court plans – Delight and Disappointment
New Patents Act in New Zealand
Where can I buy a technical effect? EPO BoA Decision T1670/07
Co-authored with Sam Town and Paul Beynon
UPC Rules of Procedure Consultation Event London
New generic Top Level Domains – who registers them and why?
Guest post from Emeritus Kat Mark Schweizer
Should I register my trade marks with the Trademark Clearinghouse?
Guest post from Emeritus Kat Mark Schweizer
I think (I’m a company), therefore I am? EPO Enlarged Board seeks comments on resuscitated companies
Co-authored with Paul Beynon
The UPC and what it means for your practice – AIPPI UK Event Report
Guest post by Christina Flanagan of Freshfields
How are your Threats? Report from Law Commission on the Consultation
Broccoli to go with your Tomatoes – EBA invites statements in referral G2/13
More on the Unitary Patent – Two Misconceptions and One Uncertainty
Who wants to be a UPC judge? Shout now if you do!
Who can be a UPC judge? Thoughts from a UK Patent Attorney perspective
Trade Mark or Design? Pottery case from the Korean Supreme Court
Guest post by Mr K.J. Park of BOOK CHON
First Decision by an Enterprise Judge to hit BAILII – IPEC in Action!
BREAKING NEWS – EPO set to restore sanity to divisional applications
The UPC – Opt-out dangers: lessons from limitation; dual jurisdiction complexities
Nokia’s rights not exhausted – and neither is the IPKat
Debate – Should the UK have criminal penalties for design infringement?
More on Clause 13 – should copying of registered and/or unregistered designs be criminal?
The Court of Appeal on Recusal – just in time to be too late
A closer look at whether to Stay, and whether to heed the Supreme Court
Unified Patents Court – One Hurdle Cleared; Many more to go…
EU Implementation of the Nagoya Protocol – Heading to Catastrophe or Catastrophe averted?
Readers’ comments on the Nagoya Protocol
Nagoya Protocol III – the Traditional Knowledge Paradigm
How to amend before the EPO
Guest post by Derk Visser
Messaging patent still invalid – Court of Appeal upholds Arnold J
The wounded patent survived, was only just infringed, but no injunction
Birss issues hosepipe ban (despite current flooding) – Blue Gentian prevails over Tristar
Update on Regulation Implementing Nagoya – result of Trilogue
IPReg Proposal to Reform UK Patent Attorney Qualification Procedure – CIPA President disagrees
A hideously deformed chimera that not even its mother could love – Nagoya V
Amendments to the IP Bill at second reading just published
Rights of UK patent attorneys to Practise before the Unified Patent Court – CIPA/IPO Open Meeting
Katsandra Speaks Out – Nagoya Part VII
Grumpiness when rhetoric does not match reality
EPO Fleas to Increase April 2014 – Kats are concerned
Co-authored with Paul Beynon
The problem of mixed European patents at the UPC – the Italian and late ratification conundrums
Goldilocks 2: Return to the bear pit – is the European Patent Office gearing up for the Unitary patent?
Co-authored with Paul Beynon
Accounting meanness from the EPO – no safety net for deposit accounts
With thanks to Peter Arrowsmith
GUEST POST The rhetoric over the Nagoya Protocol – The Indian experience
Guest post by Dr. Malathi Lakshmikumaran (Ph.D., FNASc, Patent Agent) & Prashant Reddy (B.A. LLB (Hons.), LLM, Advocate) both from the law firm Lakshmikumaran & Sridharan
Wishful Thinking by Wishart MP as IP Bill passes third reading – misinformed MPs and BBC
Samsung appeal against Apple establishes new jurisprudence following EPC 2000
Guest post by Gary Moss
BREAKING NEWS – Consultation on UK Implementation of Nagoya Protocol launched by DEFRA
Fresh from the UK IPO – No SPCs for medical devices, says Hearing Officer
Educating the patent attorney profession – CEIPI course seeks trainees
Another two bite the dust – Hospira v Genentech
UPDATE – Declaration on Patent Protection by MPI Now Online
Phil & Ted’s Most Excellent Buggy Company Limited prevails in patent dispute on baby buggies
Co-authored with Tim Belcher
Patentee prevented from surrender to hearing officer
Co-authored with Fergus Tyrrell
An elegant way to have different defences to patent infringement under the UPC? UK IPO may have found one…
Co-authored with Tim Belcher
Suspicion of Partiality in Enlarged Board of Appeal found justified
Actavis v Lilly – An Arnoldian Treasure Chest
Another one bites the dust – Rovi v Virgin
Guest post by Matthew Jones
When structure is wrong, patents may fall?
