TRADE SECRETS – SHORT VIDEO ON THE IMPACT OF THE NEW UK REGULATIONS IN IP AND EMPLOYMENT CONTEXTS

Here’s a short video made for Practical Law, in which Herbert Smith Freehills IP and Employment Professional Support Consultants, Rachel Montagnon and Anna Henderson, discuss the impact of the UK’s recent Trade Secrets (Enforcement etc) Regulations 2018 and practical approaches to protecting confidential information and trade secrets.

Key issues discussed are:

  • The new, common definition of a trade secret
  • What constitutes lawful and unlawful acquisition, use and disclosure of a trade secret
  • Practical steps businesses can take to protect confidential information
  • Considerations in relation to whistleblowing
  • Guidance around reverse engineering
  • Bringing a claim under the regulations
  • Remedies and provision for damages.
These new UK trade secrets regulations have implemented the Trade Secrets Directive ((EU) 2016/943) and came into force on 9 June 2018.  Also on our IP Notes blog, see our Milan office’s post on the Italian implementation of this Directive and our previous posting on implementation of the Directive in the UK.

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EU Digital Copyright Directive – European Parliament adopts amended text

In the second reading of the Digital Copyright Directive by the European Parliament on 12 September 2018, the controversial Articles 11 and 13 were adopted but with amendments.

These articles provide for:

  • a specific right of digital reproduction for the press in relation to their publications under Article 11, which includes the right to prevent others from reproducing their material (amendments shown here in italics):  “Member States shall provide publishers of press publications with the rights provided for in Article 2 and Article 3(2) of Directive 2001/29/EC so that they may obtain fair and proportionate remuneration for the digital use of their press publications by information society service providers“.  These rights would not be retrospective and would expire 5 years from publication (calculated from the first day of January of the year following the date of publication).  Personal, non-commercial use is not to be caught by this provision and mere hyperlinking is to be allowed). However,”Member States shall ensure that authors receive an appropriate share of the additional revenues press publishers receive for the use of a press publication by information society service providers“.
  • protection of the interests of rights-holders in protected material which is communicated to the public via online content sharing services under Article 13: The providers of these services store and give access to large amounts of works and other subject-matter uploaded by their users and the amended text requires them to ensure its integrity and security and agree licence terms for such use or to prevent works being made available if requested by the rights-holders. Complaints procedures must also be provided for, including “human review”.

However, since the adopted text is not the same at the European Parliament’s first reading, the text now needs to go through the informal trialogue negotiations procedure. This involves discussions of the text between the European Parliament, Council and Commission in order to establish an agreed text, which may take some time The negotiation of these provisions will be followed with great interest by the major online platforms, content industry and publishers.

The adopted text can be viewed here.

Author

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
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+44 20 7466 2217

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Filed under Copyright (and related rights), Designs and Databases, EU, France, Italy, Media and Advertising, UK

Brexit “No Deal” Technical Notices – lots for the life sciences sector to think about

The UK Government issued the first batch of its Brexit “No Deal” Technical Notices on 23 August 2018. These are designed to provide guidance to businesses and other interested parties on how to deal with the problems that a “no deal” scenario will throw up i.e. if the UK exits the EU at the end of March 2019 with no transitional arrangements in place.

There were 25 notices released in this initial batch (see Herbert Smith Freehills’ general commentary here). Over 50 further technical notices are expected to be published before the end of September.

Of the first notices issues, those that will be of particular interest to life sciences businesses include:

More detail on each of these is provided below. Continue reading

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Filed under EU, Patents and SPCs, Pharma, UK

Bulgaria ratifies the Protocol on Provisional Application of the UPC Agreement but delays still in store for the UPC

On 24 July Bulgaria ratified the Protocol on Provisional Application of the UPC Agreement (Protocol). Four more ratifications/declarations are needed, including Germany, for the Protocol to come into effect and allow the practical workings of the Unified Patent Court (UPC) to be established in preparation for the court coming into operation, which will happen once the UPC Agreement (UPCA) itself has been sufficiently ratified.  In both cases, ratification by Germany is a prerequisite. Recently reported comments from the Chairman of the UPC Preparatory Committee have revealed that there may be at least a 6-8 month delay once Germany is ready to ratify the UPCA, given how much needs to be done for the UPC to be ready to open its doors. It therefore looks increasingly unlikely that the UPC will take effect before Brexit unless Germany ratifies the Protocol in the next few months.

