The Supreme Court has redefined the UK approach to determining patent infringement. In doing so, it has made the approach more permissive, seeking to align the UK approach with that taken in other European countries. Continue reading
Herbert Smith Freehills has been named IP Team of the Year at The Lawyer Awards 2017, for its work defending one of the largest-ever patent cases to be heard in the UK High Court.
Earlier this month, Herbert Smith Freehills was also awarded Transatlantic IP Team of the Year at the American Lawyer Awards 2017, for the team's successful work on Gilead (and was also named Litigation Team of the Year for work on the disputes surrounding the collapse of the Nortel Networks group).
The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC (the Protocol) and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff under the International Organisations Act 1968 (which allows the grant of certain immunities and privileges to the international organisation and its officers and employees). This Order needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council.
As we have reported on our Intellectual Property Notes blog and on our UPC Hub here, the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also the recent challenge to German ratification mounted in the German Constitutional Court. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.
UPC commencement postponed – Preparatory Committee announces that 1 December 2017 start date cannot be maintained
Latest UPC developments:
- UPC Preparatory Committee announces that 1 December 2017 start date for UPC has been postponed (7 June 2017)
- Private challenge to the UPC system made before German Constitutional Court delays progress of Gernan UPCA ratification
- UPC Protocol on Provisional Application requires further ratification before practical arrangements can begin to be made for the UPC
- Meeting of EU Competitiveness Council acknowledges delays in ratification (May)
- Final draft of UPC Rules approved by UPC Preparatory Committee (April)
In the latest instalment of a ten year battle to register the shape of the Kit Kat bar as a UK trade mark, the Court of Appeal has dismissed Nestlé's appeal in Société des Produits Nestlé v Cadbury UK Ltd  EWCA Civ 358. The Court of Appeal upheld the High Court's decision in finding that Nestlé is not permitted to register a UK mark for the shape of the Kit Kat as Nestlé has failed to demonstrate acquired distinctiveness in the shape. Société des Produits Nestlé v Cadbury UK Ltd  EWCA Civ 358.
The Patents Court has held that Searle's supplementary protection certificate ("SPC") based on a claim setting out a Markush formula is valid. Arnold J considered the interpretation of Article 3(a) of the SPC Regulation and its application to Markush formulae and concluded that Searle's SPC for the anti-HIV medicine, Prezista®, complied with Article 3(a). This was despite the fact that the claim was very broad, covering a huge number of compounds. In light of the CJEU's judgment in Lilly, Arnold J held that where a patent claim contained a Markush formula that covered a product, this was sufficient for the claim to specify that product for the purpose of Article 3(a) of the SPC Regulation. The judge also indicated that he considered the claimants' arguments better suited to an attack on the basic patent rather than the SPC, but because the claimants had not put the validity of the patent in issue, there was a presumption that the patent was valid.
- This decision is the latest in a line of recent SPC decisions from the Patents Court in which the interpretation of Article 3(a) of the SPC Regulation has been discussed.
- The decision is of interest in clarifying that in the UK an SPC can be validly based on a patent that claims a Markush formula covering a large number of compounds, even though the patent does not individually disclose the relevant compound, or provide any teaching pointing to it.
- Notwithstanding a pending reference currently before the CJEU regarding the interpretation of Article 3(a) (arising from his earlier decision in the case of Teva v Gilead), Arnold J felt the law was sufficiently clear in this case to be able to uphold the SPC on the basis that it complied with Article 3(a).
Threatening proceedings for intellectual property right infringement can sometimes backfire. In relation to patents, trade marks and designs, there is a right to bring an action against the threatener by any person aggrieved by the threat, who may not necessarily be the person directly threatened with proceedings. Not only does this expose the IP rights-holder to the risk of damages, it also turns the potential claimant into a defendant, with the resulting reversal of burden of proof, requiring it to prove the validity of the rights which it originally asserted and their infringement. This in turn creates a tension with the requirements of the Civil Procedure Rules to communicate a litigant's case early before issuing proceedings.
The new Intellectual Property (Unjustified Threats) Act 2017, which has been granted Royal assent but has yet to come into force, confirms what can be a threat whilst providing for "permitted communications" or communications for "permitted purposes" which cannot be threats. It harmonises the position across patent, trade mark and design rights (including providing for unitary patents and European patents under the proposed Unified Patent Court jurisdiction) and allows pursuit of information on primary infringers from secondary parties. It looks likely to come into force in October 2017.
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