Future of Consumer – Fighting for a consumer-friendly market: stricter rules in the EU

In the latest edition in our Future of Consumer series, our Milan office looks at the impact of the EU's "New Deal for Consumers" , with a particular focus on Italy. A spate of high-profile cases across the EU has brought the spotlight firmly on how to combat unfair commercial practices and increase consumer protection. The European Commission has been focussing on how to increase consumer protection and reinforce the EU's reputation for being a high quality, safe trading place. The outcome is the EU's "New Deal for Consumers" legislative package which came into force on 7 January 2020. Member States have 24 months to implement it. Read more

ECJ rules for the first time on “pay-for-delay” agreements

On 30 January 2020 the European Court of Justice (“ECJ”) clarified for the first time the criteria governing whether so-called “pay-for-delay” agreements entered into between originator and generic pharmaceutical companies fall foul of EU competition law rules. Such agreements are a form of patent dispute settlement, whereby in return for a value transfer, a generic … Read more

OPEN INNOVATION & COLLABORATION: Triggering and managing innovation and collaboration & the IP, data and competition issues involved

Open Innovation: Forging innovation and collaboration In the first of a two-part series on open innovation, we explore how organisations can manage and benefit from the changing nature of innovation and collaboration. Open Innovation: IP, data and competition issues In part two, we look deeper into some specific issues that arise in the context of … Read more

Brexit & IP – status quo for the transition period; changes to come post-transition

From 23.00 on 31 January 2020, the UK will no longer a member state of the EU, although it will be treated as such for the duration of the transition period. From an IP point of view, the status quo will be maintained during the transition period (currently until the end of December 2020). Here we look at how the Withdrawal Agreement acts to preserve IP rights in the UK which were previously based on EU rights, and what changes are anticipated post-transition, as well as the aspirations of the Political Declaration. Read more

CJEU Decision in SkyKick offers relief to trade mark owners

The CJEU has today handed down a crucial decision as it seeks to provide clarification on important questions about the extent of the monopoly businesses can obtain legitimately through the registration of a trade mark. The CJEU held that a registered trade mark cannot be declared wholly or partly invalid as a result of a lack of clarity and precision of the terms used to designate the goods and services covered by that registration. Further, whilst invalidity on the ground of bad faith may be triggered where an applicant registers a mark without any intention to use it in relation to specified goods and services, bad faith will only be established in exceptional circumstances. This outcome is very helpful to existing trade mark proprietors and favours the existing status quo of the trade mark system. Read more

Herbert Smith Freehills’ Intellectual Property Podcasts – Episode 1: An Introduction to FRAND

The UK Supreme Court is soon expected to hand down its judgment in the appeals of Unwired Planet v Huawei and ZTE v Conversant concerning FRAND, which were heard together. In advance of the decision itself, this podcast provides a reminder of what FRAND is all about (fair, reasonable and non-discriminatory terms required in the licensing of standard essential patents) and what issues are before the Court, as well as some background to the individual disputes. We will publish a further podcast once the Supreme Court has given its judgment. Read more

CJEU AG’s Opinion in Santen referral proposes to abandon Neurim

On 23 January 2020, AG Giovanni Pitruzzella provided his Opinion on the interpretation of Article 3(d) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products ("SPC Regulation"). In doing so, AG Pitruzzella makes two proposals to the CJEU. His favoured proposal would significantly curtail the availability of SPCs for second medical uses of known and previously authorised compounds, as it strictly interprets the meaning of "product" under Article 1(b) and precludes an interpretation of Neurim according to which a marketing authorisation (“MA”) for a “different and new application of an old active ingredient” could be considered as the first MA of a previously authorised active ingredient. His alternative proposal permit SPCs in a wider set of circumstances by interpreting Neurim as allowing an SPC to be granted if the new MA “covers a new therapeutic indication of said active ingredient or relates to a use of it in which this active ingredient exerts a new pharmacological, immunological or metabolic action of its own”. Read more

Data issues in innovation and collaborations

Businesses in every sector are under pressure to innovate to stay ahead of the competition. ‘’Open innovation’’ is a term that has come to describe innovation which extends beyond the traditional R&D department of a business and embraces a broader pool of talent and ideas within the whole business and frequently also extends to an external partnership with a third party collaborator to assist with and accelerate the process. In our second publication Data issues in innovation and collaborations, following on from our Open Innovation: Collaborate To Innovate report, we take a more detailed look at how data frequently plays a central role in the drive towards ‘’open’’ innovation and the significant value attached to it. Data can be used to generate new products or services and revenue streams, to identify efficiencies within an organisation and reduce costs, and to inform strategic decision-making. Read more