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Filed under EU, France, Italy, Patents and SPCs, Pharma, UK

HSF Legal Guide to Brexit – an update on provision for intellectual property rights

IP rights which are designated as applying across the EU (EU trade marks, Community plant variety rights, Community registered designs and Community unregistered designs) and those, qualification for which involves activity within the EU (such as database rights), are all at risk of termination in relation to the territory of the UK once the definition ‘EU’ no longer includes the UK. However, the Commission and the UK Government have agreed at negotiator level (as published on 19 March 2018 and subsequently, 19 June 2018) certain sections in the withdrawal agreement including provision of replacement rights for those registered rights thus affected and for the UK Government to provide replacement rights for UK registered rights.

The UK Government’s White Paper detailing its proposal for the future relationship between the UK and the EU (published on 12 July 2018) includes a limited number of proposals relating to intellectual property as follows:

• The UK intends to explore staying in the Unified Patent Court (UPC) and Unitary Patent system post-Brexit. The UK will work with the member states that have signed up to the UPC Agreement to ensure that the UPC Agreement can continue on a firm legal basis;

• Arrangements on future co-operation on intellectual property are recognised as important to provide confidence and security to rights holders operating in and between the UK and the EU;

• The UK will establish its own Geographical Indications (GIs) scheme to provide continuous protection for UK GIs in the UK and protection for new GIs applied for by UK and non-UK applicants

In our detailed briefing, we review the proposals for the treatment and protection of intellectual property rights in the UK at Brexit: see Intellectual Property and Brexit (part of the HSF Brexit Legal Guide 2018).

See also the Herbert Smith Freehills Brexit Hub and Brexit Blog.

Authors

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
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+44 20 7466 2217

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Filed under Consumer, Copyright (and related rights), Designs and Databases, EU, Patents and SPCs, Pharma, Trade marks, Passing off, Geographical indications, PDOs, UK

THE TASTE OF FOODS CANNOT BE PROTECTED BY COPYRIGHT, SAYS THE AG

On 25 July 2018, Advocate General Wathelet issued his opinion in an interesting case pending before the Court of Justice of the EU (CJEU) (C-310/17) concerning copyright over the taste of a food product.

The AG took the view that EU law precludes the taste of food from being protected by copyright, essentially because:

  • the notion of “literary and artistic works” in the Berne Convention includes only subject-matter that can be perceived through sight or hearing, therefore implicitly excluding those perceivable through other senses like taste, smell or touch; and
  • artistic works should be identified in a precise and objective manner in order to allow third parties to understand their scope of protection. This is not the case for the taste of food products.

Business impact

This case is particularly interesting as it is the first time that the CJEU will rule on the copyright of the taste of a food product and, more generally, on the notion of copyright work which is not defined under Directive 2001/29/EC (“InfoSoc Directive”).

Food scientists in major food businesses may be disappointed not to obtain a new layer of protection for creating new tastes.

The opinion of the AG confirms the difficulty of ensuring copyright protection for the taste of a food product, as well as for perfumes, as observed in the field of trade marks.  Even though the new EU Trade Mark Regulation does not require a sign (any longer) to be capable of being graphically represented in order to be registered as a trade mark, in practice it is not yet possible to register a taste or a smell as a trade mark as the subject-matter of protection cannot be determined with clarity and precision with generally available technology.

If the CJEU were to follow the opinion of the AG in its Judgment, many producers of food products and perfumes will remain disappointed that their creative efforts are not recognised by legal protection through copyright. Continue reading

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Filed under Consumer, Copyright (and related rights), Designs and Databases, EU, France, Italy, UK

CJEU SETS OUT TEST ON THE INTERPRETATION OF ARTICLE 3(a) SPC REGULATION

The Court of Justice of the European Union (CJEU) has today delivered its decision on the interpretation of Article 3(a) SPC Regulation in Case C-121/17 Teva v Gilead.

The CJEU has said that in the case of an SPC for a combination product, Article 3(a) will be satisfied if, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent:

  • the combination of active ingredients necessarily, in the light of the description and drawings of that patent, falls under the invention covered by that patent, and
  • each of those active ingredients is specifically identifiable, in the light of all the information disclosed by that patent.

