The UPC Rules of Procedure are now in force

The UPC Committee has issued a consolidated version of the UPC Rules of Procedure following the approval of final changes to the 18th draft in July. These Rules are now in force as of 1 September 2022. Consolidated versions of the Rules are also available in French and German. Read more

High Court gamble does not pay out for computer-implemented inventions in Australia

By Sue Gilchrist, Aaron Hayward and Byron Turner Even the High Court of Australia has found the question of patentability of computer-implemented inventions challenging. As a result of an equally divided opinion, an appeal from a decision of the Full Court of the Federal Court of Australia,[1] which found that Aristocrat’s patent claims to electronic … Read more

The IP in NFTs – Strategies for protecting your brands and products in the metaverse

The creation ("minting") and sale and use of NFTs raises many IP issues which we have discussed in our previous posts in our IP in NFTs series. However, brand owners and product manufacturers must also be vigilant in monitoring the virtual marketplaces to ensure that third parties are not creating NFTs that infringe their own IP rights.  This is especially true where the company is considering releasing or has released NFTs, because the public will begin to associate the brand with NFTs (which could include infringing NFTs).  There are several strategies that companies could adopt to minimise this risk. Read more

What next for standard essential patents (SEPs) in the UK – responses to the UKIPO’s Call for Views

We previously reported on the UK Intellectual Property Office's (UKIPO) consultation on standard essential patents (SEPs) when it was launched in December 2021 (see here). The responses have now been published and the full report is available here. There were a mix of views – with some respondents happy with the current system, while others complaining that it favours either SEP holders or implementers. A number of proposals were made for potential reforms to the system. Read more

Double patenting in Germany – Options for a choice between the UPC and the German national courts

On the date that the UPC Agreement comes into force, the German prohibition on double patenting will be amended so that it only applies to European patents that have been "opted out" of the exclusive jurisdiction of the UPC. For European patents that have not been opted out of the UPC and for the new unitary patents, patentees will be allowed to maintain a German national patent in parallel to the European patent and infringement litigation before the German courts will be possible in relation to the national patent. Read more

UPC – Mediation and Arbitration – rules and objectives published

The Patent Mediation and Arbitration Centre (PMAC) forms part of the Unified Patent Court (UPC). Its rules of operation are have now been published. It operates independently, but carries out its tasks in close contact and cooperation with the committees/bodies of the UPC which will have to take decisions in relation to the operation of the Centre. The Centre has its seats in Ljubljana, Slovenia, and Lisbon, Portugal. Mediation and arbitration proceedings can be held either at the seats or elsewhere. Read more

UPC – The location of 13 local and one regional division courts announced and numbers of legally qualified judges at each

The UPC Administrative Committee has issued confirmation of the location of the various local and regional divisions of the Unified Patent Court (UPC).  Whilst all other participating states will have one local court (or participate in the Nordic-Baltic regional division announced), Germany will have three local division courts - Dusseldorf, Hamburg and Mannheim. At the same time the numbers of national judges on each panel have also been confirmed for each court. Read more

UPC Rules of Procedure – final version approved

The UPC Rules of Procedure  have been approved. Amendments to the previous 2017 draft have been released by the UPC Administrative Committee, in tracked changes form, with a full consolidated version promised to be "published during the course of the summer, before the Rules’ entry into force on 1 September 2022".  One of the most significant changes is to opt-out procedures, but others include the use of video-conferencing, public access to pleadings and confidentiality club arrangements. Read more

The IP in NFTs – what you need to know

Non-fungible tokens (NFTs) are one of the hottest IP topics currently. NFTs can be used simply for marketing purposes or as a new form of asset to attract investment or as part of the transfer of products and services into the Metaverse.This new asset class has exploded across all sectors and raises some interesting challenges from an IP perspective. While NFTs have demonstrated themselves to be a powerful tool in the new digital era, they remain poorly understood. In our series of blog posts on NFTs, we explore intellectual property considerations, misconceptions and issues that we are seeing arising in the NFT space, including, in this first blog post, clarifying what NFTs are and how they can create effective control over digital assets and the use of NFTs for provenance and anti-counterfeiting. Read more