UK gives notice of the ratification of the Unified Patent Court agreement on World IP Day

On 26 April 2018, World IP Day, the UK’s Minister for Intellectual Property, Sam Gyimah MP, confirmed that the Unified Patent Court (UPC) agreement has been ratified by the UK. The completion of UK domestic formalities brings the number of signatories that have ratified the agreement to 16 and means that the introduction of the oft-delayed international court is a significant step closer.

In order for the new cross-border court to come into being, the UPC agreement needs to be ratified by at least 13 signatory countries including each of the UK, France and Germany. France ratified the agreement in 2014 and so now all that is needed is for Germany to follow suit. The agreement would then come into force four months after Germany’s ratification. The likely timeline in Germany is presently unclear, however, because the federal courts have asked that the relevant bills remain unsigned until a legal challenge is resolved.

Authored by Hazel Stewart

We are supporting World Intellectual Property Day – 26 April

World Intellectual Property day is celebrated every year on 26 April to raise awareness of intellectual property rights, which exist in the form of patents, trade marks, registered designs and copyright to promote economic growth through innovation and creativity.

This year – appropriately in the year that marks the centenary of women’s suffrage in the UK – World Intellectual Property Day is celebrating “the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future”.

According to the World Intellectual Property Organisation (WIPO), women inventors were responsible for less than a third of all international patent applications filed in 2015. WIPO is calling for action to close this gender gap.

At Cleveland Scott York, we are delighted to lend our backing to World Intellectual Property Day. Innovation and creativity, commercialised with the protection of effective intellectual property laws are the keys to sustainable economic growth. Meanwhile, maximising the economic benefits of intellectual property depends on having the widest possible participation in the system.

As a firm, we have a strong track-record of supporting women in business. Notably, this year we are sponsoring the Best Customer Service category at the Best Business Women Awards for the third year running.

Beyond this, we will be launching a new diversity policy in the coming months to ensure we are doing all we can as a firm.

Reading intellectual property specialists back next generation of professionals

A leading firm of intellectual property specialists, which has an office in Reading, is lending its backing to the next generation of professionals in the sector by sponsoring a prestigious award.

Cleveland Scott York is sponsoring the Prize for the Best Performance in Intellectual Property Law at Reading University.

The award will recognise the work of the student who has excelled in the subject at the university.

Adrian Bradley, a Chartered Patent Attorney and Partner at the firm’s Reading office, said: “Intellectual property law helps gear our economy towards growth by protecting creative and financial investments from exploitation by others, in turn fuelling the development of new technologies and new brands.

“Professionals specialising in intellectual property law play an important role in advising and assisting businesses to use this body of law to best commercial and economic effect.

“That is why backing the next generation of professionals is so important and why we are delighted to once again sponsor this award.

“I look forward to presenting the award in the summer.”

The Cleveland Scott York Prize will be presented at a ceremony on Wednesday 4 July 2018.[:]

Kit Kat v Mondelez

It is pretty unusual for the Court of Justice of the European Union to issue press releases in relation to any of the hundreds of trade mark cases passing through their doors each year but the ongoing battles relating to the shape of the four finger Kit Kat have attracted sufficient interest to make these cases newsworthy.

The latest chapter in the saga was published yesterday https://curia.europa.eu/jcms/upload/docs/application/pdf/2018-04/cp180050en.pdf

and the Advocate General recommends that the Court should, in its eventual decision, push the case back down to the EUIPO to reconsider the question of whether this 3 dimensional shape can be registered as a trade mark.

One might wonder why this humble chocolate bar has been the subject of such a fight, between Nestlé and Cadbury (now Mondelez) when the shape of the Toblerone bar has been registered for ages. However, the shape of the Toberlone bar does differ more significantly from the shape of conventional chocolate bars than is the case for the 4 finger Kit Kat and Toblerlone occupies a very distinct space in the market. This is probably why competitors in the highly competitive confectionery market haven’t felt brave enough to challenge the registration for the shape of the Toblerone.

This is by far from the end of the story for this battle, and so we are unlikely to see a rush of competing 4 finger chocolate wafer products any time soon. Some might wonder why Nestlé continue to fight this case, when there is so much more to the Kit Kat brand than the shape of the bar itself, but the confectionery companies compete extremely robustly on the playing field of trade marks. It is not so long ago that Nestlé successfully challenged Cadbury’s applications to register the colour purple as a trade mark, so it is most unlikely that Nestlé would ever back down on this matter, at least not until all appeal routes had been exhausted.[:]

Cleveland Scott York Partner Dr Adrian Bradley to speak at Czech Patent Office

Dr Adrian Bradley will be discussing European patent litigation at the Czech Patent Office in Prague on Tuesday 15 May 2018 from 9.30am.

The seminar will focus on proceedings concerning European patents, patent litigation case law and will also address the issue of a single European patent.

It will take place in English without interpretation into Czech.

Anyone wishing to attend can book their place by visiting the website of the Czech Patent Office at www.upv.cz.

Dr Bradley has strong links with intellectual property professionals in the Czech Republic, where he is a member of the Business Advisory Board of the Institute of Organic Chemistry and Biochemistry (IOCB).[:]

The impact of Brexit on UK Copyright – as reported by the EU Commission

At the beginning of this month, the EU Commission issued a report on the impact of Brexit on UK copyright. This indicates that, as of 30 March 2019, the various EU Directives and Regulations on copyright will no longer apply in relation to UK Copyright ownership.