The CJEU has made it clear that these are matters for national courts to decide.

Business Impact

This is a very important decision for all stakeholders in the pharmaceutical industry. It relates to the ability of patentees to obtain SPCs, a sui generis right, which effectively extends the duration of patent protection for products (i.e. active ingredients or combinations of active ingredients) of medicinal products covered by marketing authorisations (MAs).

It is the first time that the Grand Chamber of the CJEU (sitting as 15 judges) has provided guidance for national courts to interpret Article 3(a) of the SPC Regulation, although other Chambers of the CJEU have also tackled this issue in the past. Continue reading

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Filed under EU, France, Italy, Patents and SPCs, Pharma, UK

TRADE SECRETS: NEW EU RULES IN FORCE IN ITALY

Italian Legislative Decree 63 – 11 May 2018, implementing Directive (EU) 2016/943 on trade secrets, entered into force on 22 June 2018.

The Italian legal system was already at the forefront of trade secret protection, affording twenty years’ protection to both commercial and manufacturing and industrial-technical trade secrets, in full compliance with the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). This meant that the Italian legislator did not need to make major changes to the existing legislative framework. There are however some interesting changes to report.

New Definition of “Trade Secrets” 

The Italian Industrial Property Code (IPC) already provided for the protection of business information and technical-industrial experience as long as:

a) they were secret, meaning they were not generally known or not easily accessible to experts or sector operators;
b) they had commercial value because they were secret;
c) they had been subject to reasonable steps to keep them secret.

Although the Directive has not impacted scope of protection, such know-how is however now captured by the term “trade secrets”.

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Filed under Confidential information and trade secrets, EU, Italy

Intellectual Property and Cyber Security issues considered in UK Government White Paper on the future UK-EU relationship

The UK Government’s White Paper detailing its proposal for the future relationship between the UK and the EU (published on 12 July 2018) includes a limited number of proposals relating to intellectual property and cyber security as follows:

  • The UK intends to explore staying in the Unified Patent Court (UPC) and Unitary Patent system post-Brexit. The UK will work with the member states that have signed up to the UPC Agreement to ensure that the UPC Agreement can continue on a firm legal basis;
  • Arrangements on future co-operation on intellectual property are recognised as important to provide confidence and security to rights holders operating in and between the UK and the EU;
  • The UK and EU will need to continue to co-operate on cyber security to counter cyber threats;
  • The UK will establish its own Geographical Indications (GIs) scheme to provide continuous protection for UK GIs in the UK and protection for new GIs applied for by UK and non-UK applicants

UPC and Unitary Patent

Opinions vary on the likelihood of whether the UK could continue as part of the UPC and Unitary patent system post-Brexit. The Foreword to the White Paper by the Prime Minister states that the proposals in the White Paper would end the jurisdiction of the European Court of Justice in the UK. It is not clear whether the UK would nevertheless accept the role of the European Court of Justice in respect of references from the UPC on matters of European law.

Future Co-operation on intellectual property

The draft withdrawal agreement of 19 March 2018 (as supplemented by the joint statement on 19 June 2018) sets out the text (highlighted in green in the draft) agreed between the Commission and UK at negotiator level, in relation to the replacement of EU-wide rights with equivalent UK rights, which may indicate that there will be substantive future co-operation.

Cyber Security

It is proposed that here will be close collaboration between the UK and the Network and Information Security (NIS) Cooperation Group, Computer Security Incident Response Team (CSIRT) Network (created under the NIS directive) and the European Union Agency for Network and Information Security (ENISA). While the UK’s desire to remain involved in the EU cyber security apparatus is welcome, no details of the legal mechanisms by which this will be achieved are provided at this stage.

Geographic Indications

The provisions in the draft withdrawal agreement relating to GIs have not yet been agreed at negotiator level. However, the White Paper states that the UK wants equivalence arrangements on a broad range of food policy rules, including GIs, noting that GIs provide legal protection against imitation and misrepresentations about quality or geographical origin for agri-food products that have a strong traditional or cultural connection to a particular geographical area. The UK will establish its own GI scheme consistent with (and going beyond) the provisions of the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). The new scheme is to provide a clear and simple set of rules on GIs and continuous protection in the UK for UK GIs notwithstanding exit from the EU. The scheme will be open to new applications from both UK and non-UK applicants.

