KEMPNER & PARTNERS IP LAW TRACKER

November 2017

Welcome to K&P’s monthly IP Law Tracker, providing you with the latest updates on upcoming IP legislation and recent case news. If any of the issues covered below are of interest to your business, please call us to discuss on 0113 393 1921.

Legislation and Statutory Instruments

EU Legislation Tracker

Date
Early 2018 Patents

Unified Patent Court sunrise-period for opting out European patents expected to start early 2018. See October IP Law Tracker for further details.

01 April 2018 Copyright

Regulation ((EU) 2017/1128) on cross-border portability of online content services in the Internal Market will begin to apply across all Member States. See October IP Law Tracker for further details.

09 June 2018 Confidentiality

EU member states to have transposed Trade Secrets Directive (2016/244/EU) into national law by this date. See October IP Law Tracker for further details.

12 October 2018 Copyright

Regulation ((EU) 2017/1563) to implement the EU’s obligations under the WIPO’s Marrakesh Treaty to facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or otherwise Print Disabled will begin to apply across all Member States. See October IP Law Tracker for further details.

 

UK Legislation Tracker

15 November 2017 General IP

The IPO has published a consultation called “Industrial strategy: intellectual property”, which will close on 15 November 2017. The consultation calls for views on maximising the incentives of the intellectual property system to stimulate collaborative innovation and licensing opportunities. Link here.

 
Late 2017 / early 2018 Patents

In November 2016 the UK announced its intention to ratify the Unified Patent Court Agreement (UPCA), despite the Brexit vote, and is currently expected to do so by the end of 2017. See October IP Law Tracker for further details.

31 March 2018 Designs
The UK is set to ratify Hague Agreement for industrial designs by this date. See October IP Law Tracker for further details.
09 June 2018 Confidentiality

As an EU member, the UK is required to have transposed the Trade Secrets Directive (2016/244/EU) into national law by this date, although it is unclear whether this will happen due to Brexit. See October IP Law Tracker for further details.

14 January 2019 Trade marks

January 2019 marks the UK’s deadline to implement the 2015 Trade Marks Directive (2008/95/EC). But following the Brexit vote it is unclear if the UK will implement this Directive into national law. See October IP Law Tracker for further details.

 

Recent IP case decisions and their impact on you

Trade marks

Ruling on trade marks covering cross-border goods and services

The High Court has held that a Slovenian bank, Abanka, which does not hold a UK banking licence and mostly serves Slovenians living in the UK, could not rely on the use of its trade marks on bank guarantees, cheques, an English language website or credit and debit cards used by the Slovenian community in the UK as sufficient UK use to prevent the marks’ revocation for non-use. However, use of the marks in details of a London Stock Exchange listing amounted to UK use.

Impact on your business:
This case highlights the fact that English language materials provide no guarantee that a court will find a business to be UK-consumer facing. It also shows that as many examples as possible should be included when submitting evidence of trade mark use.

Abanka DD v Abanca Corporacion Bancaria SA, [2017] EWHC 2428 (Ch), 6 October 2017

Patents

High Court holds it has no jurisdiction to make declaration of non-infringement over non-UK designated patents

Under the Lugano Convention, EU member states and the governments of Denmark, Iceland, Norway and Switzerland agreed to the mutual recognition and enforcement of judgments in civil and commercial matters, but the High Court has held that it did not have jurisdiction to grant declarations of non-infringement for non-UK designated patents, nor did it have jurisdiction over related claims for declarations that the rights in those patents were exhausted or that the patent owner had consented to the use of the invention.

Impact on your business:
This case highlights issues around how carefully jurisdiction must be considered when thinking about a legal claim, as the domicile of the claimants and defendants as well as where the offending act took place all have an impact.

Parainen Pearl Shipping Ltd and others v Kristian Gerhard Jebsen Skipsrederi AS and others [2017] EWHC 2570 (Pat), 18 October 2017.

 

Patents Court holds that the doctrine of equivalents from Actavis v Eli Lilly judgment does not apply to novelty in revocation claims

Prior to the recent Supreme Court decision in Actavis v Eli Lilly, it was settled law that a patent claim should be interpreted in the same manner for considering the purposes of novelty and infringement. However, in a recent patent revocation claim, Arnold J held that the doctrine of equivalents, introduced by the Supreme Court in Actavis to patent infringement claims, did not apply to an assessment of novelty in a revocation claim.

Impact on your business:
This case shows that the major changes to patent construction brought about by the Actavis ruling are not as far-reaching as initially thought. While patent construction in an invalidity action has changed, it appears that an assessment of patent validity is still made following the old rules, which provides some security to patent holders and applicants.

Generics (U.K.) Limited and others v Yeda Research and Development Company Limited and others [2017] EWHC 2629 (Pat), 26 October 2017