Although UK copyright law is largely national, it is based on several EU Directives and Regulations. In its report, the EU Commission specifies the impacts on leaving the EU on UK broadcasters and database users, some of which we’ve summarised below.

The EU “Broadcasting” Directive concerning copyright applicable to satellite broadcasting and cable retransmission, and which essentially allows for trans-frontier broadcasting, will no longer apply to UK based broadcasters. Currently, UK  broadcasters are only bound by the laws of the Member State they are actually broadcasting from, and not by the laws of the Member States in which their signal is received. Post-Brexit, UK based broadcasters will have to secure clearance from all relevant copyright holders in the countries they are broadcasting to. At the same time, EU broadcasters to the UK will have to secure clearance from all relevant rights holders in the UK, before broadcasting here.

The EU’s “Collective Rights Management” Directive, which sets common standards for multi-territorial licensing of rights in musical works for online uses in the single market, will no longer apply to ensure the governance and transparency of UK based Collective Management Organisations/Collecting Societies.

The EU’s “Orphan Works” Directive will no longer apply to UK orphan works. This has standardised the rules on the digitisation and online display of  “ orphan” works held in UK cultural institutions, i.e. works including books, newspaper and magazine articles and films that are still protected by copyright but whose authors or other rightholders are either not known or cannot be located or contacted to obtain copyright permissions.

The EU’s 2017 Directive which enables visually impaired, blind or otherwise print-disabled persons to obtain accessible format copies from authorised entities in the EU will no longer apply to UK persons.

The EU “Online Content Portability” Regulation will no longer enable UK residents travelling to the EU to be assured of the equivalent provisions of access to the same content, on the same range and number of devices, for the same number of users, and with the same range of functionalities from their online content providers.

Finally, the EU’s “Database” Directive entitling UK nationals (without habitual residence in the EU) and UK incorporated companies to maintain or obtain a sui generis database right in respect of EU databases will no longer apply.

The above-specified anticipated consequences of Brexit are of course subject to any re-negotiation of terms of withdrawal, in the run up. The UK Government has also confirmed it will be addressing the final consequences of the Brexit agreement by updating national laws or establishing equivalent new national rights, so we await further developments on these areas of copyright law.

Authored by Joanna Larkey[:]

New UK Patent fees take effect from 6 April 2018

The UK Intellectual Property Office is introducing new fees in the new fiscal year.

As of 6 April 2018 additional fees will be payable for applications filed that have in excess of 35 pages in the description. Furthermore, excess claim fees are being introduced for the first time for applications that have more than 25 claims. The additional charges are £10 per page for pages 36 and above and £20 for each claim over 25.

These fees are relatively modest in comparison to equivalent charges at the European Patent Office, where €235 is charged for each of claims 16 and above. Nevertheless, such charges can soon add up and the new fees will apply to direct and UK national phase applications filed on or after 6 April 2018. The excess claim fees are payable as part of the search fee and the excess pages fees are payable as part of the examination fee.

In addition to the above, there is now a surcharge payable if the application fee is not paid on filing and there are also standard increases in all fee amounts.

Authored by Hazel Stewart[:]

Petition for Review

The European Patent Office (EPO) has granted a petition for review in a new decision from the Enlarged Board of Appeal (R 4/17).

A party to an EPO Board of Appeal decision can file a request for a petition for review by the Enlarged Board of Appeal when:

  • The composition of the board was not correct (e.g. contained a non-impartial member);
  • A fundamental procedural defect of the right to be heard had occurred; or
  • A criminal act may have had an impact on the decision.

It is notably difficult to have petitions for review granted, and this is only the eighth time the EPO has made such a decision.

In the case in question, R 4/17, the disputed decision arose when an opposition against patent EP149041, owned by Rhodia Chimie, was rejected, the patent was maintained as granted and the opponent (BASF) subsequently filed an appeal. During the appeal proceedings the proprietor made no submissions and so the Board of Appeal revoked the patent without holding oral proceedings.

At the commencement of appeal proceedings, in line with usual procedure the EPO sent the patentee letters containing the notice of appeal and then subsequently the statement of grounds, the latter including notification that any response should be filed within a four month deadline. Afterwards the EPO also sent the patentee a further letter forwarding another submission of the opponent.

The patentee filed a petition for review on the grounds that it had no record of ever having received any of the above letters and had no knowledge of the existence of the appeal until it received the board’s decision revoking the patent. The proprietor hence asserted that it was unable to exercise its right to be heard.

The letters in question were sent by registered post but, critically, the EPO did not send the letters with advice of delivery, and so it could not be definitively stated that the letters had been received. Under rule 126(2) EPC, in the event of a dispute as to whether a letter from the EPO reached an addressee, it is incumbent on the EPO to establish that the letter reached its destination. Accordingly, in the circumstances in question, the Enlarged Board of Appeal concluded that “In the absence of any relevant evidence from outside the EPO, the Opponent-Appellant’s notice of appeal, statement setting out the grounds of appeal and its letter must be considered not to have been communicated to the Petitioner.”.  Therefore, since the Enlarged Board noted that “Such communication is required by Rule 100(1) in conjunction with Rule 79(1) EPC”, it was concluded that the petitioner/proprietor had no opportunity at all to comment on the grounds for the decision under review and so the proprietor’s petition was allowed.

This case shows that although granted petitions for review are rare, they nevertheless remain a viable tool under appropriate circumstances.

Authored by Isaac Robertson-Jonas[:]

legal-500 recommended Lawyer 2017