For further analysis of the impact of Brexit on IP rights and how to moderate this, see the IP section of the HSF Brexit Legal Guide in the Brexit hub of our website (https://www.herbertsmithfreehills.com/latest-thinking/hubs/brexit).

Authors

Mark Shillito
Mark Shillito
Partner
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+44 20 7466 2031
Laura Deacon
Laura Deacon
Of Counsel
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+44 20 7466 2045
Peter FitzPatrick
Peter FitzPatrick
Associate
Email
+44 20 7466 3711

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Filed under Consumer, Copyright (and related rights), Designs and Databases, EU, Patents and SPCs, Pharma, Trade marks, Passing off, Geographical indications, PDOs, UK

PATENT AND PHARMA UPDATE – July 2018

Key recent developments in the United Kingdom and Europe relating to patents and the pharmaceutical sector

English courts begin to consider the new Doctrine of Equivalents as applied by the Supreme Court in Actavis v Lilly, and continue to accept jurisdiction in complex, cross-border patent disputes concerning infringement issues relating to non-UK patent designations. Looking further afield, following the AG’s opinion in Teva v Gilead, the CJEU’s decisions on various Art 3(a) and 3(d) references are anticipated. Although the UK has finally ratified the UPC Agreement, Brexit negotiations on various IP-related issues continue and much depends on whether there will be a Withdrawal Agreement and what form it will take.

Developments in the Doctrine of Equivalents

Recent court decisions have suggested applying the Doctrine of Equivalents to determine claim scope only after construing the claims purposively, and have queried the possibility of claim anticipation by “equivalents” (in spite of Arnold J’s views in Generics v Yeda). Further guidance is necessary in order to predict the impact of this Doctrine upon patent infringement, and equally, upon patent validity. 

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SPC update

The CJEU’s decision on the proper interpretation of Art 3(a) of the SPC Regulations is keenly awaited, as the AG’s opinion in the Teva v Gilead reference considers whether a product is specifically and precisely identifiable in the patent claims, rather than whether it embodies the “core inventive advance” of the basic patent in order to be protected by it. Other SPC-related developments are also reported.

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Do the English Courts have jurisdiction to hear applications for a DNI for non-UK designations of a patent?

The recent decisions in Eli Lilly v Genentech indicate that English courts will generally accept jurisdiction to decide questions of infringement regarding non-UK designations of a European patent as long as the validity of the patent does not come into issue.

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Damages v account of profits and carved-out preliminary injunction – Edwards Lifesciences v Boston

Following a trial on infringement, the court in Edwards Lifesciences v Boston has confirmed that the patentee has to choose between damages and seeking an account of profits as remedies against an infringer and cannot seek them in the alternative. On the other hand, the court’s final order on injunction, where it exempted a certain class of patients from the injunction, shows that it can be equally considerate of patients’ treatment needs and overall public policy.

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The Court rejects jurisdictional challenge to determine a global FRAND licence

Carr J has rejected Huawei’s and ZTE’s jurisdictional challenge to Conversant’s claim seeking a determination of FRAND terms for its global portfolio of standard-essential patents, thereby underscoring the English court’s willingness to accept jurisdiction relating to disputes involving non-UK patent designations, so long as their validities are not in issue.

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Unified Patent Court – where are we?

On 26 April 2018 (World IP Day), the UK ratified the UPC Agreement, whereas ratification by Germany is held up by a constitutional challenge. Following German ratification, the new European unitary patent is expected to be available in the participating states and enforceable through the UPC.

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Brexit and IP

According to the latest draft of the Withdrawal Agreement, EU-wide IP rights are expected to continue to have effect in the UK during the transition period following Brexit till 31 December 2020. Whilst there is some agreement on IP-related measures between British and EU negotiators, there are still unresolved issues and in the event of a “no deal” scenario, even the areas already agreed upon would fall through.

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Table of Recent UK Court Decisions on patents

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Contacts

Jonathan Turnbull
Jonathan Turnbull
Partner
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+44 20 7466 2174
Monika Klajn
Monika Klajn
Associate
Email
+44 20 7466 7604
Krishna Kakkaiyadi
Krishna Kakkaiyadi
Associate
Email
+44 20 7466 2979
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant
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+44 20 7466 2217

 

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Filed under EU, France, Italy, Patents and SPCs, Pharma, UK