Dosage regime patent revoked in a Salesian judgment
US Supreme Court “Definitely” At It Again
CIPA announces how newly qualified kittens can get Basic Litigation Qualifications
Rights of representation before the Unified Patent Court – Get your response in!
Is it Safe? Judgment from the CJEU in Bayer CropScience SPC
Curiouser and Curiouser? More details on Alice v CLS Bank decision of SCOTUS
Guest post by Nick Transier
Guest Blog Posts for SpicyIP
The IPKat’s “despair” with the Supreme Court’s judgement in the Novartis-Glivec case
Chemistry publications list
Of course originally I was a chemist. Here is the publications list from my research days (Oxford Part II and DPhil; post-doc in Tokyo Institute of Technology)
J.M. Fox, C.M. Morris, G.D. Smyth and G.H. Whitham, Radical-‐induced 1,3-‐rearrangements of allylic sulfones bearing an alkylthio or arylthio substituent at the α-‐position, J. Chem. Soc., Perkin Trans. 1, 1994, 731.
Stephen G. Davies and G. Darren Smyth, Asymmetric Synthesis of (R)-‐Hexane-‐1,5-‐diol and (R)-‐ Hex-‐3-‐ene-‐1,5-‐diol via a Tandem Asymmetric Conjugate Addition / Stereospecific Meisenheimer Rearrangement Protocol, Tetrahedron: Asymmetry, 1996, 7, 1001.
Stephen G. Davies and G. Darren Smyth, Asymmetric Synthesis of (R)-‐Sulcatol, Tetrahedron: Asymmetry, 1996, 7, 1005.
Stephen G. Davies and G. Darren Smyth, Asymmetric Synthesis of Methyl α-‐L-‐Daunosaminide Hydrochloride, Tetrahedron: Asymmetry, 1996, 7, 1273.
Stephen G. Davies and G. Darren Smyth, Asymmetric synthesis of (R)-‐hexane-‐1,5-‐diol, (R)-‐hex-‐3-‐ ene-‐1,5-‐diol and (R)-‐6-‐methylhept-‐5-‐en-‐2-‐ol (sulcatol) employing a tandem asymmetric addition and stereospecific Meisenheimer rearrangement protocol, J. Chem. Soc., Perkin Trans. 1, 1996, 2467.
Synthesis of derivatives of L-‐daunosamine and its C-‐3 epimer employing as the key step the asymmetric conjugate addition of a homochiral lithium amide to tert-‐butyl (E,E)-‐hexa-‐2,4-‐ dienoate, Stephen G. Davies, G. Darren Smyth and Ann M. Chippindale, J. Chem. Soc., Perkin Trans. 1, 1999, 3089.
The First Example of (2,5) Ene Cyclisation: Solid Acid-‐Catalysed Oxonium-‐Ene Reaction, Hirofumi Ohmura, Gyles Darren Smyth, and Koichi Mikami, J. Org. Chem., 1999, 64, 6056.
Asymmetric synthesis of homochiral Baylis-‐Hillman products employing (R)-‐N-‐methyl-‐N-α- methylbenzylamide, Stephen G. Davies, Christian A. P. Smethurst, Andrew D. Smith and G. Darren Smyth, Tetrahedron: Asymmetry, 2000, 11, 2437.
Intramolecular Oxonium-‐Ene-‐Type Reaction of a Bis(Alkyne-‐Dicobalt Hexacarbonyl) Complex, Gyles Darren Smyth, Hirofumi Ohmura, and Koichi Mikami, Synlett, 2001, 509.
Older intellectual property publications
Here are a few older articles from my historic publications list:
Managing Patent Lifecycles, Darren Smyth, Next Generation Pharmaceuticals, July 2005.
EPO Boards of Appeal further restrict the valid filing of grandchild divisional applications, Darren Smyth, Journal of Intellectual Property Law & Practice, November 2005; 1: 11 -‐ 13.
Community registered design invalidated by prior registered trade mark, Darren Smyth, Journal of Intellectual Property Law & Practice, July 2006; 1: 509 -‐ 510.
The Protection Conferred by Product-by-Process Claims; Grant, Gregor; Smyth, Darren; European Intellectual Property Review (2010), volume 32, issue 12, p. 635-‐643.
