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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

Apple v Samsung – The Trial 

 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

Battle of the Tablets hits the UK – Samsung seeks declaration of non-infringement of Apple Registered Community Design 

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

The Cost of Knowledge

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

“There is no material difference between Joy and Glee” – His Honour Judge Birss decides another design case

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

Harmonisation by the back door – what will the Unified Patent Court Agreement do to the law of patent infringement?

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

Quibbling over minutiae?  Or has something been overlooked? Concerns over UK implementation of the UPC Agreement and Unitary Patent

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

When will the Unified Patent Court and Unitary Patent System begin? Some sense at last from Preparatory Committee

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

Tuesday Titivation

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

 

 

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.