UK Government lays pre-ratification UPC legislation before Parliament

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 The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.

 

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Rachel Montagnon
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Filed under EU, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, UK, Uncategorized

BitTorrents join unlawful streaming and unlawful downloads as infringements of copyright

Following on from its recent decision in Filmspeler, the CJEU has handed down its judgment in Stichting Brein v Ziggo, C-610/15 (The Pirate Bay), concluding that operators of the online sharing platforms are making a 'communication to the public' within the meaning of the InfoSoc Directive, and hence an actionable infringement.

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Filed under Consumer products, Copyright, EU, Media, Technology, media & telecommunications, UK

Patent and Pharma Update – June 2017

Our regular Patent and Pharma Update aims to keep you informed of recent developments in United Kingdom and European law relating to patents and the pharmaceutical industry.

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Filed under Brexit, EU, Licensing, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, UK

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)

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Filed under EU, Patents, Pharma, The Unified Patent Court and the Unitary Patent, UK

Court of Appeal foils Kit Kat on acquired distinctiveness

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 [2017] 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 [2017] EWCA Civ 358.

Read more here.

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Filed under Consumer products, Trade marks & Passing-off, UK

Patents Court finds SPC based on a Markush formula valid in Sandoz v Searle

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.

Business Impact

  • 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).

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More flexibility to threaten IP proceedings in the UK under new Unjustified Threats legislation

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.

Summary and Business Impact

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Filed under Advertising, Agribio, Agribusiness, Consumer products, Copyright, Databases, Designs, Energy, Media, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, Trade marks & Passing-off, Trade secrets, UK

Unlawful streaming is as infringing as unlawful downloads – Further guidance from the CJEU on “communication to the public”

The CJEU has issued its ruling in Filmspeler that the sale of a multimedia player specifically configured to link to websites on which protected works are made available to internet users, without the consent of the copyright holders, is a ‘communication to the public’ within the meaning of the InfoSoc Directive, and hence an actionable infringement.

This decision follows a number of CJEU decisions in which the meaning of 'communication to the public' has been discussed and broadens the potential group of defendants who might now be regarded a primarily liable for unauthorised acts of 'communication to the public' to those who sell piracy-enabled set-top boxes, such as those supplied with software like the neutral Kodi streaming platform, to which add-ons have been installed, designed to receive protected works (such as films, TV shows or live sports) that are made available to internet users without the consent of the copyright holders, with minimal input from the end user.

1. Business Impact

2. The Decision

3. Brexit

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Filed under Copyright, EU, Media, Technology, media & telecommunications, UK

First High Court judgment on FRAND royalties

UK Court takes tough stance on party unwilling to take Worldwide licence on FRAND terms.

The UK High Court has handed down its first decision determining FRAND royalties, and has provided clear guidance as to the rights and obligations of parties to licensing negotiations and litigation relating to standard essential patents (SEPs).

In the context of a dispute between patent owner, Unwired Planet, and prospective licensee, Huawei, relating to patents declared essential for various telecommunication standards, the Court has emphasised that FRAND characterises both the terms of a licence and a process by which a licence is negotiated. The Court will be prepared to grant an injunction against a party, such as Huawei, who fails to satisfy the Court of its willingness to take a license on FRAND terms.

The Court also answered many longstanding questions relating to the principles by which FRAND royalty rates are to be calculated. Among other things, the Court has favoured benchmarking using the proportional value of the patentee's portfolio, taking the view that royalty rates should not vary depending on the size of the licensee. It has also rejected the argument that the non-discriminatory requirement of the FRAND undertaking forced the licensor to offer the same or a similar royalty rate or terms as that agreed in any earlier licence with a similar licensee (so-called “hard-edged non-discrimination”).

Some aspects of the decision will no doubt lead to further questions but, overall, the decision demonstrates a willingness of the Court to grapple with, and take a clear position on, complex questions relating to SEPs and FRAND licensing.

The full judgment can be found here

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The Unified Patent Court and Unitary Patent – Introduction

Consistent progress has been made towards the establishment of a unitary patent right (UP) across most countries in the EU. 26 of the 28 European Union Member States (MSs) have participated in the enhanced cooperation needed to establish this new right, which will be enforceable via a new court system – the Unified Patent Court (UPC) – which now looks likely to be established in December 2017.

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Filed under Agribio, Agribusiness, Consumer products, EU, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, UK