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

UPC Preparatory Committee releases a “final” update to the 18th draft of the UPC Rules of Procedure

The UPC preparatory committee has released an updated version of the 18th draft of thee UPC Rules of Procedure (with amendments being dated 15 March 2017), which can be accessed here. Subject to formal adoption, we understand that this update may represent the final version of the UPC Rules of Procedure.

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3D Printing and IP – Herbert Smith Freehills publishes Practice Note on 3D printing published by Practical Law IP&IT

Our Practice Note on 3D printing published by Practical Law here: https://uk.practicallaw.thomsonreuters.com/Document/I3466c5d71a1711e798dc8b09b4f043e0/View/FullText.html?transitionType=SearchItem&contextData=(sc.Search)&firstPage=true&bhcp=1 provides an overview of the 3D printing industry and highlights the challenges for intellectual property (IP) rights-holders when seeking to enforce their rights if they are infringed by 3D printing processes and resulting products. The note also considers options for rights-holders faced with unauthorised online sharing of computer-aided design (CAD) files. Finally, there is a short overview of product liability issues.
 
As 3D printing technology becomes more advanced, the popularity of home production as an alternative to home delivery is likely to rise, making it important for both businesses and consumers to understand the legal implications of the technology. It is still too early to say whether sectoral legislation for 3D-printed products will be needed but it is clear that businesses will need to anticipate developments and act proactively, rather than waiting for the law to catch up to a fast-moving area.
 

Authors

Andrew Moir
Andrew Moir
Partner
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+44 20 7466 2773
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
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+44 20 7466 2217
Adam Ford
Adam Ford
Associate
Email
+44 20 7466 2065

 

 

 

 

 

 

 

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Filed under 3D printing, Consumer products, Copyright, Counterfeiting, Designs, Licensing, Patents, Technology, media & telecommunications, Trade marks & Passing-off, Trade secrets, UK, Uncategorized

High Court orders ISPs to block their customers from receiving unauthorised streaming of Premier League football matches

Following on from a number of decisions in which internet service providers (ISPs) were ordered to block their customers from accessing websites whose content infringed the rights of intellectual property owners, the High Court has granted an order sought by the Premier League that requires 6 major ISPs to block access by their customers to servers that stream live unauthorised footage of Premier League matches (The Football Association Premier League Limited V British Telecommunications and Ors.  [2017] EWHC 480 (Ch)).

Business Impact

  • The decision is the latest in a series of cases which demonstrate that the Court recognises that advances in technology mean that there are now additional methods in which intellectual property rights may be infringed and it is willing to be creative and to grant orders to protect those rights.
  • The decision will be welcomed by owners and licensees of broadcasting rights in live sporting and other events and is likely to set a precedent for forms of order against providers of unauthorised streaming services in the future.

The decision is of interest for the following reasons:

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UPC Prep Committee signals readiness at final meeting

The UPC Preparatory Committee held its final meeting on 15 March at which it agreed a collection of legal, HR and financial documents and confirmed that the Provisional Application Phase could commence once the final Signatory States had acceded to the Protocol on Provisional Application. The Committee was confident this would be met in time to allow the Provisional Application Phase to commence at the end of May 2017 in order to allow for all the practical preparations to be made for a 1 December 2017 start for the UPC.

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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

Practice note for Practical Law IP&IT on Protecting Brands via Intermediaries

Our Practice Note commissioned by Practical Law IP&IT is a guide to the options available to brand owners when seeking to enforce their rights against intermediaries, such as ISPs, including website-blocking injunctions, take-down notices and domain-name seizures.

Read the note here: https://uk.practicallaw.thomsonreuters.com/Document/Ie409c9e3059d11e798dc8b09b4f043e0/View/FullText.html?transitionType=SearchItem&contextData=(sc.Search)

 

Authors

Joel Smith
Joel Smith
Head of IP - UK
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+44 20 7466 2331
Rosie Patterson
Rosie Patterson
Senior Associate
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+44 20 7466 2448

 

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

Helping FMCG businesses plan for a post-Brexit future

Businesses with interwoven supply chains across the EU and beyond have already felt the effects of a weaker pound, with increasing costs of sourcing raw materials and packaging leaving some organisations no choice but to inflate consumer prices. Combine this with the uncertainty of tariffs, access to skilled workers, and regulatory change businesses in the FMCG sector need to start preparing now to mitigate risks and seize opportunities in the post-Brexit landscape.

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

Law catches up with free TV streaming sites

ITV & Others v TVCatchup: CJEU Rules S.73 CDPA defence not applicable to online streaming of live broadcasts.

The CJEU has issued its ruling on the latest question referred to it in the long-running dispute between ITV (and others) and TVCatchup, as to whether Article 9 of the InfoSoc Directive permits the UK to retain the defence contained in section 73 of the Copyright, Designs and Patents Act 1988 (which permits retransmission of a broadcast by cable to users in the area to which the original broadcast was made). As such, TVCatchup cannot legally provide live streaming of free-to-air broadcasts via the internet in the UK.

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Brexit: Intellectual Property

Whatever future relationship the UK has with the rest of the EU, the effect of the Great Repeal Bill, once enacted, will mean that any existing intellectual property law having effect in the UK will continue to apply as it did post-Brexit, although it will be for the UK Government to adapt or amend it subsequently. That means that intellectual property law will continue to contain all of the concepts implemented from EU Directives or applicable from EU Regulations. However, EU-wide rights defined as applying “in the EU” will no longer apply in the UK and the Government will need to  consider providing replacement rights, provision for which would need to be in place prior to Brexit.

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Filed under Consumer products, Designs, EU, Licensing, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, Trade marks & Passing-off, Trade secrets, Transactions, UK